Thought leadership from our experts

Q&A with Karla Islas

What are the most valuable features of your firm's career development programme and how does it help you in your professional growth?

Over the last years Dumont has taken into account the importance of offering comprehensive training and career development programs, since every professional that may be interested in growing their career in our firm, would ask for them when joining the firm.

In my case having an individualized professional development was proposed and established before I joined Dumont. Personally, it would have been a deal breaker if I wouldn't have one, especially if it was going to be for a partnership career.

After three years of joining Dumont, on my personal opinion, I must say that this career development programme has been built on a daily basis, by means of specific guidelines for achieving core competencies, feedback and mentoring by some of the partners that motivate me to continuously develop on a personal business profile, marketing myself, and establishing specific goals for improving my leadership and management skills and thereby to improve and persuade my team's performance.

What was the most significant development in your practice area in the past 12 months?

The most important recent development in the patent area is that Mexico is actively participating in the negotiations of the Trans-Pacific Partnership Agreement (TPP). According to leaked documents, the Intellectual Property Chapter of this Agreement would significantly impact on topics like prosecution of industrial designs; patent term extensions; data protection for pharmaceutical and biotechnological products; protection for business methods, software, therapeutic methods, among others, if eventually signed.

On the other hand, additional to other Patent Prosecution Highway (PPH) programs Mexico has signed with countries like USA, Japan, Korea, Spain, China and Singapore, a recent PPH program has been accorded between the Mexican Patent Office and the European Patent Office, which might positively impact prosecution times for many patent applications in Mexico.

What aspects of law in your practice area are in need of reform, and why?

In the patent practice, the law aspects that may need a reform would be the following:

• The third party observations.

The current third party observations system was introduced in 2010, with a failed intention to introduce a pre-grant oppositions system. According to this system, after an application is published in the official gazette a six-month period is open for any party to submit observations directed to try to show that the invention contained in the published application is not patentable. Within said six months, the application does not enter the examination process. If third party observations are submitted, the Patent Office informs about the observations to the applicant. Applicant can decide to respond or not to such observations. The response is not served to the third party as it does not acquire the character of interested party. After the six-month period ends, the application goes to examination just as any other application. The Patent Office can decide whether or not to take into consideration any of the third party observations and/or the response filed by applicant. Very few applications undergo third party observations, so that questions have arisen whether the observation system really worth stopping prosecution of all patents for six months.

The patentability of computer-implemented inventions needs clarification.

The current Law establishes that computer programs are not considered as inventions. Clear guidelines as to when an invention falls within the prohibition and acceptable claim format are needed.

Publication of divisional applications.

According to the current Law, divisional applications are not published as regular applications are but until grant. This lack of publication introduces uncertainty for third parties because while the divisional application is pending it is not possible to know whether said divisional exists. The uncertainty is high if we take into account that voluntary divisional applications can be submitted before paying final fees of the parent case without leaving any evidencing communication about the division in the parent application.

Where do you see the 'next big thing' happening in the area you operate?

In Dumont Bergman Bider, our core business is patents, the area that I manage; therefore, my main and most relevant challenge is to continuously improve our strengths that may differentiate us from the other IP law firms who offer the same type of services.

In a very near future, the "next big thing" happening would be working in maintaining the correct balance between the experienced technical advice we provide on a day-today work (strength that differentiates us from other IP Law firms) and the inspiration for accomplishing that sustainable advice, since it implies hard work that not everybody is willing to do. Having a better employee motivation can be the most powerful factor for obtaining incredible results. Therefore, finding the correct formula for gaining engagement and loyalty of my team may bring major gains in output and added-value.


What advice would you give to a young aspiring lawyer interested in getting into your practice area?

First of all, I would try to persuade young people who have just got out from school or have been working in a technical area to become patent attorneys. How can we do this? I will try to convince them to internally do the switch, from the technical side they have been used to work in, to the opportunity for combining the best of science with the legal training.

This profession generally suits people who enjoy working on the scientific side but don't want to continue on a research career and may have an interest in establishing business relationships with more people, corresponding with clients and overseas patent attorneys that would lead into the worldwide cutting-edge technology.

I believe this is the most important step they have to manage for becoming a successful patent attorney, since it's an extraordinary combination of two profiles: the technical and the legal side.

Once they are convinced to continue in the IP world, I would let them know how to be the best ones and how to take advantage of any adversity that may arise. Be willing to do anything and everything they ask in support. No task is too menial or tedious that they can't learn from it. Most of the time, patent attorneys may feel that they receive a very small salary in comparison with the tons of work they have to carry out, however, in our first job, we are paid for learning and probably they will gain more experience during these first years that they could anywhere else. I will advice them to be prepared to whatever may be asked for.