IP/C/W/125/Add.25  
21 May  2019 
(19-3506) Page: 1/9 
Council for Trade -Related Aspects  of 
Intellectual Property Rights  Original: Spanish  
 
  
REVIEW OF THE PROVISIONS OF ARTICLE  27.3( b) 
OF THE TRIPS AGREEMENT  
RESPONSES TO THE CHECKLIST OF QUESTIONS1 
MEXICO 
Addendum  
The present document contains the responses to the checklist of questions that the Secretariat 
received from the delegation of Mexico by means of a communication dated 20 May 2019. 
 
_______________  
 
 
Introduc tion 
I. RESPONSES TO THE ILLUSTRATIVE LIST OF QUESTIONS PREPARED BY THE 
SECRETARIAT  (document IP/C/W/122)  
A. Patent Protection of Plant and Animal Inventions  
1.  To what extent are inventions concerning plants or animals, whether products or 
processes, patentable under your country's law, if they meet the conditions for 
patentability stipulated in Article  27.1 of the TRIPS Agreement?  
 
Article  15 of the Industrial Property Law  (LPI) define s an invention as any human creation that allows 
matter or energy existing in nature to be transformed for use by man and to satisfy his specific 
needs . Article 16 of the LPI  establ ishes that new inventions involving an inventive step that are 
industrially ap plicable are patentable, excluding p rotection for : (i) essentially biological processes 
for obtaining, reproducing and propagating plants and animals ; (ii) biological and genetic material 
as found in nature ; (iii) animal varieties ; (iv) the human body and the living matter constituting it ; 
and (v) plant varieties . Article 19 of the LPI  does not consider as inventions discoveries that simply 
reveal or disclose something that exists in nature , even if unknown to humans. This means that 
processes that are not essentially biological or microbiological, as well as animals or plants  bred 
through a technical process entailing human intervention , may be  patentable  – provided they are 
novel , involve an inventive step, are industrially applicable and are sufficiently well described . 
 
2.  Where any such inventions are not patentable, even if they meet these conditions:  
 
(i) To what extent is this due to per se exclusions from patentability?  
 
Inventions  that meet the conditions set out in Article s 15 and 16 of the LPI  are not subject to 
exclusion . 
 
                                                
1 Documents IP/C/W/122 and IP/C/W/126.  IP/C/W/125/Add.25  
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  (ii) To what extent is this based on other grounds (for example because conditions 
for patentability other than those stipulated in Article  27.1 are not met or in 
order to protect ordre public or morality (see Article  27.2 of the Agreement))?  
 
Article  4 of the LPI  provides that no patent whatsoever will be granted for inventions contrary to 
ordre public or morality . Patents can thus be denied based on a case -by-case analysis  – even for 
inventions , as defined in Article  15 of the LPI , that consist of a  process or procedure that is not 
essentially  biological or microbiological , or an animal or plant  resulting from human intervention 
using technical means  – if granting the patent would be contrary to ordre public or morality . 
 
3.  Please describe any specific provisions, guidelines, final judicial decisions and 
administrative rulings of general application concerning the application of the conditions 
for patentability stipulated in Article  27.1 to subject -matter addressed by Article  27.3(b).  
 
There are none . 
 
4.  Where plant varieties are not as such patentable subject -matter under your 
country's law, please indicate the extent to which the scope of protection under patents 
for inventions concerning plants can nevertheless emb race plant varieties or a botanical 
taxon whose plants express a trait covered by the claims of a patent.  
 
The LPI excludes the taxonomic level of plant variety ; however, if the  plant result s from a genetic 
modification procedure  that solves a technical problem  by virtue of technical characteristics , it may 
be claimed at a  taxonomic level other than plant variety . 
 
5.  Please provide any definitions used under your country's law with regard to 
subject -matter specifically excluded from patentability or specifically patentable 
(e.g.  micro -organisms, microbiological processes, non -biological processes, 
plant  varieties).  
 
Not applicable . 
 
6.  To what extent is subject -matter that is identical to what occurs in nature patentable 
under your country's law?  
 
It is possible to obtain a patent for inventions that consist of biological or genetic material isolated 
from its natural state and obtained through a technical process, even though it might be identical to 
what occurs in nature.  
 
7.  Explain the requirements under your country's law for ensuring adequate disclosure 
of the patentable inventions referred to above.  
 
