Mexico: Compulsory licences and non-working
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Mexico: Compulsory licences and non-working

In recent times we became aware of some requests for advice as to whether a statement of excuse for the non-working of a patented invention in Mexico should be filed with the Patent Office (IMPI).

It is true that the Mexican IP Law establishes that in the case of patented inventions, after three years from the date of grant of the patent, or four years of the filing of the application, whichever occurs later, any person may request IMPI to grant a compulsory licence to exploit the invention, when the invention is not worked in Mexico, unless there are justified reasons.

Notwithstanding this, there is no express obligation or a requirement to file evidence of working the patent or proofs of arguments related to the excuses for non-working the claimed invention to keep the patent/application alive or enforceable. In this regard, a recommendation to provide a statement or periodically file proofs of working, stating that they would prevent the filing or grant of a compulsory licence is completely unsupported.

According to the law, if a third party files an application for a compulsory licence, the title holder would have one year from the date IMPI informs about the request for compulsory licence to cure the non-exploitation of the invention and start working the patent in Mexico, either by exporting the patented product or using it in our country directly or through a licence recorded before IMPI. Therefore, the risk of a compulsory licence may not be actually reduced by filing a statement of working the patent.

In the case of a petition for a compulsory licence, the applicant also has the obligation to provide evidence showing technical and economic capacity for work the patent in Mexico. Furthermore, the IP Law establishes that after giving the opportunity to cure the non-exploitation there should be a hearing with the parties in which IMPI will decide on the grant of a compulsory licence, and if IMPI decides to grant it, it will set forth its duration, conditions, field of application and amount of royalties which should be fair and reasonable.

In Mexico the IP law does not define nor provide examples or parameters for justified excuse for not working a patent, nor how it would be proved or argued, therefore any kind of evidence allowed by the local regulations should be accepted by IMPI to sustain the justified excuse for not working the patent as an exception for the potential compulsory licence proceeding and eventually analysed by this authority on a case-by-case basis.

We have not been aware that a compulsory licence has been granted in recent years in Mexico; however if it occurs it would be subject to further and detailed study.

Alejandro Torres

OlivaresPedro Luis Ogazón No 17Col San Angel01000 México DFTel: +5255 53 22 30 00Fax: +5255 53 22 30

more from across site and ros bottom lb

More from across our site

Based on surveys covering more than 25,000 in-house lawyers, the series provides insights into what law firms must score highly on when pitching to in-house counsel
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tony Nguyen, who returned to Fish & Richardson this month after a year travelling overseas, tells Managing IP how and why he took the plunge
Tom Treutler, who previously managed the Vietnamese office of Tilleke & Gibbins, has joined East IP
Counsel discuss upcoming AI and data privacy legislation and what they’ve learned since Chile joined the Madrid Protocol
INTA has postponed its planned Annual Meeting in Dubai, but the organisation should think carefully about whether it wants to go there at all
The firm has named its new managing director after its former Asia head resigned earlier this year
As law firms explore how best to support clients at the UPC, members of the UPCLA network believe they have found the best of both worlds
The Industry Patent Quality Charter hosted a conference in which it discussed the importance of granting high-quality patents
Julia Holden explains why, if she weren’t in IP, she would be directing and producing live English-language theatre
Gift this article