As per the current Federal Law for the Protection of Industrial Property (LFPPI, according to its initials in Spanish) that entered into force on November 5th, 2020, the lifespan of a Patent is limited to twenty (20) years counted from its filing date, which is concurrent with previous IP Mexican Law; however, this fixed period did not consider those cases where the actual granting process of the patent took more years than usual, mainly due to the internal procedures of the granting authorities
The above is extremely relevant, because there are patents that have been granted swiftly, taking 3 years or even less from their filing date, while in some other cases the authority has needed over six (6) years to grant the corresponding patent; the longer the granting authority takes to examine the patent application and finally grant the patent, the lesser “effective lifespan” of that patent would be, because under Mexican law, the owner of a patent cannot exert any enforcement actions, until such patent is formally granted.
Considering the above, the Mexican Supreme Court of Justice of the Nation (SCJN) took knowledge of a Revision Recourse of a Constitutional Appeal (amparo), in which the appellant requested such High Court to invalidate the sentence issued by a Circuit Tribunal, that denied the protection of the Federal Justice on the grounds that there are several International Treaties entered by the Mexican State, in which there is an obligation to recognize a “minimum lifespan” of a patent of 17 years, which is specifically established in article 1709.12 of the North American Free Trade Agreement (NAFTA), which has been recently superseded by the United States-Mexico-Canada Agreement (USMCA), same that entered into force on July 1st, 2020.
In this regard, the USMCA does contain provisions regarding the obligations assumed by contracting countries, to “compensate” the delays of the corresponding authority in granting patents, that result in a shorter lifespan, but obviously this applies only to patents that have been filed and granted after USMCA entered into force; thus, ¿what would happen to patents granted before USMCA, i.e. those filed and granted under NAFTA?.
And this, is where the resolution issued by the SCJN concerning the above-mentioned Revision Recourse and a very recent ruling issued by the Specialized Chamber for Intellectual Property Matters of the Federal Tribunal for Administrative Justice (SEPI-TFJA), come into play.
As mentioned above, in the resolution issued in A.R. 257/2020, the SCJN solved that there is indeed an obligation assumed by Mexico in NAFTA, that would force the country to guarantee a minimum “effective lifespan” of 17 years for valid patents, even if such Treaty left to the discretion of the country, the implementation of such provision in its domestic legislation (which in turn, never occurred because the now-repealed Industrial Property Law -superseded by the LFPPI-, did not include any provisions concerning a mechanism to request “compensation” in the case of patents, in which the length of their granting process, took long enough to impact that minimum 17 years of “effective” validity); in this regard, our Firm recently obtained for one of our clients (a leader pharma and biotech Fortune-500 company), a sentence issued by the SEPI-TFJA in which such Authority solved the following:
- The findings of the Mexican Supreme National Court of Justice (SCJN) in the Bayer Healthcare case (A.R. 257/2020) are applicable to this case, as such High Court recognized that NAFTA did foresee the minimum effective lifespan of 17 years of all patents, when counted from the date in which they are granted. uhthoff.com.mx
- Such “minimum effective lifespan” is established by the systematic interpretation of the provisions foreseen in the North American Free Trade Agreement (NAFTA), which was in force and therefore applicable at the time when the patent in question was applied for and then granted.
- Such “minimum effective lifespan” of 17 years, was considered because NAFTA did establish the possibility to implement a compensation mechanism in domestic Mexican law; while such mechanism was absent in the now-repealed Industrial Property Law, such circumstance did not impede, nor forbid the authority to implement a compensation on its own powers based directly in said International Treaty.
- The Mexican IP authority (IMPI), did commit an unjustifiable delay in the processing and eventual granting of the patent in question, which in turn, resulted in the loss of the “minimum effective lifespan” of 17 years, which negatively affected the rights of our client.
- Also, IMPI did not properly sustain the rejection to compensate the validity period of the patent in question, according to the criteria assumed by the SCJN, which follows obligations contained in NAFTA.
In consequence, the resolution issued by the SEPI-TFJA, opens a window of opportunity for holders of patents that do not have a minimum effective lifespan of 17 years in Mexico under NAFTA, by creating the possibility to request a compensation, or adjustment of its lifespan, for the time lost in its granting, based on an unjustified administrative delay; evidently each case would be different according to its circumstances, but this is a possibility that had been absent until this day. If you and/or your clients are interested in the above, please feel free to contact us, so we can review each particular case and be able to confirm if there could be grounds and therefore, possibilities, to devise a strategy in order to obtain the extension of the lifespan of the patent or the patents involved.