By Marco Antonio García Euroza. Senior Patent Consultant.
During the fourth quarter of last year, the Mexican Supreme Court of Justice (SCJN), the highest court of the Mexican judiciary, decided on extending Mexican patent No. 238942 because of the administrative delays incurred during its prosecution.
Extension of patent: A patent may be extended to compensate for the delays
In summary, the plaintiff requested the extension of patent No. 238942 at the Mexican Institute of Industrial Property (IMPI) based on article 1709 of the North American Free Trade Agreement (NAFTA) which establishes that a patent may be extended to compensate for the delays caused during its approval process. Accordingly, it took the IMPI around 6 and a half years to grant the corresponding patent, from January 12, 2000, to July 26, 2006.
IMPI denied the request arguing that, according to article 23 of the Mexican Industrial Property Law (IPL), the applicable law at the moment of the granting, term of protection of a patent cannot extend beyond 20 years, starting from the filing date of the patent application. Furthermore, that the application of article 1709 of NAFTA was discretionary; thus, no damage was caused.
The term of protection may never be less than 17 years starting from the date of the grant.
The plaintiff appealed IMPI’s decision through the Mexican judiciary eventually reaching the SCJN. Herein, the SCJN decided that IMPI and previous courts of the Mexican judiciary performed a wrongful interpretation of the applicable law which affected the rights of the plaintiff. Further, the SCJN interpreted that the term of protection may never be less than 17 years starting from the date of the grant.
The recent decision will have important repercussions on the extension of Mexican patents; specifically, those granted before NAFTA was updated to the Agreement between the United States of America, the United Mexican States, and Canada (USMCA).
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