Patent Corrections and Patent Term Adjusting

November 3, 2020

As of November 5, 2020, a new Federal Law for the Protection of Industrial Property (IPPL) will supersede the current Industrial Property Law (IPL). The IPPL provides new rules regarding patent correction and a new legal figure which will allow patent owners to request a correction of their patent term due to delays of the Patent Office during its prosecution.

These new provisions will only apply to patents that are prosecuted and granted after November 5, 2020. Therefore, it is important to have in mind both laws when analyzing which regulations apply.

According to Article 61 of the IPL, the text or drawings of a granted patent may only be amended by the patent owner in the following circumstances:

• to correct any obvious or form errors; and
• to limit the scope of the claims.

The authorized amendments shall be published in the Official Gazette.

Patent rights holders, under the current IP Law, can request an amendment after allowance in writing to the Mexican Patent Office, briefly explaining the reasons underlying the errors that are being corrected or the limitations being introduced to the claims.

The new IPPL will provide the same possibility, including a more detailed process. However, when an invalidity action has already been filed, any amendment petition will be dismissed. This is an important addition to the IPPL which must be carefully analyzed before filing any infringement action.

Also as of November 5, 2020, patent owners may request complementary term certificates from IMPI for patents applications that were granted after five years of prosecution, when the delay is imputable to IMPI. The request must be filed before paying the issuance fees. IMPI will grant one day for each two days’ delay imputable to them. Any automatic term extension provided by law and taken by the applicant will be subtracted from the five-year term.

As to extensions related to delays in the granting of marketing authorizations for pharmaceutical products provided in the USMCA, it is important to mention that it was not incorporated into the IPPL, since this rule will not enter into force in Mexico until 2024.