Until four years ago, it was unquestionably accepted that the validity of patents in Mexico was twenty years from the filing date, regardless of the time spent in processing the application. This general rule reduced the effective term of a patent well below the limit established by the law itself, since it was not possible to compensate for the time lost. This twenty-year limit was based on Articles 23 of the former Industrial Property Law ("LPI" for its Spanish abbreviation) and Article 53 of the current Federal Law for the Protection of Industrial Property ("LFPPI" for its Spanish abbreviation), which read as follows: "A patent shall be valid for twenty non-extendable years, counted from the verified filing date of the application..." Such legal provisions may fall into the realm of fiction, for they distort the effective life of a patent considering that title to a patent becomes enforceable against third parties only as of the date it is granted and not on the date the application is filed. Something similar happens, for example, when a transfer of ownership of real or personal property is offered, the offer will not entitle the potential buyer to dispose of the property until the transfer of its right in rem is legally and formally completed. However, someone could argue that a patent applicant could file an administrative infringement action retroactively against an alleged infringer once the patent rights are granted (Article 56 of LFPPI); but this possibility is just another fiction of the law, as the patent holder could only sue the alleged infringer until the patent is granted, and trying to enforce it retroactively would create a vulnerable application of the law, in terms of Article 14 of the Mexico’s Federal Constitution.
From the court opinion approved at the October 14, 2020 session by the Second Chamber of the Mexico's Supreme Court, on a motion for review of the amparo action 257/2020 filed by Bayer Healthcare LLC.1, a new paradigm emerged from page 77 of the case record of what could be the origin of a new principle in patent matters, when the court held: "... Compensating for a delay is not the same as extending a term because the compensation purpose is not to extend the term, but to give effect to the protection period. In this case, what is important is to consider the delays caused by the administrative process of approving the patent. For that reason, the protection of a valid patent may not be less than seventeen years by compensating for such delays." In other words, the country's highest court recognized that patents must have an actual and effective term and not a term mutilated by administrative delays that will impact their effectiveness, concluding that under Article 1709 (12) of the North American Free Trade Agreement ("NAFTA"), patents cannot be valid for less than seventeen-effective years from the granting date, as opposed to twenty years from the filing date.
The foregoing is relevant in a patent system such as ours (twenty years from the filing date), since the time compensated by the Supreme Court in the case above mentioned was in regard to the effectiveness of the patent granted, and not in regard to the time the application was filed. In other words, compensation is applied when the right is granted, as prior to that time, there is nothing to compensate. Consequently, it is pertinent to ask: why do you want to consider the time of filing the application as an integral part of the effective date of the patent? This fiction of the current Article 53 of LFPPI is a sinister approach to the detriment of the holder’s patent right in rem. Indeed, the twenty-year term during which the patent rights are effective counted from the filing date does not allow the holder to oppose them erga omnes during the time said rights are only rights in expectancy. A patent, as rights in rem and as rights in opposition to third parties, are generated only when vested, and not before. Again, the actual effectiveness of a patent is determined by its grant and not by its filing, as was confusingly provided by the legislators in Article 23 of the former LPI (now Article 53 of the LFPPI). Thus, what would be the point in establishing a statutory twenty-year effectiveness if processing the application takes four, five or more years? There are no longer twenty years. The delay in granting a patent frustrates its effectiveness. Hence, the Supreme Court addressed the effective period for protecting an invention.
The Bayer case above mentioned provided the basis for a new interpretation of expired patents. In a recent case concerning the active ingredient modified chimeric polypeptides with improved pharmacokinetic properties, we represented Regeneron Pharmaceutical, Inc., which also obtained a favorable court opinion2, stating that it is feasible to compensate for the time lost in the prosecution of a patent despite the fact that it had already expired, provided that it was within seventeen years from the granting date and was processed under the former LPI and NAFTA. Apparently, the patent had expired on May 23, 2020, at the end of the fictional twenty years’ effective term and had a two-year-ten-month delay for processing the application, which caused both the district judge and the collegiate court to hold that, despite the fact that the patent was apparently expired, it was within seventeen years from the granting date. Therefore, the alleged expiration was cured by nullifying its earlier publication in the Industrial Property Gazette and by a new publication showing its new effective term that included the time lost, so as to remain in effect until March 22, 2023. In other words, a seemingly expired patent is not an irreparable fact, but on the contrary, it is curable if falls within the seventeen-year term computed from the date the patent was granted.
This court decision confirms what should be the real and effective term of a patent, thereby opening the possibility of requesting adjustments to the validity of an apparently expired patent that falls within the seventeen-year range set by the Mexico’s Supreme Court in the Bayer case, also represented by our firm.
1 PATENTS. Whenever there are delays attributable to the administrative government authority for the granting of a patent,
its validity may not be less than seventeen years counted from the granting date ( Systematic interpretation of Article 23 of
the former Industrial Property Law). Motion for review of the amparo action 257/2020. Bayer Healthcare, LLC. October 14, 2020. Digital record: 2022603. Court: Second Chamber. Precedent: 2 nd . LV/2020 (10 TH ). Tenth Era. Source: Gazette of the
Weekly Federal Court Report. Book 82. January 2021. Tome I, page 662. Subject matter: Administrative Law. Type: Non
binding precedent.
2 Eleventh Collegiate Court of the First Circuit in Administrative Law Matters re: Motion for Review No. 386/2021, December
2, 2022 in session.
