In recent years, the Mexican Institute of Industrial Property (IMPI) has focused its efforts on reducing patent prosecution timeframes in Mexico.
The reduction of the timeframe of a patent application from filing to granting takes additional importance since the Federal Law for Protection of Industrial Property (FLPIP) now considers the issuance of Complementary Certificates for patents that have had a delay in their granting process, provided in Article 126, specifying that when in the prosecution of a patent there are unjustified delays directly attributable to the Institute that result in a term exceeding five years, at the request of the owner, a complementary certificate may be granted to adjust the term of the patent. Likewise, the consideration of extending the term of a patent is also noted in international treaties to which Mexico is a party, for example, in the USMCA, where it is considered that the patent term could be extended in case of “unjustified” delays of the granting authority (article 20.44).
In October 2024, Dr. Santiago Nieto Castillo was appointed as Director General of IMPI, who has clearly agreed with Mexican IP practitioners in many opportunity areas to improve the practice in terms of patents, prioritizing the delay in the patent granting period and the streamlining of administrative procedures.
According to data provided by the Institute, Mexico faces a backlog of 66 thousand patent applications, so the new administration has set as a primary goal to reduce the period to complete the process of a patent application from five years (maximum period to not be considered unjustified delays) to three years.
In this line, it is worth noting that currently there is a slight increase in the number of granted patents compared to the number of filings. Considering the public data available and provided by IMPI, taking the last 5 years (2018-2023) as the most representative period, the number of patent application filings have had a slight variation, noting on average only about 5% throughout this period, with 16424 filings in 2018 and 15630 in 2023. However, the increase in the number of annual grants has marked an increase of about 17%, having a total number of grants in 2018 of 8921 and increasing in 2023 to 10471. From the available data for the last 10 years, this increase in grants in relation to the number of filings is only noticeable in the last 5 years.
Applications that were filed with the current FLPIP (In Force from November 2020) have not yet met the 5-year maximum period, so the same cannot be contemplated under the provisions of Article 126 of the FLPIP; however, in about 12 months, FLPIP-analyzed applications that remain pending will meet the requirements to be considered for an unreasonable delay analysis, providing a very short window for the new administration to drastically improve patent timeframes.
This scenario also opens an important opportunity to owners and practitioners in Mexico to increase the presence of term extension requests for applications filed before November 2020, which for the firm time will have a legal framework established in the Federal Law for patentees to require the issuance of supplemental certificates, moving a patent practice that has been uphill for patentees for many years to a scenario better adapted to the international practice.
Luis Fernando Granados Castro
fgranados@uhthoff.com.mx
