Until recently, patent term extensions of any kind were not available under any circumstances in Mexican Law, but this will be different with the entry into force of the new law on the matter.
Traditionally, the term of a Mexican patent has been of 20 years counted from the filing date in Mexico; or 20 years counted from the international application filing date in the case of PCT applications. According to Article 1709 of the former North America Free Trade Association (NAFTA), the term of a patent could be extended to compensate for delays caused by regulatory approval processes. However, this optional provision was never implemented in Mexico.
Currently, the free trade agreement formerly known as the Trans-Pacific Partnership (TPP), which has been renamed the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) and the United States–Mexico–Canada Agreement, known as USMCA, also contemplate patent term adjustments due to unreasonable delays in patent prosecution and unreasonable curtailment of patent protection due to the regulatory processes.
In this sense, in order to harmonize and adapt the Mexican legal intellectual property framework to the obligations undertaken by Mexico under these two international treaties, a new “Federal Law for the Protection of Industrial Property” (FLPIP) was enacted on July 1, 2020, which entered into force on November 5, 2020 (90 days business days after the date of its publication on the Federal Official Gazette).
One of several changes is related to patent term adjustments, relating to the compensation for delays of the Mexican Patent Office (IMPI) in patent prosecution. A whole new chapter describing the “supplementary certificate” (Articles 126 - 136) is included, which establishes the administrative procedure and the conditions for its grant.
If patent prosecution lasts more than 5 years from the filing date in Mexico to the granting date of the patent, along with the payment of the granting fees (and only then) it would be possible to request for the supplementary certificate, which is not going to be longer than 5 years and will provide 1 supplementary protection day per 2 days of unreasonable delay. The request will be evaluated by the IMPI and the supplementary certificate will be issued if the delay is indeed deemed as “unreasonable” and directly attributable to IMPI.
The FLPIP clarifies that the time that elapses between the filing date and the compliance with formal examination, any delays caused by the applicant, administrative or judicial delays out of the control of IMPI, and force majeure delays will be considered as “reasonable delays”.
If IMPI decides to grant a supplementary certificate, it will notify the applicant and it will provide a 1-month period to pay the issuance of the supplementary certificate and the respective term adjustment. The supplementary certificate shall only take effect on the following day after the expiry date of the 20 years of validity of the patent.
Finally, it is interesting that under USMCA there must be available also a patent term adjustment for unreasonable curtailment due to the regulatory process (Art. 20.46 of USMCA). However, this obligation has a transitional period of 4.5 years that the Mexican government will very likely take in full, and therefore this is not expected to be available until January 1, 2025.