Article 47(I) of the LPI  provides that patent application s must be accompanied by : 
 
· A description of the invention, which must be sufficiently clear and complete to permit a full 
understanding and , as appropriate , to guide its application by a person possessing average 
skills and knowledge in the subject -matter . It should also include the method best known to 
the applicant for applying the invention in practice when not clear from the description , as 
well as information illustrating the industrial appl ication of the invention.  
·  In the case of biological material in which the description of the invention cannot be provided 
in detail, the application must be accompanied by certification that the material has been 
deposited with an institution recognized  by the Institute in accordance with the regulations 
for this law.  
Under Article 37 of the LPI Regulations , certification that the biological material has been so 
deposited will be required when:  
I.- the claim is for a microorganism as such;  
II.- the biolo gical material referred to in the application is not available to the public ; and IP/C/W/125/Add.25  
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  III.- the description of the biological material provided is insufficient to permit reproduction by an 
expert in the subject -matter.  
When a patent application refers to a sequence of nucleotides and amino acids, the y must be listed 
in the  description and claims.  
8. What rights are conferred upon owners of the patents referred to above ? Are 
product and process patents subject to the same rules as other patents ? Do they benef it 
from the same protection as stipulated in Article  28 of the TRIPS Agreement?  
 
Under Article  25 of the LPI , patent holders have the following exclusive rights in respect of  their 
patented inventions  (the same exclusive rights as conferred by Article  28 of the TRIPS Agreement ): 
 
I.- in the case of a patent for  a product, the right to prevent others from manufacturing, using, 
selling, offering for sale or importing the patented product without consent, a nd 
 
II.- in the case of a patent for  a proces s, the right to prevent others from using said process and 
from using, selling, offering for sale or importing product s obtained directly by means of the process 
without consent.  
 
9.  Are there any specific exceptions to these rights (affecting the scope or duration of 
the patents referred to above) ? To what extent are exceptions , available in respect of 
plant variety righ ts (e.g. those referred to under question B.4(i) below) , available in 
respect of rights conferred upon patent owners ? 
 
There are no excep tions that affect the scope or duration of the patent ; there are, however, 
exceptions with respect to uses that are not considered infringements, as set out in Article 22 of the 
LPI. 
 
Article  22.- The right conferred by a patent shall produce no effect against:  
 
I.- a third party who in the private or academic sphere and for non -commercial purposes engages 
in scientific or technological research activities for purely experimental, testing or teaching purposes, 
and to that end manufactures or uses a product or process e quivalent to the one patented;  
 
II.- any person who markets, acquires or uses the patented product , or the product obtained by the 
patented process , after the said product has been lawfully placed on the market;  
 
III.- any person who, prior to the filing d ate of the patent application, or where applicable the 
recognized priority date, uses the patented process, manufactures the patented product or begins 
the necessary preparations for effecting such use or manufacture;  
 
IV.- the use of the invention concern ed in transport vehicles of other countries when it forms part 
of such vehicles and when the vehicles are in transit on the national territory;  
 
V.- a third party who, in the case of patents relating to live material, makes use of the patented 
product as a n initial source of variation or propagation to obtain other products, except where such 
use is made recurrently ; and 
 
VI.- a third party who, in the case of patents relating to products consisting of live material, puts 
into circulation or markets the patented products for purposes other than multiplication or 
propagation, after the said products have been lawfully placed on th e market by the patent owner 
or by the person to whom a licen se has been granted.  
 
Article  22(IV) and (V)  of the LPI regulates exceptions and limitations in the use of patented 
inventions by farmers and plant breeders . 
 
10.  Are there any specific provisio ns under your country's law for compulsory licensing 
in respect of the patents referred to above?  
 
No. The LPI  contains general provisions regulating compulsory licensing on emergency or national 
security grounds, without distinction as to the type of invention.  IP/C/W/125/Add.25  
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B. Protection of Plant Varieties  
1.  Does your country's law provide for the protection of plant varieties by plant 
breeder's rights, plant patents or any other sui generis  system for the protection of plant 
varieties?  
 
Mexico  has a sui generis  system for the protection of plant varieties , as regulated in the Federal Law 
on New Plant Varieties . 
 
2.  (a) If your country is a party to the International Convention for the Protection of 
New Varieties of Plants (UPOV), please indicate which Ac t or Acts of the 
UPOV  Convention your country has signed ; which it has ratified ; to which it 
has acceded ; and to the standards of which its law conforms but to which it 
has not (yet) adhered.  
 
Mexico  is a party to the UPOV of 2 December  1961, as revised in Geneva on 10 November  1972 and 
23 October  1978. 
 
Mexican law is consistent with the 1978  Act. 
 
 (b) If your country is not a party to the UPOV Convention, does the protection 
offered to plant varieties under your country's law conform to the standards 
of any of the Acts of the UPOV Convention and, if so, which?  
 
Not applicable . 
 
