Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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

Online storytelling platform Humans of Bombay isn’t wrong for trying to protect its copyright, but it could have handled its dispute better
We have started accepting submissions from in-house counsel and teams for the 19th annual Managing IP Awards programme
Patient groups and generics makers may have to bear the brunt of India’s latest attempt at patent reform
Each week Managing IP speaks to a different IP lawyer about their life and career
Paolo Tavolato, who will share the role, said private equity support would help the IP consultancy achieve its ambitious M&A plans
Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP