{"id":26685,"date":"2025-09-30T16:44:58","date_gmt":"2025-09-30T16:44:58","guid":{"rendered":"https:\/\/basham.com.mx\/?p=26685"},"modified":"2025-09-30T17:13:33","modified_gmt":"2025-09-30T17:13:33","slug":"the-court-upholds-the-bayer-case-key-to-patent-validity-in-mexico","status":"publish","type":"post","link":"https:\/\/basham.com.mx\/en\/the-court-upholds-the-bayer-case-key-to-patent-validity-in-mexico\/","title":{"rendered":"The Court Upholds the Bayer Case: Key to Patent Validity in Mexico"},"content":{"rendered":"

September 30, 2025<\/p>\n\n\n\n

\"\"<\/figure>\n\n\n\n

The Supreme Court of Justice of the Nation (SCJN) announced on its website that, during a session held on August 6, 2025, the Second Chamber confirmed and consolidated a key precedent in patent law: the recognition of compensation for the validity period of patents processed under the North American Free Trade Agreement (\u201cNAFTA\u201d) and the repealed Industrial Property Law, in cases of administrative delay.<\/p>\n\n\n\n

This recent precedent originates from the case of Bayer Healthcare LLC<\/em> (Amparo en Revisi\u00f3n 257\/2020<\/em>, decided by the Second Chamber of the SCJN on October 14, 2020), and was reaffirmed in the resolution of Revisi\u00f3n Administrativa 1\/2025<\/em>, filed by the Mexican Institute of Industrial Property (known by its Spanish initials as \u201cIMPI\u201d). In that case, the pharmaceutical company Janssen invoked the Bayer<\/em> precedent to seek compensation for the term of its patent\u2014related to an HIV drug\u2014due to administrative delays.<\/p>\n\n\n\n

Although our firm did not represent Janssen in this matter, the case was fundamentally based on the Bayer<\/em> decision, which we did handle successfully securing the enforcement of the 17-year validity period from the date of grant.<\/p>\n\n\n\n

Bayer Case (Amparo en Revisi\u00f3n 257\/2020 \u2013 Second Chamber, SCJN)<\/strong><\/p>\n\n\n\n

In its ruling dated October 14, 2020, the Second Chamber of the SCJN held that, under the then-applicable NAFTA framework, patent holders are entitled to a minimum term of 17 years from the date of grant when the patent approval process is delayed beyond three years\u2014the internationally recognized standard. A key aspect of the decision was the determination that such delays must be calculated from the filing date of the international application (PCT), rather than from the commencement of the national phase.<\/p>\n\n\n\n

New Precedent \u2013 Revisi\u00f3n Administrativa<\/em> 1\/2025 (August 6, 2025 \u2013 Second Chamber)<\/strong><\/p>\n\n\n\n

In the Revisi\u00f3n Administrativa<\/em> 1\/2025, the Second Chamber reaffirmed the precedent established in the Bayer case regarding administrative delays in patent processing. The Court reiterated that delays must be measured from the international filing date, not the national phase. It further held that the Mexican Institute of Industrial Property (IMPI) cannot deny compensation when delays occur during the examination process, and that the standard of at least 17 years of effective protection from the date of grant must be upheld for applications filed under NAFTA prior to July 1, 2020.<\/p>\n\n\n\n

Principle of Real and Effective Validity of Patents<\/strong><\/p>\n\n\n\n

Both the Bayer precedent and Revisi\u00f3n Administrativa<\/em> 1\/2025, promoted by IMPI in the Janssen case, consolidate a systematic interpretation of Article 1709(12) of NAFTA, Article 23 of the Industrial Property Law, and the Maximum Term Agreements issued by IMPI: a patent\u2019s duration should not be diminished due to administrative inefficiency, but should instead enjoy actual and effective validity.<\/p>\n\n\n\n

This standard aims to strike a balance between protecting innovation and avoiding the improper extension of patent terms. It is important to distinguish between compensating and giving effect to the full term of a patent and unlawfully extending or prolonging its duration.<\/p>\n\n\n\n

