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

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