Patents FAQ

Mexican law provides different protection 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.

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

Protection of utility models is limited to mechanical apparatus and devices. Inventive step is not required.

Mexico does not allow patents on business methods, software, discoveries, scientific theories, scientific principles, forms of presentation of information, biological and genetic material as found in nature and juxtaposition of known inventions, if claimed in themselves.

The statute also prohibits patents on therapeutic, diagnostic and surgical methods, animal races, the human body, essentially biological processes for the production of plants or animals, procedures for cloning human beings and its products, procedures to modify the germline genetic identity of humans (if they imply the possibility of developing a human being), industrial or commercial use of human embryos, procedures to modify the genetic identity of animals (and the animals so obtained) if such procedures result in suffering without substantial medical or veterinary advantages. Inventions related to microbiological procedures or other technical procedures or products obtained by such microbiological procedures may be patented, though.

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

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

The term of a patent in Mexico is 20 years, counted from the filing date of the international application (if a PCT application) or the filing date in Mexico, 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 utility models; 10 years for layout designs (topography) of integrated circuits; and 15 or 18 years (depending on the variety) for plant varieties.

The term of industrial designs is five years, counted from the filing date in Mexico, renewable for five-year terms up to a maximum of twenty five years.

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.

As a rule, the life of Mexican patents may not be extended. There are three exceptions:

1. If the Mexican Patent and Trademark Office took an unreasonable long time to grant a patent (not less than five years from the filing date), the law allows an “adjustment” of up to five years.
2. In the case of unreasonable delay in the issuance of marketing authorization for pharmaceutical products. This cause of extension is stated in the United States-Mexico-Canada Agreement (USMCA) and it has not been implemented in national legislation. Further, USMCA provides a 4.5-year transition term to implement the provisions regarding extending patents due delay in issuance of marketing authorization. USMCA was published in Mexico on June 29, 2020.
3. A controversial non-binding decision from the Supreme Court in 2020 states that NAFTA allows a patent owner to request the Mexican Patent and Trademark Office a term extension of the patent if the effective term of the patent is less than 17 years from the issuance date.

Yes. Mexican law provides a twelve-month term to file a patent application for a disclosed invention, provided that such disclosure was made, directly or indirectly, by the inventor or the assignee or by a third party that obtained the information from the inventor or the assignee. The applicant must state the date of disclosure in the patent application and eventually file the documents evidencing such prior disclosure.

The disclosure associated to a publication made by a patent office does not benefit from the grace period.

Yes. The recently enacted Federal Law for the Protection of Industrial Property (in force since November 5, 2020) provides that a patent is not enforceable against a generic manufacturer that uses the claimed invention to conduct tests and experimental production aimed to obtain the marketing authorization of a drug. The statute does not state the term when the Bolar exception starts before the expiration of the relevant patent.

There was one isolated precedent (Amparo directo 339/2016) published in 2016 that stated that the doctrine of equivalents would be acceptable in Mexico. The precedent was not binding. The new Federal Industrial Property Law expressly states that infringement must be of the literal claims.

No. Unfortunately, it is 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, to be allowed to file a lawsuit for damages due patent infringement, it is necessary, first, to have the patent issued.

Yes. First, it is possible to request an early publication of the patent application, so the novelty examination may start sooner.

Although the law demands the examination for all patent applications by the Mexican Patent and Trademark Office, it is often willing to accept 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 a statutory prohibition (i.e. claims on a therapeutic method or software).

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 (i.e. assignees of the patent rights). The Mexican Patent and Trademark Office would refuse to record the license if the term is longer than the life of the patent, although such refusal would not affect the validity and enforceability of the license between the parties.

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

The parties in any license must be mindful of the restrictions that may arise from anti-trust laws. Because 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 statute authorizes the licensee 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, to avoid having two conflicting agreements.

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, to keep the patent alive or enforceable.

We do not encourage the filing 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 a statement is groundless.

If a third party files an application for a compulsory license (nobody has filed such an application in the last 60 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 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 trying to excuse such omission, without any supporting evidence, does not seem a good idea, especially if what the patent owner wants to achieve is discouraging a potential applicant for a compulsory license.