Partner. Director of IP Value Extraction. Hector E. Chagoya is Chemical Engineer, graduated from La Salle University. He joined Becerril, Coca & Becerril in 1997 and became partner of the firm in 2010. He is in charge of the technology transfer activities of the firm and he provides advisory in patent strategies, patent litigation and licensing. Hector has been included since 2005 in the biannual “Guide to the World’s Leading Patent Law Practitioners” (Euromoney, PLC). He is co-author of the chapter for Mexico in “Licensing Best Practices: Strategic, Territorial, and Technology Issues” (Wiley, 2006). He also yearly revises the Chapter for Mexico in “Trade Secrets throughout the World” (Thomson) since 2006. Former President (2008-2009) of the Mexican Chapter of the IMIQ, Qualified Expert in Economic Engineering for the CONIQQ. He is International Vice-president of the Licensing Executives Society International and a member of the Technical Committee and of the Technology Transfer Commission of the ADIAT from 2008 to date. He is also the first in México to achieve the Certified Licensing Professionals, Inc. (CLPTM ) certification.
The COVID-19 pandemic has evidenced the need for an efficient and safe system for the electronic prosecution of patent applications and has forced the Mexican Institute of Industrial Property to make such a system available for applications originally filed in paper format. However, as this article shows, the path to this outcome has not been straightforward.
The Industrial Property Law is currently under revision in the Senate. Two legal initiatives proposed by different senators will have to be studied, but one of them is more likely to prevail because it has the support of the Mexican Institute of Industrial Property and aims to substitute the current law in its entirety. One of the proposal's most significant objectives relates to updating the eligibility criteria of biotechnology-related inventions.
The Mexican Institute of Industrial Property's examination criteria was previously consistent enough to provide patent applicants with legal certainty about the eligibility of plant-related inventions. However, recent changes to the criteria for these kinds of invention have resulted in uncertainty which may affect even the validity of already granted patents.
The National Development Plan 2019-2024 (NDP) was recently published, just a few days before the release of the Global Innovation Index. Unlike the previous version, the new NDP does not expressly mention patents or intellectual property. This is not a good sign for a knowledge-based economy ranked first in the world for creative goods exports.
Mexico recently became the first country to ratify the United States-Mexico-Canada Agreement (USMCA), Chapter 20 of which is one of the most comprehensive IP chapters in any trade agreement. Although the 2018 amendments to Mexico's IP laws provided for most of the specific rights required under the USMCA, the country still has a lot to do to provide for the obligations regarding geographical indications, data exclusivity, trade secrets and enforcement.
The 2018 changes to the Mexican patent system are not looking promising for patent prosecution. By way of the amendments, the Mexican Institute of Industrial Property has implemented a new system whereby it will issue official communications to applicants through its Official Gazette instead of personally or by certified mail. Applicants should exercise extreme caution in order to avoid a loss of rights due to a failure to monitor and identify issued office actions.
The need to control costs in jurisdictions where government fees increase substantially based on the number of claims often forces patent practitioners to use various claim drafting strategies, including multiple dependent claims. However, multiple dependent claims must be drafted carefully, as there is a risk that they could be considered unclear or contain features which are inconsistent with those of the claims on which they are based.
Much like with the North American Free Trade Agreement, the recently negotiated United States-Mexico-Canada Agreement is set to introduce significant changes to Mexico's IP system. Several legal and administrative changes have already reshaped the patent prosecution landscape, particularly with regard to inventions. Even more changes are expected as the new trade agreement is implemented over the next five years.
The IP chapter of the recently negotiated US-Mexico-Canada Agreement is one of the most comprehensive of all of the treaties negotiated by the parties to date. However, despite all of the criticism and buzz surrounding the chapter, will Mexico actually have to make that many changes to its existing patent system? In practice, the negotiated text appears to be more of a compromise not to change than a commitment to change.
The Internet of Things, big data analytics and artificial intelligence are IT mega-trends that are not only evolving rapidly, but also infiltrating practically every industry. While these technologies naturally raise data privacy concerns, they also pose challenges in relation to intellectual property and the ways in which IP-based relationships are established.
In the past 20 years, the Mexican Institute of Industrial Property (IMPI) has made it easier for IP owners to use online services. In March 2016 the biggest steps towards a serious change were taken – namely, the issuance of rules for electronic filing and the launch of the online patent and notification systems. However, there is still some way to go before the IMPI is completely paperless.
While innovation in life sciences is key, the efforts required to bring new drugs, devices and other healthcare technologies to market are increasingly burdensome. Accordingly, intellectual property plays a crucial role in protecting investments and incentivising healthcare innovation, although patent regimes often encounter difficulties with regard to patentable subject matter and the evaluation of inventiveness for new technologies.
In the chemical, biotechnology and IT industries, control over key information is the differentiator between competitors. However, this control is becoming more challenging to maintain in light of current trends (eg, cloud computing and open innovation), which mean that information constituting a trade secret may be developed by different parties in different countries under what is perhaps the least standardised right in IP law.
For many years, IP management of government-funded projects in Mexico was non-existent. Mexican law was silent regarding both the ownership of such projects and the agreements governing how grant money was spent. Nevertheless, recent changes in innovation policy have mandated changes in the management of such projects in order to prepare for future innovation opportunities.
The increase in open innovation and the importance of collaboration in the business and scientific spheres have led to a growing need to deal with co-ownership. Some legal systems have clear co-ownership rules that are specific to IP rights. However, in Mexico, intellectual property is dealt with under the general rules applicable to all types of property, meaning that at times the provisions are not as clear as they could be.
In Mexico, a third party may challenge a patent through either an ex parte proceeding that applies to pending patent applications, or an inter partes proceeding that applies to issued patents. The administrative regime for challenging patent validity is largely similar to other major administrative opposition regimes. However, the Mexican system offers no direct judicial proceeding for challenging patents.
The Federal Commission for the Protection against Sanitary Risk has published guidelines stating that the confidential information received with a health approval application is subject to protection against unfair commercial use and public disclosure according to the North American Free Trade Agreement and the Agreement on Trade-Related Aspects of IP Rights. However, the guidelines generate new uncertainties.
The scarcity of patent litigation in Mexico as compared to other jurisdictions has resulted in a lack of case law in several key areas of patent litigation. One such area is the situation where a product does not have all of the features of the claims of a granted patent, but is so close that it appears that a feature has been changed to circumvent patent coverage through the incorporation of an equivalent feature.
Changes to Mexico's patent system will have significant implications for the pharmaceutical industry. Patent holders must now deal with an opposition system that will prevent unfair practices and eliminate delays in the patent prosecution process. Third parties without patent protection can oppose an application before it is granted and can initiate infringement actions if a patent holder abuses its rights.
Recent changes to the Health Supplies Regulations have dramatically affected the approval process for medicaments. They address the problem of inadequate definitions in the regulatory framework, reducing the confusion caused by interchangeable generics that had led to the development of a grey market. The changes will make it easier to enforce the IP data protection provisions of key international treaties.