When you can test unexpired patents

July 9, 2010

BY JOSÉ I. DE SANTIAGO

MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, APRIL 2002

The Mexican Law of Industrial Property establishes certain exclusions for the enforcement of patents. Among these exclusions, article 22 part I establishes that a patent would not produce any effect against a third party, which in a private or academic environment, with non-commercial purposes, uses a patent to manufacture a product exclusively for experimental scientific investigation.

It is a common practice in many countries that pharmaceutical oriented corporations have to deal with certain requisites with the health authorities before launching a product, including certain experiments and tests.

In many cases, when a patent on a chemical product is about to expire, many companies are interested in gaining some time, by means of conducting all the tests and requesting the proper authorizations to launch a product in the market as soon as the patent expires. However, the use of the patent or a patented process to manufacture any product, even for experimental purposes, if it pursues a commercial end, would not fall under the scope of this exclusion and therefore the owner of the patent can still claim a patent infringement.

It is important to bear in mind that the patent is presumed to be valid until it expires, thus any infringement committed during the life of the patent would sill be enforceable even after its expiration, consequently, giving grounds to the corresponding sanctions.

Although it would be quite unlikely to have a patentee filing an infringement claim with the Patent and Trademark Office, when the patent is about to expire or has already expired, laboratories should be aware that they would be running a risk by initiating tests before such expiration.