Could an expired patent still be in force?

Mexico City, January 9th, 2023.

Recently, in a new case regarding compensation/adjustment for the validity of a patent (active pharmaceutical ingredient) represented by our firm, a Federal Court for Administrative Matters of the First Circuit confirmed the resolution of a Federal District Court, indicating that it is feasible to compensate the time lost in the processing of a patent, despite the fact that it expires, as long as it is within seventeen years from the granting of the patent, and it has been processed in accordance with the previous Industrial Property Law and the Free Trade Agreement of North America (“NAFTA”).

This new relevant case opens the possibility of requesting compensation for expired patents before the Mexican Institute of Industrial Property (“IMPI”) within the range of seventeen years established by the criteria of the Supreme Court of Justice in the Bayer Healthcare LLC. case issued on October 14, 2020 in Amparo Revisión No. 257/2020, which was also handled by our firm.

Contacts:

Martín Michaus

Mmichaus@basham.com.mx

 

Eduardo Kleinberg

kleinberg@basham.com.mx

 

Adolfo Athié

aathie@basham.com.mx

 

Claudio Ulloa

culloa@basham.com.mx

 

Juan Carlos Hernández

jhernandez@basham.com.mx

 

Eduardo Castañeda

ecastaneda@basham.com.mx

 

Mariana Vargas

mavargas@basham.com.mx