The extension of life of patents in Mexico

June 17, 2008 at 4:32 AM Leave a comment

 

The Mexican Constitution states that the exclusivity rights provided therein for inventors are “temporary privileges”.

Without entering into the discussion about the language used in the Constitution, it is clear that one of the characteristics of the exclusivity rights on inventions is the temporality.

Temporality may vary according to each specific intellectual property right. For example, the term of a registered utility model is only 10 years counted from the filing date, while the term of a patent is, as a general rule, 20 years counted from the filing date.

In this post we will briefly discuss the extension patents, and specifically the only case of patents extension currently allowed by Mexican law, although probably without having that intention.

The general rule is that the life of a patent (20 years from the filing date in Mexico) may not be extended. The only exceptions are the so called pipe-line patents.

In general terms, the pipe-line patents are those that were filed under the scope of Transitory Section Twelfth of the Industrial Property Law of 1991 (1991 IPL) between June 28, 1991 and June 28, 1992. The claimed inventions of such patents were basically pharmaceutical and agrochemical entities; these inventions were not patentable under the old Inventions and Trademarks law of 1976. The 1991 IPL not only made new pharmaceutical and agrochemical entities patentable, but provided a retroactive effect, so new medicines, fertilizers and pesticides already patented in other countries were made patentable in Mexico, notwithstanding the fact that said medicines, pesticides and fertilizers were already of public domain in Mexico and lacked novelty.

Putting aside the discussion about if the above-described provision was fair or not, the fact is that the language used by the lawmakers was poor, and left the implicit possibility of extending the term of pipe-line patents by stating that: “the term if the patents issued under this section shall end on the same date of expiration of the patent issued in the country where the first application was filed, and in no case the term shall exceed 20 years counted from the date of filing in Mexico”.

What happened is that in some of the countries where the first application for a patent related to a Mexican pipe-line were filed, namely the United States and Japan, the patent offices of those countries started extending the term of some of such “sister” patents. Of course, under normal circumstances, the extension of the life of a patent in a country –i.e. the United States- would not have direct consequences in another –i.e. Mexico-. However, in the case of pipe-line patents, given that the statute stipulated that the Mexican patent would expire in the same date than the foreign patents issued in the country where the first application was filed, the term extension granted for the “sister” foreign patent automatically impacts the Mexican pipe-line patent with a term extension.

The Instituto Mexicano de la Propiedad Industrial (IMPI) or Mexican Patent and Trademark Office (MPTO) is the administrative authority in charge of issuing patents and registering trademarks, among other tasks. The MPTO has been severely criticized in Mexico by the manufacturers of generic drugs because of extending the life of Mexican patents. The generic manufacturers argue that extending the life of a Mexican patent because a foreign government decided to do so is illegal (if not outrageous) and benefits innovative pharmaceutical companies (none of them Mexican) against the interest of Mexican companies and Mexican consumers.

In favor of the MPTO, I must say that it has always been against extending the life of patents. When a patent holder has claim in its benefit the extension of a Mexican pipe-line patent as a consequence of the extensions already granted in other countries, the MPTO has systematically refused to acknowledge such extension and the applicant has had to appeal such rejections with the courts. As far as I am aware, the innovative laboratories have always prevailed in the appeals, but not thanks to the MPTO, who has tried to use all remedies and arguments available to avoid extending the life of a patent. It not the court’s fault either; Mexican courts only apply and construct the statutes, but they are not a source of law. If there is some responsible for this situation, it is the Mexican Congress and the lousy language it used to draft legislation.

Concerning this matter, there is a very interesting non-binding precedent from the Highest Panel of the Federal Court of Tax and Administrative Affairs identified as V-P-SS-629 that appeared in page 87 of the Journal of the Federal Court of Tax and Administrative Affairs, January 2005, No. 49, Year V, Fifth Era.

Update of February 18, 2010: The Federal Court of Tax and Administrative Affairs issued a binding precedent, confirming the validity of the term extension of pipe-line patents, provided that the total term does not pass 20 years, counted from the filing date in Mexico. This precedent, as well as the one stated above, not only states the validity of the term extension of the pipe-line patents, but also provides that the extension is automatic, no matter when the patentee requested the MPTO to acknowledge the new term. The precedent states that the patentee may request the acknowledgement of the term extension after the expiration of the original term. The identification of this binding precedent is VI-JJ-SS-40, and may be reviewed at page 27 of the Journal of the Federal Court of Tax and Administrative Affairs, September 2009, No. 21, Year II, Sixth Era.

Entry filed under: Patent Law. Tags: , , , , , , .

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