3.  Please indicate whether concurrent protection under your country's plant variety 
protection law and its patent law is available (see also question A.4 above).  
 
No concurrent  protection is available , in that plant varieties are not patentable under patent law . 
 
4.  Please provide the following details of your country's sui generis  system for the 
protection of plant varieties:  
 
(a) the relevant laws and re gulations and, if they have been notified to the Council 
for TRIPS, a reference to the relevant WTO documents;  
 
Federal Law on New Plant Varieties  (LFVV) and its Regulations . 
 
(b) the definition of "plant variety" ; 
 
For "plant variety ", the LFVV uses the Spanish term "variedad vegetal ", which it defines as  "a 
subdivisi on of a species that includes a group of indi viduals with similar characteristics that is 
considered stable and homogeneous ". 
 
(c) the conditions required for protection ; 
 
The plant variety  must be  novel , distinct, stable and homogeneous , and must have a denom ination . 
 
(d) the extent to which subject -matter that is already known to the public or 
identical to what occurs in nature is protectable under your country's 
sui generis  system for the protection of plant varieties ; 
No. 
 
(e) the extent to which protection can be based on characteristics of germpl asm, 
as opposed to characteristics of plant varieties derived from such germplasm ; 
 
Protection is based on the expressed morphological features of a group of plants that is characterized 
overall by distinction, homogeneity and stability.  
 IP/C/W/125/Add.25  
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  (f) who is entitled to the rights ; 
 
A natural or legal person that has used  an improvement process to obtain and develop a plant variety 
of any gen us and species . 
 
(g) the procedure for the acquisition of rights, including the authority in charge of 
administering the rights ; 
 
An application for issuance of a breeder's  title must be submitted to the Ministry of Agriculture and 
Rural Development . 
 
(h) the rights conferred ; 
 
I.- the right to be recognized as the breeder of  a plant variety , a right that is inalienable and 
imprescriptible, and 
 
II.- the right to utilize and exploit, exclusively and temporarily (for the duration indicated in (j) 
below ), directly or through a third party with his consent, a plant variety and its propagation 
material, for its production, reproduction, distribution or sale, as well as for the production of other 
plant varieties and hybrids for commercial purposes.  
 
(i) exceptions to the rights conferred, such as:  
 - acts performed for research or experimental purposes;  
  - acts performed to develop new varieties of plants;  
  - acts performed to commercialize such newly developed varieties;  
- any "farmer's privilege" (e.g . acts performed by a farmer on his own land  
in respect of seed saved from the previous harvest);  
  - acts done privately and for non -commercial purposes;  
  - compulsory licensing.  
 
The consent of the breeder of  a plant variety is not required for it to be used  as follows : 
 
I.- as a source or an input for research into the genetic improvement of other plant varieties ; 
 
II.- for the multiplication of propagation material, provided it is for personal use as grain for 
consumption or sowing , in accordance with the regulations for this law and  Official Mexican 
Standards  established by the Ministry of Agriculture and Rural Development ; or 
 
III.- for human or animal consumption, benefitting only the person who harvests it . 
 
The Ministry of Agriculture and Rural Development  can issue emergency licences . 
 
(j) the duration of protection ; 
 
I.- eighteen years  in the case of perennials (forest, fruit and ornamental species and vines), including 
their rootstocks ; and 
 
II.- fifteen years for all other species . 
 
These periods will run from the date of issuance of the breeder's  title. After they elapse,  the plant 
variety , its use and exploitation will enter the public domain . 
 
(k) transfer of rights ; 
 
The rights con veyed by the breeder's  title, with the exc eption of the right to be recognized as the 
breeder of  a plant variety , may be taxed and transmitted wholly or partially by means of any legal 
title before a notary public . 
 
(l) enforcement of the rights ; 
 
Whosoever utilizes or exploits a plant variety , or propagation material  thereof , during the time 
between the date on which the submission of the application is recorded and the issuance of the IP/C/W/125/Add.25  
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  relevant breeder's  title, without the consent of the legitimate breeder  at that time , will be responsible 
for any damages caused  to the latter , who may claim such damages  as from the effective starting 
date of the title . 
 
In administrative proceedings for the imposition of penalties for infringements under the LFVV the 
Ministry of Agriculture and Rural Development may also take the following provisional measures:  
 
I.- order the withdrawal from circulation or prevent the distribution of plant varieties or propagation 
material that infr inge rights protected by th is law ; 
 
II.- order the withdra wal from circulation of articles, packaging, packing, containers, stationery, 
advertising material and the like that infringe any of the rights protected by th is law ; 
 
III.- seize goods that infringe rights protected by this law ; and 
 
IV.- order the alleged infringer to suspend or discontinue activities that constitute an infringement 
of the provisions of th is law . 
 
