To print this article, all you need is to be registered or login on Mondaq.com.
Since the beginning of 2020, businesses around the world have
faced unexpected challenges and law firms are no exception to this.
The COVID-19 pandemic has made social distancing a necessity and
has led us to rethink the way we work. We are now avid users of
electronic platforms and spend long hours at the office, which for
many is our home office. As a result of the pandemic, almost all
patent applications in Mexico are now filed through the official
online platform, which has been perfected by the Mexican PTO and
works smoothly.
Also, on November 5, 2020, a new Mexican IP law entered into
force, which contains numerous modifications to the previous law.
This completely new Mexican IP law elaborated on many practices
currently performed by the Mexican Patent Office (IMPI) and
clarified many gray areas that were present in the previous law. As
it relates to inventions, this new law incorporated several
positive changes, which are in line with the requirements of the
new U.S. Mexico Canada (USMCA) Treaty, such as the possibility of
applying for a patent term adjustment in the case of unreasonable
delays (more than five years between the filing date in Mexico and
the date of grant), directly attributable to IMPI during the
prosecution of a patent application. Of course, this was
well-received by IP practitioners and owners of patent rights, and
it demonstrates that Mexico is heading toward a more harmonic IP
protection system that meets international standards.
On the other hand, in the context of COVID-19, patent term
extensions have become worrisome for some countries, such as
Brazil, in which their Supreme Court ruled that patent extensions
are unconstitutional and applied this provision retroactively for
pharmaceutical patents. Ahead is some of the history of patent term
adjustments in Mexico, given that this has not been an isolated
experience.
Pipeline patents, Mexico’s first experience
Prior to 1991, the IP law that was in force had been on the
books and enforced since 1976. This 1976 law was significantly
limited and pharmaceutical inventions, among others, were not
considered patentable subject matter.
At that time, Mexico was negotiating the North American Free
Trade Agreement (NAFTA) with the U.S. and Canada, a situation that
triggered a dramatic change to the state of IP in Mexico, with a
new IP law that was published in the Official Federal Gazette on
June 27, 1991, which was then modernized to generally comply with
the IP chapter of NAFTA.
In this new law, pharmceutical inventions, among others, were
now considered patentable. This 1991 law contained a new concept
for providing so-called ‘pipeline protection’ for patents
that had fallen in the public domain, since they had not been
considered patentable in the previous law of 1976, which was
included in the 12th Transitional Provision of the 1991 IP Law.
In the 1991 Law, the conditions for obtaining Pipeline
protection were the following:
- The corresponding Mexican patent application had to be filed
within 12 months of the enactment of the law and should have been
filed by the first applicant of the corresponding foreign
application or by the assignee thereof. - The applicant had to prove they had filed the application in
any of the member countries of the PCT or had to prove they had
obtained the corresponding patent. - The exploitation of the invention, or the import on a
commercial scale of the patented product or of the product obtained
by the patented process, must not have been initiated by any person
in Mexico prior to the filing of the application in Mexico.
The last paragraph of the 12th Transitional Provision of the
1991 IP Law read that “The term of the patents granted under
the provisions of this article will end on the same date as the
patent granted in the country where the first application was
filed, but the term will never exceed 20 years as of the filing
date in Mexico.”
Based on the above provision, patents were granted following the
term granted in the country where the first application was filed,
and a correction of up to 20 years, as of the Mexican filing date,
could be granted by the Federal Courts as a consequence of
litigation. Of the total amount of pipeline cases that were
litigated, our firm achieved patent term corrections in 12 of them
of a total of around 20 that were litigated.
This was Mexico’s first experience with patent term
adjustments and ended many years ago, as the patents that qualified
for such adjustment also ended many years ago. Supreme Court of
Justice case.
Compensation due to unjustified delays
On October 14, 2020, the Mexican Supreme Court ruled for the
first time that the owner of a patent (in this case Bayer) should
be compensated by an adjustment in the life-term of the patent due
to unreasonable delays by the Patent Office. It is important to
clarify that this Supreme Court decision was a divided one (three
vs two), and since it was not unanimous, it did not become
jurisprudence and was not binding. Thus, any other party that
sought such compensation would have to independently litigate.
The rationale of the Supreme Court was that NAFTA provided that
a life term of a patent could be of 17 years as of the granting day
of a patent. Thus, it was suitable to compensate the life term of
the specific patent subject matter of that litigation (which was
granted under NAFTA and the previous 1991 IP Law) so that it is in
force for 17 years, starting from the date of grant, due to
unjustified delays during patent prosecution.
In Mexico, international treaties such as NAFTA have a higher
hierarchy than domestic law, which was a key factor in this
decision.
The Supreme Court ordered IMPI to issue an official
communication and establish the term of validity of the specific
patent in that particular case, according to the 17 years from the
granting date, as established by NAFTA.
Since the decision was not binding to IMPI, it is expected that
IMPI will not adopt the criteria to compensate life term patents in
similar cases without a court order. For the Mexican Courts, the
precedent is not binding either, but highly persuasive.
The decision was surprising by all measures, especially
considering that the new Mexican IP Law had already been approved
by Mexico’s congress and senate and was scheduled to be
published on November 5, 2020. The new IP law already contemplated
patent term adjustments due to unreasonable delays by the Patent
Office and even specified the timeframes for deciding when patent
term adjustments would apply.
Download >> Patent Term Adjustments In Mexico
Originally published The Patent Lawyer, Annual 2022
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
