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Does Your Product Not Meet The Requirements For Patentability? Not Everything Is Lost.

Author:Mr Octavio Espejo and Jorge Juárez
Profession:Becerril Coca & Becerril

Nowadays, many companies and inventors face the problem of leaving their inventions and developments unprotected because of increasingly strong patentability examination procedures around the world.

However, not everything is lost. In Mexico and many other countries, there is a legal protection alternative to patents for those products that do not comply with all the requirements for patentability, especially those which do not comply with the requirement of inventive step. This alternative is generally known as "utility model", although in some countries it is also known as "petty patent" or "small patent"1. In fact, this option is eligible for entering national phase under the PCT where available.

In general terms, the utility model has the following advantages over patents: registration requirements are less demanding, their process is faster, and the rates of filing and maintenance are lower. Additionally, in certain countries, utility models do not require a substantive examination. However, the main disadvantage of this alternative is that the term of protection is shorter in comparison with that granted to patents in most countries under international treaties.

In the particular case of Mexico, the Law on Industrial Property defines that utility models are those considered as "objects, gadgets, apparatuses or tools that, as a result of a change in its arrangement, shape, structure or form, show a different function with respect to its component parts or advantages in terms of its usefulness" (Article 28 LPI). Therefore, in order to assess the possibility of protection under a utility model, it is important to first determine if, instead of complying with the definition of an invention, what was developed and needs protection meets the definition provided for a utility model. For instance, processes are not eligible for protection by means of a utility model as they do not comply with such definition.

If the definition above is met, the product to be protected must, in addition, be novel and susceptible of industrial application. This is determined on the basis of the substantive examination conducted by the Mexican Institute of Industrial Property (IMPI). As mentioned above, an advantage of utility models is that their process is faster. In Mexico, on average, the first notice related to the substantive examination of a utility model application is received within 1 year and a half after its filing, whereas in the case of patents...

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