MEXICO Law and Practice Contributed by: Eduardo Kleinberg, Adolfo Athié, Claudio Ulloa and Juan Carlos Hernández, Basham, Ringe y Correa S.C.
Recently, an amendment to the FLPIP established that substantive examination must be completed within one year from the publication of the patent application, with the possibility of issuing up to two Office Actions. Previously, up to four office actions were allowed, and the examination process could take between two and four years. With respect to the costs, official fees are payable for the filing of the application, the filing of any responses to Office Actions and the issuance of the patent title and the annuities. 1.3 Scope, Term and Maintenance of Patent Rights The rights conferred to the owner are essentially (but not limited to) the following: to prevent third parties from manufacturing, selling, using, offering for sale, or importing the invention without consent. Additionally, the title holder may transfer ownership to third parties, grant licences, and otherwise dispose of the rights. The standard term of protection is 20 years from the filing date of the application, subject to the payment of annuities, which are payable in five-year periods (ie, in quinquennial instalments). If, for any reason, the title holder fails to pay the required annuities, the pat- ent will lapse, with limited possibilities of restoration through litigation or administrative remedies. Since 2020, the FLPIP (formerly the Mexican Industrial Property Law) has expressly provided for the possibili- ty of patent term compensation. This reform was intro- duced primarily to align the Mexican legal framework with Mexico’s obligations under the United States– Mexico–Canada Agreement (USMCA). In parallel, pat- ent term compensation has also been recognised and granted in certain cases based on judicial precedent of the Supreme Court of Justice of Mexico interpreting Mexico’s obligations under the North American Free Trade Agreement (NAFTA), which continues to serve as a relevant interpretative reference for the applica- tion of such compensation mechanisms. Under the current legal framework, compensation may be granted when unjustified delays attributable to the IMPI directly affect the patent holder’s rights. Such compensation may extend the patent term for a
maximum of five years. In these cases, the IMPI, upon a petition filed by the patent holder, may determine the applicable compensation. The extension is calculated at a rate of one additional day of patent term for every two days of unjustified delay, subject to the statutory cap of five years and without the possibility of further extension. Additionally, since 2026, the FLPIP incorporates a pat- ent term adjustment mechanism linked to marketing authorisations issued by the health authority (COFE- PRIS). In such cases, COFEPRIS evaluates and grants the adjustment and subsequently instructs IMPI to extend the corresponding patent term. This extension is also capped at a maximum of five years. The spe- cific procedural framework is set out in the applicable health regulations. 1.4 Ownership, Assignment and Licensing Any person who makes an invention is entitled to apply for and, if granted, hold a patent. This right may be transferred to third parties through an assignment of rights. Notwithstanding such transfer, the inven- tor must always be recognised as such in the patent application and in the granted patent. Employee inventions are governed by the Federal Labor Law. As a general rule, when an invention is made by an employee in the course of employment, the employer is entitled to the rights over the inven- tion when it falls within the scope of the employee’s duties or is developed using the employer’s resources or information. However, the employee is entitled to be recognised as the inventor in all corresponding fil- ings and patents. In addition, the employee has the right to receive additional remuneration or a special compensation for the invention, which is independent from salary and arises from the inventive contribution, particularly where the invention generates economic benefit for the employer. With respect to inventions made at universities or other educational or research institutions, there is no special statutory regime distinct from the general pat- ent rules. Accordingly, ownership is generally deter- mined in accordance with the applicable employment or contractual arrangements between the institution and the inventor. In practice, universities typically reg-
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