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The Importance of a Correct Title in Mexican Patent Applications

Author:Mr Marcos Juárez
Profession:Becerril Coca & Becerril

It is very common that foreign and national applicants tend to minimize the role played by the title of a patent application. For this reason, when the text of a patent application is being written, in most cases said title is drafted in a very superficial manner. However, it is important to bear in mind that there are legal requirements within the Mexican Industrial Property Law (MIPL) that must be complied with as well as some commercial reasons that make advisable to pay particular attention to the words used to denominate the invention.

In order to be aware of the above legal requirements, the provisions of articles of the MIPL and its Regulations directly related with this theme and those corresponding to PCT rules must be deeply analyzed.

In the first place, Article 38 of the MIPL states that when a patent application is to be filed before the Mexican Institute of Industrial Property (MIIP), it must include, in addition to other complementary information, the "denomination of the invention". In this particular respect, Article 25 of the Regulations on the MIPL establishes that the "denomination or title of the invention must be brief and to denote by itself the nature of the invention.

As it can be observed, these articles provide simple rules for correctly drafting the title of an invention, which can be summarized in two fundamental aspects: brevity and clarity.

Independently of the stated in said Regulations, it is important to consider, when the title of the invention is being drafted, that it will be used many times in order to search target words in data bases of patent applications and patents. This is why said title should briefly establish the nature of the invention.

On the other hand, it is also clear that those applications of national phase filed via PCT must comply with Rule 4.3 of this Treaty which states that the title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise.

A significant number of Mexican patent applications contain titles like "novel compounds" "novel process", "mechanical device", etc.

If these titles are analyzed, it can be concluded that they do not comply with the provisions as established by the MIPL and its Regulations or with the PCT rules.

Effectively, said titles are brief (do not exceed seven words) but there is no doubt that they are not clear enough to be considered as appropriate, because from their reading, nobody...

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