BC&B NEWSLETTER
NEW AND RECENT MEXICAN
SUPREME COURT OF JUSTICE CRITERION - PATENT TERM EXTENSION –
Recently the Mexican Supreme Court of Justice has issued a decision whereby said Court has
ordered the Mexican Institute of Industrial Property (MIIP) to extend the term of a patent to 17
years from the date of the grant.
The above, considering that the MIIP took more time than it needed to grant the patent and it
unduly affected the patent owner by limiting the term of said patent.
Note that, according to the Mexican IP Law the term of a patent is 20 years from the date
offiling, regardless of the time that the MIIP takes to grant the patent, which could have as
consequence that the term of a patent is less than 17 years after it is granted.
The above, since although some administrative decrees foresee some rules to regulate the
response times for the proceedings file before the MIIP, the Mexican IP Law does not foresee it,
which clearly constitutes a disadvantage for patent applicants.
Therefore, the Supreme Courtrightly decided to compensate the owner of the patent in question,
granting it an extension of the term, so that it would have a minimum of 17 years from when it
was granted.
Although the Court's decision is not binding for the MIIP, it is possible to request said Institute a
term extension of a patent, since, as you may know, the NAFTA establishes that the term of
protection for patents must be of at least 20 years from the date of filing or 17 years from the date
of grant.
In case, the MIIP denies a petition, note that our firm has developed a legal strategy to obtain
the extension of the patent.
Finally, note that there are no deadlines to request the extension of a patent, thus we will be
gladto assist you and give you more information in case you are interested in requesting said
extension.