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Diversifying your market or supply chain: Patent Protection in Mexico

by | May 30, 2025 | Welcome to All About Inventing! | 0 comments

Diversifying your market or supply chain: Patent Protection in Mexico

INTRODUCTION TO MEXICAN PATENT LAW AND PRACTICE

PATENTABLE SUBJECT MATTER

 

Property Protection

Where is our green light?

Invention maybe consider from composition, compounds, mechanisms, instruments, it should consider as invention every human creation to transform the matter.

  • Under Mexican law must be a human creation implies that human intervention is necessary.
  • It must allow the transform matter of energy: PHYSICAL NATURE/PHYSICAL EFFECT
  • Human needs satisfaction, human has to be satisfied, has to solve a problem.

Which is industrial applicable? Can be produced or used in any type of industry.

Novelty: subject is not included in the state of the art.

**Not necessary to submit demonstration of Prior Art. Lack of Novelty: disclosure of invention will affect novelty. (KEEP IN MIND)

VENUES FOR INVENTORS FOR SUBMIT APPLICATIONS IN MEXICO.

THE LAW ESTABLISHES 2 GROUPS ON INVENTIONS.

RED LIGHTS

A MATTER THAT IS ALREADY PROTECTED and a serious damage, the usage of humans methods, any consideration of novelty may affect patent. Rejections are not Definitive grants of rejections, you can apply again. Is not a definitive issue.

Another interesting topic: RELATED TO INVENTION INCLUDES EXCLUSIONS WITH A DEBATED, SECOND MEDICAL USES, NEW DOSAGE FORMS, IMPACT ON HEALTHCARE INDUSTRY

New features incorporated: PATENTS THAT USES EXPLOTATION WITH RISK OF THE ENVIROMENT, HUMANS OR ANIMALS ARE PROHIBITED.

 

PATENT SYSTEM IN MEXICO IS A FILE SYSTEM

Meaning that the first person to file a patent application for an invention has the right to obtain the patent, provided the invention meets all the necessary requirements for patentability. In this system, the filing date is crucial in determining priority for patent rights, rather than the date of invention.

Key Features of Mexico’s Patent System:
  1. First-to-File System:
    • The patent system in Mexico is not based on who invented the invention first, but who files the application first.
    • This system encourages quick filing to secure patent rights and prevent others from claiming the same invention.
  2. Patent Requirements:
    • To obtain a patent in Mexico, the invention must meet the basic patentability criteria:
      • Novelty: The invention must be new and not have been publicly disclosed anywhere in the world prior to the filing date.
      • Inventive Step (Non-Obviousness): The invention must involve an inventive step, meaning it cannot be obvious to someone skilled in the relevant field based on prior art.
      • Industrial Applicability: The invention must be capable of being used in some kind of industry or commerce.
  3. Patent Filing Process:
    • Application: The applicant must submit a patent application to the Mexican Institute of Industrial Property (IMPI), which is the governmental body responsible for patents and trademarks in Mexico.
    • Examination: The IMPI will perform an examination to check for compliance with the patentability requirements. In many cases, a formal examination is conducted, but the applicant may also request a substantive examination.
    • Publication: After filing, the patent application is published to allow third parties to review it. However, the patent is not granted immediately; instead, the examiner will assess the application.
  4. Priority:
    • Mexico is a member of international treaties such as the Paris Convention and the Patent Cooperation Treaty (PCT). This allows applicants to claim priority from an earlier filed application in another member country (such as the U.S., Europe, or Japan), within a 12-month period from the filing date.
  5. Grace Period:
    • Mexico provides a 12-month grace period for an inventor to file a patent application after disclosing the invention, without losing novelty. This is useful if the invention has been disclosed publicly, but the inventor needs time to file a patent application.
PATENTS: MAINTENANCE & LICENSING

Patents: Maintenance & Licensing in Mexico

In Mexico, the patent system is governed by the Mexican Institute of Industrial Property (IMPI), which oversees the filing, maintenance, and licensing of patents. Understanding how to maintain a patent and how to effectively license it can significantly impact the value and longevity of a patent in Mexico.

