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FAQ

PATENTS

 

What sort of protection provides Mexico to inventions?

Mexican law provides different protections for different innovations: patents (in virtually all fields of technology), registrations of industrial designs, utility models, layout designs (topography) of integrated circuits registrations and plant varieties. Mexican law also protects trade secrets.

What substantive requirements must an invention meet to be patentable in Mexico?

Mexican law demands absolute novelty, inventive step (non-obviousness) and industrial application (useful).

What inventions cannot be patented in Mexico?

Mexico does not allow patents on business methods, software, therapeutic, diagnostic and surgical methods, biological and genetic material, as found in nature; animal races, the human body, discoveries, and essentially biological processes for the production of plants or animals.

Although Plant varieties may not be patented, there is an ad-hoc registration to obtain exclusivity rights on the plant variety.

What is the term of patents in Mexico?

The term of a patent in Mexico is 20 years, counted from the filing date, and subject to the payment of maintenance fees.

Other forms of protection have different non-extendable terms (always counted from the filing date in Mexico): 15 years for industrial designs; 10 years for utility models and layout designs (topography) of integrated circuits; and 15 or 18 years (depending on the variety) for plant varieties.

Trade secrets do not have a specific term. Trade secrets are born and exist as long as the de facto conditions that create them persist.

Can the life of a patent be extended in Mexico?

As a general rule, the life of Mexican patents may not be extended; the exceptions were the “pipe-line” patents filed between June 28, 1991 and June 18, 1992 (see our http://reyesfenigeng.wordpress.com/2008/06/17/the-extension-of-life-of-patents-in-mexico about “pipe-line” patents in Mexico). The last of these “pipe-line” patents definitely expired in 2012.

Does Mexican law provide a grace period for disclosed inventions?

Yes. Mexican law provides a twelve-month term to file a patent application for a disclosed invention, provided that such disclosure was made by the inventor or the assignee. The patent application would have to state the date of disclosure in the patent application and eventually file the documents evidencing such prior disclosure.

According to the 1994 amendments to the statute, if the disclosure is associated to a publication made by a patent office, such disclosure does not benefit from the grace period.

Does Mexico allow the Bolar exception?

Yes, although the insertion of the Bolar exception in the Mexican law was quite deficient.

The Rules for Health Supplies provide that a generic manufacturer is allowed to obtain authorization from the Mexican FDA to perform tests and experimental production aimed to obtain the marketing authorization of a drug three years in advance of the expiration of the patent.

Do Mexican courts and authorities accept the doctrine of equivalents in connection to patent infringement?

There are no published precedents accepting or rejecting the doctrine of equivalents in Mexico.

On one hand, the doctrine of equivalents would seem to be in conflict with the Constitutional principle of Legality, that stipulates that analogy or equivalency may not be used to determine a specific conduct as punishable; although this principle is mainly related to criminal law, it is generally accepted that it should be extended to all cases where the State imposes a penalty due the infringement of a statutory provision.

On the other hand, the Mexican statute provides that the scope of the protection conferred by a Mexican patent shall be determined by the claims, and that the description and drawings may be used to interpret the claims. Therefore, if the claims may be interpreted, there could be room for the doctrine of equivalents.

Does Mexico allow oppositions to patent applications?

Mexican law allows limited oppositions to patent applications.

Does Mexican law provides any sort of provisional protection for patent applicants while the application is still pending to oppose use of the claimed invention by third parties?

No. Unfortunately, it is absolutely necessary to wait for the issuance of the Mexican patent to file actions and request preliminary measures against infringers.

The statute stipulates that the patent owner is allowed to claim damages retroactively to the date of publication of the patent application. However, in order to be allowed to file a lawsuit for damages due patent infringement, it is necessary first to have the patent issued and obtain a final infringement decision from the Mexican Patent and Trademark Office.

Is there any way to expedite the substantive examination of a patent in Mexico?

Yes. Although the law demands the examination for all patent applications by the Mexican Patent and Trademark Office, it often relies on the substantive examination of foreign patent offices (mainly the examining offices provided in the PCT).

Therefore, it is possible to expedite the substantive examination by filing evidence that an international examination office already approved the patent application, and adjusting the claims of the Mexican application to the approved ones, provided that such approved claims are not against the law (i.e. claims on a therapeutic method or software).

As for what cannot be claimed in a patent application, Mexico is closer to the European Community law than to the American law.

What are the requirements to license a patent in Mexico?

In general, there are very few contractual restrictions for the licensing of patent and patent applications in Mexico. For example, it would be illegal to license an invention that is already in the state of the art, or if there is no patent or patent application in Mexico.

On the other hand, there are no special statutory restrictions to license patent applications, even if unpublished.

Licenses, and securities, may be recorded with the Mexican Patent and Trademark Office in order to make them enforceable against third parties (mainly against assignees of the patent rights). The Mexican Patent and Trademark Office would refuse to record the license if the term is longer than the term of the patent, although such refusal would not affect the validity and enforceability of the patent between the parties.

The license may be recorded by either the licensor or by the licensee.

The parties in any license must be mindful of the restrictions that may arise from anti-trust laws. As a consequence of the interaction between anti-trust law and intellectual property law, some contractual provisions that would be valid under certain circumstances might be illegal under others.

Another consequence of the recordation of the license would be that the licensee would be allowed to file actions against infringers, unless the license explicitly provides otherwise. The license does not have to be exclusive to vest the licensee with the right to file actions against the infringers; if the license were silent regarding this issue, the licensee is authorized by act of the law to file infringement actions, thus the parties must be careful when drafting a license valid for Mexico.

Licenses become of public record when recorded with the Mexican Patent and Trademark Office. If the license states confidential or sensitive information that should not be disclosed, the statute allows the parties to execute and file a summary of the license. In any case, the parties must be careful when drafting the summary, in order to avoid having two conflicting agreements.

Is it compulsory to prove working of a patent in Mexico from time to time?

No. There is no obligation to file, from time to time or every three or five years, evidence of working of a patent or excuses for non-working of the claimed invention, in order to keep the patent alive or enforceable.

We do not encourage the filing of proof of working or excuses due lack of working of a patent, given that such practices do not result in any benefit for the patent holder.

Some Mexican practitioners try to justify the periodical filing of proofs of working or excuses, stating that it would prevent the filing or grant of a compulsory license; however, such statement is completely unsupported.

If a third party files an application for a compulsory license (nobody has filed such an application in the last 50 years), the patentee would have one year, counted from the date the Mexican Patent and Trademark Office informs about the request for compulsory license, to start working the patent in Mexico –either by exporting the patented product into Mexico or using it in our country directly or through a licensee recorded with the Mexican Patent and Trademark Office- and proving so.

If the patentee does not start using the patent in Mexico within the above-stated year, it would be allowed to file excuses to justify the lack of working and oppose the grant of the compulsory license.

Therefore, the risk of a compulsory license may not be actually reduced by filing proof of working or excuses due non-working of the patent. On the other hand, having the attorney-in-fact of the patentee filing a spontaneous and unilateral statement with the Mexican Patent and Trademark Office, stating that the claimed invention has not been worked in Mexico and excusing such omission, without any supporting evidence, does not make much sense if what the patent owner wants is discouraging a potential applicant for a compulsory license.

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