If any of these measures is taken , the affected party and interested parties will be notified and th e 
circumstance will be  noted in the act issued to this effect.  
 
If the plant variety  or propagation material  is being commercialized, merchants will be required to 
refrain from disposing of it as from the date on which they are notified of the measure taken . 
 
The same requirement will apply to producers, nursery operators, manufacturers, importers and 
their distributors, who will be responsible for immediately recovering the plant varieties o r 
propagation material  already on the market . 
 
The provisional measures indicated above may be ordered at the request of an interested party . 
 
II. RESPONSES TO REPRESENTATIVE QUESTIONS FOR TR IPS 27.3(B) REVIEW 
SUBMITTED BY THE DELEGATIONS OF CANADA, THE EUROPEAN UNION (FORMERLY 
EUROPEAN COMMUNITIES), JAPAN AND THE UNITED STATES (DOCUMENT IP/C/W/126)  
A. Patent System Questions  
1.  In your territory, is there any basis for denying a patent on an invention consisting 
of an entire plant or animal that is nove l and involves an inventive step?  
 
Yes. Article 16(III) and (V) of the LPI provides that plant and animal varieties are not patentable . 
That exclusion , however, does not apply  to microorganisms  or inventions resulting from processes 
that are no n-biological or microbiological . 
 
2.  If the answer to question 1 is yes, please respond to the following questions:  
 
(a) Does your patent system exclude entire plants or animals as inventions ? If it 
does, please cite the legal basis for this. 
 
No. The LPI refers only to animal and plant varieties  as such . Related inven tions must consist of a 
human creation that allows matter or energy existing in nature to be transformed for human use 
and to satisfy specific human needs . They must also be novel , involve an inventive step  and be 
suitable for industrial application, in accordance with  Articles 15 and 16 of the LPI . 
 
(b) If your patent system does recognize entire plants and animals as inventions, 
does it exclude all such inventions from being patentable subject -matter, or 
does it only exclude certain types of plants or animals ? If it excludes all, please 
cite the legal basis for their exclusion (e.g. lack of industrial applicability) . If 
it excludes only certain types, ple ase identify the categories or characteristics 
of inventions that are excluded and cite the legal basis for their exclusi on. 
 IP/C/W/125/Add.25  
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  The LPI refers only to plant and animal varieties  and to human  beings as such  and excludes them 
from patentabil ity. However, microorganisms and the results of processes that are no n-biological or 
microbiological  are not excluded . 
 
(c) Is there any other basis in your law that precludes the grant of a patent on any 
categories of plant or animal inventions that otherwise are novel, involve an 
inventive step and are capable of industrial application ? If so, please cite the 
legal basis for that exclusion from patent eligibility.  
 
Yes. Article 4 of the LPI proh ibits the grant of patents whose content is contrary to ordre public and 
morality.  
 
3.  Other than with respect to subject -matter you defined as being ineligible to be 
patented under question (2), is it possible in your territory to obtain a patent claim d efined 
in any of the following ways?  
 
(a) A patent claim that is not limited to a specific plant or animal variety . 
 
No. Plant and animal varieties  cannot be patented . 
 
(b) A patent claim that is expressly limited to a plant or animal variety . 
 
No. Plant and animal varieties  cannot be patented . 
 
(c) A patent claim that is expressly limited to a group of plants or animals, where 
the group is defined through reference to a shared characteristic such as 
incorporation of a particular gene.  
 
There are two different responses to the question as formulated, based on two different scenarios:  
 
(I) If the shared technical characteristic is intrinsic to the individual (plant or animal), the 
individual would be considered "wild", so the purpose of the claim would be interpreted as 
protection of a discovery, animal variety or plant variety . In that case, under Article 16(III) 
and (V) of the LPI  – or perhaps under Article 16(IV), which excludes the human body and 
live parts thereof from patentability  – the clai m would pertain to unpatentable 
subject -matter . 
 
(II) If the shared technical characteristic results from human intervention by means of a 
technical process to meet a specific need (Article 15 of the LPI) , then the individual plant or 
animal would be consi dered patentable, and a patent could be granted in response to the 
claim.  
 
(d) If the answers you provide to question (3)(a) to (c) vary, please provide the 
definitions of a "plant variety" and an "animal variety" that are used by your 
examining authority.  
 
Not applicable . 
 
4. Is it possible to obtain a patent in your territory on a microorganism that is novel, 
involves an inventive step and is capable of industrial application ? If not, please identify 
the legal basis under which these inventions are deemed ineligible to be patented.  
 