1. Patent Maintenance in Mexico:

Patent maintenance refers to the obligation of patent holders to pay annual fees to keep their patents in force. If these fees are not paid, the patent will lapse and the exclusive rights granted by the patent will be lost.

Maintenance Fees:
  • Annual Fees: In Mexico, maintenance fees must be paid annually after the patent is granted. These fees ensure that the patent remains active and enforceable.
  • Due Date: The first maintenance fee is due one year from the granting date of the patent, and subsequent fees are due each year on the anniversary of the patent grant.
  • Payment: Failure to pay the maintenance fees on time can lead to the expiration of the patent, but there is typically a 6-month grace period to pay the fee with a penalty. If the payment is not made within this period, the patent may be considered abandoned.
Grace Period and Penalties:
  • If the maintenance fee is not paid on time, the patent holder can still pay within a grace period (typically 6 months) but will incur a late fee.
  • After the grace period, the patent may expire and no longer be enforceable.
Patent Duration in Mexico:
  • The maximum term for a patent in Mexico is 20 years from the filing date, provided that all maintenance fees are paid. Once the term expires, the invention falls into the public domain, and anyone can use the technology.

2. Patent Licensing in Mexico:

Patent licensing in Mexico allows a patent holder (licensor) to grant permission to another party (licensee) to use, make, sell, or distribute the patented invention under agreed-upon terms. Licensing is an effective way to monetize a patent without having to manufacture or market the product directly.

Types of Patent Licenses in Mexico:

  1. Exclusive License:
    • The licensee is granted exclusive rights to the patented invention within a defined geographic area or field of use.
    • The licensor cannot use the patent themselves or grant licenses to others in the same territory or market.
    • Exclusive licenses are often more lucrative for the licensee and may involve higher upfront payments or royalties.
  2. Non-Exclusive License:
    • The licensee receives the right to use the patent, but the licensor can grant similar rights to other parties.
    • The licensor retains the right to exploit the patent and grant additional non-exclusive licenses.
    • Non-exclusive licenses generally involve lower royalties than exclusive licenses.
  3. Sublicensing:
    • A sublicense allows the licensee to further grant rights to third parties.
    • Sublicensing arrangements are often included in exclusive licenses but may require the licensor’s approval.

Key Elements of a Licensing Agreement in Mexico:

A licensing agreement is a legal contract that specifies the terms under which the patent holder grants the rights to another party. Typical components of a licensing agreement include:

  1. Scope of the License:
    • Defines whether the license is exclusive or non-exclusive and outlines the specific rights being granted, including geographical area, field of use, and duration.
  2. Royalty Payments:
    • Licensors often receive royalties based on the sales or use of the patented invention. These can be a fixed amount, a percentage of sales, or a combination.
    • Payment terms, frequency, and any upfront fees (e.g., lump-sum payments or milestone payments) should be clearly stated in the agreement.
  3. Duration and Termination:
    • The licensing agreement will specify the duration of the agreement and conditions for renewal or termination.
    • Termination clauses might include breach of agreement, non-payment, or expiration of the patent.
  4. Improvements:
    • Some agreements include clauses that address who owns any improvements or modifications made to the patented technology during the license period.
  5. Performance Obligations:
    • The agreement might require the licensee to meet certain performance goals (e.g., minimum sales or market penetration) to maintain the license.
  6. Enforcement and Protection:
    • The agreement may specify who is responsible for enforcing the patent rights, such as pursuing infringement actions, and the costs associated with enforcement.
    • Indemnification provisions may also be included to protect the licensor from legal liability related to the use of the patented technology.

Licensing Patent Rights in Mexico:

  • Registration of License: In Mexico, it is not required to register a licensing agreement with the IMPI to make it valid, but registration is recommended for the licensee’s protection. Registered licenses will be publicly available, and it makes it easier for the licensee to assert their rights if necessary.
  • Cross-Border Licensing: Mexican patent holders often enter into cross-border licensing agreements with foreign companies to expand their market reach, especially in industries like pharmaceuticals, electronics, and technology.
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