Making up lost time: patent term adjustments in Mexico
Patent protection is a cornerstone of innovation, providing owners with a 20-year term of exclusivity to capitalise on their inventions. However, the exclusivity starts from the legal filing date, often making the effective protection period shorter due to delays in patent prosecution. During the prosecution of patent applications in many countries, delays not always attributable to the applicant can occur. In Mexico, there were no mechanisms such as patent term adjustment (PTA) to recover time lost due to administrative delays at the Mexican Patent Office until recent years. This article delves into the evolving landscape of PTAs in Mexico.
The historical context
Understanding the current state of PTAs in Mexico requires a glimpse into the past. The Industrial Property Law (IPL), in force until November 5, 2020, served as the previous governing legislation for patents and offered no scope for term adjustments. This rigidity persisted despite Mexico aligning with international trends, specifically by signing the North American Free Trade Agreement (NAFTA). Effective from January 1, 1994, NAFTA permitted the possibility that each contracting party provides a term of protection for patents of at least 20 years from the filing date or 17 years from the date of grant. Therefore, there existed a theoretical possibility in Mexico of extending the term of patent protection to compensate for unjustified delays during the prosecution attributable to the Patent Office. Nonetheless, attempts to enforce the NAFTA provision failed for some time, primarily because the IPL was not amended to align with the international treaty.
Landmark ruling
The issue took a significant turn on October 14, 2020 with a groundbreaking decision by the Mexican Supreme Court. The court ruled that, in line with NAFTA, the minimum effective patent term should be 17 years from the grant date if there were unjustifiable delays caused by the Patent Office. This decision, although not a binding directive for the Patent Office, paved the way for future PTAs for patents filed under the old IPL. Despite resistance from the Patent Office, which often rejected PTA requests on the grounds that the IPL limits the validity of a patent to an unextendable 20-year term, many have been successfully overturned through constitutional appeals.