Yes. Microorganisms  can be patented . 
 
5. Is it possible to obtain a patent in your territory on an essentially biological process 
for the production of a plant or animal (i.e. a process limited to those acts that are 
necessary for sexual or asexual reproduction of a plant or animal) ? If not, plea se identify 
the legal basis under which a patent on such a process would be denied.  
 
No. Article 16(I) of the LPI  provides that essentially biological processes cannot be patented.  
 IP/C/W/125/Add.25  
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  6.  Is it possible to obtain a patent in your territory covering subject -matter that is 
identical to that found in nature (e.g. a plant or animal in its natural state)?  
 
No. Article 15 of the LPI  define s an invention as any human creation that allows matter or energy 
existing in nature to be transformed for human use and to satisfy specific needs . Article 16(II) of 
the LPI  excludes from patent protection biological and genetic material as found in nature , and 
Article  19(II) of the LPI  does not consider as inventions discoveries that simply reveal or disclose 
what already exists in nature, even if previously unknown to humans . 
 
There is no exclusion, however, for inventions consisting of biological or genetic material isolated 
from its natural state  and obtained by a technical process, even if identical to what is found in nature.  
 
B. Plant Variety Protection Systems  
7.  Do the laws applicable to your territory provide for a sui generis  form of protection 
for a new plan t variety?  
 
Yes. The applicable l egislation  in Mexico  is the Federal Law on New Plant Varieties  and its 
implementing r egulations . The Law entered into force in 1996, and its implementing r egulations 
were promulga ted in 1998.  
 
8.  If the answer to question 7 is "yes", does that protection conform to the standards 
defined in one of the Acts of the International Convention for the Protection of New 
Varieties of Plants (UPOV)?  
 
Yes. 
 
9.  If the answer to question 8 is "yes", please specify the Act of the UPOV Convention 
upon which your legislation is based (i.e. the 1991 Act, the 1978 Act or the 1961/1972 
Act).  
 
Mexico acceded to the UPOV  (the 1978 Act) in 1997 . 
 
10.  If sui generis  protection for plant varieties is provided in your territory, would any 
of the following acts require the prior authorization of the right holder?  
 
(a) acts performed for research or experimental purposes, or to develop new 
varieties of plants ; 
 
No. Article 5 of the LFVV provides that the consent of the breeder of  a plant variety is not required 
to use that variety as a source or input for research into the genetic improvement of other plant 
varieties.  
 
(b) acts performed to commercially exploit a variety distinct from the protected 
variety but sharing its essential characteristics ; 
 
No, provided that at least one of the plant variety's relevant characteristics is technically and clearly 
distinct.  
 
(c) acts performed by a farmer of harvesting seed from his planting of a protected 
variety legitimately obtained, storage of that seed, and replanting of that seed 
on the farmers' land . 
 
Authorization is not required provided that the seed is for personal use as grain for consumption or 
sowing, in accordance with the regulations to the LFVV and the Official Mexican Standards  
established by the Ministry of Agriculture and Rural Development , or is for human or animal 
consumption , benefitting only the person who harvests it . 
 
If prior authorization is not required for any of the above examples of activities, is there 
any requirement that the party undertaking the specified actions provide the right holder 
with remuneration in any form?  
 IP/C/W/125/Add.25  
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  Any person wishing to  commercialize a protected va riety must obtain authorization from the holder  
of the breeder's right . Such authorization is generally granted in the form of a licensing agreement 
between the right holder and the persons interested in exploiting the variety.  
 
11.  Can protection be obtained for a plant variety that was known to the public , or was 
publicly  available , prior to the application for sui generis  protection for that plant variety, 
and, if so, under what conditions (i.e. what are the time -limits during whic h public 
disclosure or availability will not preclude the grant of protection)?  
 
Yes, it is possible, provided that the plant variety : 
 
(a) has not been disposed of  in national territory  or was disposed  of during the year prior to  the date 
on which the application for the breeder's title was submitted , and 
 
(b) has not been disposed of  abroad or was disposed of  during : 
 
(i) the six years prior to submission of the application  in the case of perennials (forest, fruit 
and ornamental species and vines) , including their  rootstock s, or 
 
(ii) the four years prior to submission of the application  for all other species . 
 
12.  Can protection be predicated on identification of an unexpressed gene, on an 
unexpressed set of genes present in the genome of the plant variety, or on the 
characteristics of germplasm, rather than the expressed characteristics of plant varieties 
derived from such genes or germplasm?  
 
No. Protection under th e UPOV system is based on the expressed morphological features of a group 
of plants characterized overall by distinctness, homogeneity and stability . 
 
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