In this context, national patent legislation should incorporate the principle of real and effective patent validity, which\u2014legally speaking\u2014should apply from the patent application process through to regulatory authorization. Promoting this principle should be a shared objective of patent holders, academia, and Congress, as it would help eliminate non-tariff barriers to patents and foster greater legal certainty, investment, and technological development in Mexico.<\/p>\n\n\n\n

Practical Implications for Patent Holders<\/strong><\/p>\n\n\n\n

Since the ruling in the Bayer case issued by the Second Chamber of the Supreme Court of Justice on October 14, 2020, several key effects have emerged\u2014now reaffirmed in Administrative Review 1\/2025, promoted by IMPI\u2014including:<\/p>\n\n\n\n

    \n
  1. Patent applications filed under NAFTA (before July 1, 2020):
    These are eligible for a minimum term of 17 years from the date of grant.<\/li>\n<\/ol>\n\n\n\n
      \n
    1. Administrative delays:
      IMPI must account for delays based on the international filing date and the grant date, as the administrative process begins with the international filing. This aligns with the 20-year validity system calculated from the filing date.<\/li>\n<\/ol>\n\n\n\n
        \n
      1. Recognition of the principle of real and effective validity:
        The Court ratified the novel principle that patents must enjoy actual and effective protection, not diminished by administrative inefficiencies.<\/li>\n<\/ol>\n\n\n\n
          \n
        1. Subsequent patent applications filed from November 5, 2020 (under the Federal Law on Protection of Industrial Property and the USMCA):
          These are subject to more restrictive rules, including the application of complementary certificates.<\/li>\n<\/ol>\n\n\n\n

          <\/p>\n\n\n\n

          If you need further information, please let us know.<\/p>\n\n\n\n

          SINCERELY,<\/strong><\/p>\n\n\n\n

          Adolfo Athi\u00e9 Cervantes<\/p>\n\n\n\n

          aathie@basham.com.mx<\/a><\/p>\n\n\n\n

          Claudio Ulloa<\/p>\n\n\n\n

          culloa@basham.com.mx<\/a><\/p>\n\n\n\n

          Mariana Gonz\u00e1lez<\/p>\n\n\n\n

          mgonzalezv@basham.com.mx<\/a><\/p>\n\n\n\n

          Diana Rangel<\/p>\n\n\n\n

          drangel@basham.com.mx<\/a><\/p>\n\n\n\n

          Guillermo Gonzalez<\/p>\n\n\n\n

          ggonzalez@basham.com.mx<\/a><\/p>\n\n\n\n

          Erika Rodr\u00edguez Kushelevich<\/p>\n\n\n\n

          erodriguez@basham.com.mx<\/a><\/p>","protected":false},"excerpt":{"rendered":"

          September 30, 2025 The Supreme Court of Justice of the Nation (SCJN) announced on its website that, during a session held on August 6, 2025, the Second Chamber confirmed and consolidated a key precedent in patent law: the recognition of compensation for the validity period of patents processed under the North American Free Trade Agreement […]<\/p>","protected":false},"author":19,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_crdt_document":"","footnotes":""},"categories":[1],"tags":[],"class_list":["post-26685","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"_links":{"self":[{"href":"https:\/\/basham.com.mx\/en\/wp-json\/wp\/v2\/posts\/26685","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/basham.com.mx\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/basham.com.mx\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/basham.com.mx\/en\/wp-json\/wp\/v2\/users\/19"}],"replies":[{"embeddable":true,"href":"https:\/\/basham.com.mx\/en\/wp-json\/wp\/v2\/comments?post=26685"}],"version-history":[{"count":3,"href":"https:\/\/basham.com.mx\/en\/wp-json\/wp\/v2\/posts\/26685\/revisions"}],"predecessor-version":[{"id":26690,"href":"https:\/\/basham.com.mx\/en\/wp-json\/wp\/v2\/posts\/26685\/revisions\/26690"}],"wp:attachment":[{"href":"https:\/\/basham.com.mx\/en\/wp-json\/wp\/v2\/media?parent=26685"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/basham.com.mx\/en\/wp-json\/wp\/v2\/categories?post=26685"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/basham.com.mx\/en\/wp-json\/wp\/v2\/tags?post=26685"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}