Failings of technical data requests and patent examinations in Mexico identified

Substantive patent examinations carried out by the Mexican Institute of Industrial Property include assessments of inventions in the fields of biotechnology, chemistry and pharmaceuticals, where it frequently happens that applications lack the technical data needed to demonstrate the pharmacological effect of the substance or use in question, whether because an applicant did not have time to perform the necessary tests while developing the invention or could not carry such tests out at the time of application.

While the inclusion of technical data is an important demonstration of the effect of a novel compound or use and can expedite the patenting process, Mexico's Industrial Property Law and implementing regulations do not require it, notes a blogger on the IP Tango web site.

Examiners do sometimes require such data before they officially recognize the effect in question on the basis that, without it, the enhanced or unexpected effect is not duly exemplified in the application and the claim is not clearly made out. In particular, examiners commonly require technical data as evidence of a claimed effect to distinguish it from similar effects of structurally related compounds or the therapeutic effect of known compounds.