Patents and utility models

Disclosure is the decision that cannot be undone

A patent requires novelty. Showing the invention at a trade fair, publishing the paper, posting the demo or pitching it without a confidentiality agreement can destroy that novelty before anything is filed. This is the single most expensive mistake in the area, and it is made by people who are proud of their work.

So the first conversation is always about what has already been disclosed and to whom, before anything else is discussed.

Patent or utility model

Both protect technical solutions, and the choice is about the level of inventive step and about time.

• Patent. Twenty years, non-extendable, counted from the recognised filing date, subject to the annual fees (article 53 of the Mexican Industrial Property Law). Longer protection, harder examination.
• Utility model. Fifteen years, non-extendable, counted from the filing date, also subject to annual fees (article 62). It fits improvements to the shape or arrangement of a device that give it a new function or advantage, where the inventive step would not carry a patent.

Both are tied to annuities. A granted patent that stops paying them lapses, and a surprising number do.

What the filing has to get right

The claims define the monopoly. Everything disclosed in the application but not claimed is a gift to the public, and claims that are too broad are refused while claims that are too narrow are easy to design around. This is the part where a cheap filing becomes expensive later.

What we do

• Assess patentability and prior art before you spend on a filing.
• Tell you honestly when the right answer is a utility model, a design registration, or a trade secret rather than a patent.
• Draft and file before IMPI, and prosecute the examination.
• Track the annuities so protection does not lapse by inattention.
• Put confidentiality agreements in place before you talk to manufacturers or investors.