Patents for
in Mexico. T is is the case in many countries around the world since these are allowable exclusions under the World Trade Organization’s TRIPS Agreement.
P
Fractions I and V of article 16 in the Mexican Industrial Property Law (IPL)—which deal with patentability exclusions—do not expressly include all plants, but only plant varieties. T e fact that the law refers to plant varieties
instead of plants poses a question about the scope of such an exemption. According to the International Union for the
Protection of New Varieties of Plants (UPOV), ‘plant variety’ is defi ned as a plant grouping within a single botanical taxon of
the lowest
known rank. Such a grouping, irrespective of whether the conditions for the grant of a breeder’s right are fully met, can be: a) Defi ned by the expression of the characteristics resulting from a given genotype or a certain combination of genotypes;
b) Distinguished from any other plant grouping by the expression of at least one of the said characteristics; and
c) Considered as a unit with regard to its suitability for being propagated unchanged.
T e system for the protection of plant varieties under UPOV is available in Mexico and is also in compliance with the TRIPS Agreement. It protects only a specifi c plant variety that is new, distinct, homogeneous, and stable. Accordingly, if a plant grouping does not satisfy such criteria, it will not be considered as a plant variety under the UPOV system. T at the IPL refers to plant varieties instead
of plants has led the Mexican Institute of Industrial Property (IMPI) to interpret it in a way that causes the examiners to allow patents for plants depending on the claim draſt ing, on
lant varieties and the ‘essentially
biological’ processes for obtaining them are excluded from patent protection
the level of intervention of humans in obtaining the organism, and the features of the claims that are considered within the Mexican patentability legal framework. It is important to highlight that the IMPI
considers that genetically modifi ed plants, or plants produced by recombinant gene technology, which do not fall within the defi nition of ‘plant variety’ established by the UPOV, and which totally fulfi l the provisions of article 16 of the IPL, are considered patentable according to Mexican practice. Likewise, hybrid seeds and plants obtained
from such seeds, by lacking homogeneity and stability on their characteristics of whole generation population, are not classifi ed as plant varieties by the IMPI, and are usually granted patent protection in Mexico. In relation to the above, it has been observed
on a daily basis that patent applications that seek protection of plants or parts of them and which do not include representative examples showing that claimed plants were obtained as described in the specifi cation, are usually objected to due to lack of support. For this reason, it is highly advisable that these types of patent applications include representative
patent applications are related to genetically modifi ed plants. However, it is well known that the IMPI receives patent applications related to plant breeding and to the development of new plants that have not been produced by recombinant gene technology, but obtained by new breeding techniques. For example, marker-assisted breeding that
seeks the protection of new desirable plant traits, such as improvement in yield, higher nutritional value, resistance to insects or pests, tolerance to heat and drought, better agronomic quality, growth rate or protection against toxic side- eff ects from certain herbicides, among others, have been granted. T e step of marker-assisted selection for particular agronomic characteristics of
the plant represents a technical process in
which human intervention plays an important role for obtaining said plants. T erefore this
selection is not an essentially biological process. T e granting of some patent applications with
new breeding techniques is a clear sign that the criteria used in Mexico to evaluate plant inventions were supported in the above thoughts. T e possibility of
granting a patent for an
invention related to a plant that was not obtained by recombinant gene technology is open.
From the above, it may be concluded that any development implying a technical process in which human action is involved, such as the case of genetically modifi ed plants, or those developments related to plant breeding and the development of new plants obtained through new breeding techniques, should be
considered patentable
because they would not be ‘essentially biological’ processes according to TRIPS and the IPL. However, there has been a recent shiſt in
the criteria the IMPI has applied, particularly when the application refers to a plant that was not specifi cally produced by recombinant gene technology. T e IMPI has been objecting to such claims
examples within the
description, in order to avoid objections. Within the specifi c context of plants, most
on the grounds of article 16, fraction V of the IPL by fi nding that a plant is a plant variety for the simple fact that it was obtained by the essentially biological process of crossing and backcrossing of two parent plants; the step of marker-assisted selection is not considered as human intervention. Because many patents have
already been
granted under the former criterion, which recognises that breeding and obtaining such plants in the absence of human intervention does not lead to the desirable features, the IMPI’s position today is stricter with respect to these type of developments. Although the outcome of
such a change
in criteria is still to be seen, it is important to remember that plant varieties per se are protected in Mexico under the Federal Law on Plant Varieties and therefore a full strategy must be established in Mexico on a case-by-case basis. Fernando Rincón is an engineer at Becerril, Coca & Becerril. He can be contacted at:
frincon@bcb.com.mx
OTICKI /
SHUTTERSTOCK.COM
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