March 5, 2026
The Second Chamber of the Supreme Court of Justice of the Nation (La Segunda Sala de la Suprema Corte de Justicia de la Nación) established in Amparo en Revisión 257/2020 (October 14, 2020), in a case represented by our firm, that under the former Industrial Property Law and within the framework of the North American Free Trade Agreement, patent term compensation is appropriate when administrative delays attributable to the authority occur, guaranteeing at least seventeen effective years from the date of grant.
On August 6, 2025, this criterion was confirmed in a matter brought by Janssen, thereby consolidating the precedent under the prior legal regime.
1. Key Scope
This possibility applies exclusively to applications filed before July 1, 2020.
It does not derive from the Federal Law for the Protection of Industrial Property, whose regime is considerably more restrictive.
2. The Unresolved Strategic Question
When a parent patent obtains compensation, a question arises that has not yet been addressed by either the courts or the administrative authority:
Can that compensation be projected to divisional patents derived from the same original application?
Divisionals:
- Share the same filing and priority date.
- Derive from the same technical disclosure.
- Have their term calculated from the same temporal starting point.
- From a structural standpoint, form part of the same legal family.
To date:
- There is no specific judicial precedent addressing this hypothesis.
- There is no formal position from the authority.
- There is no doctrinal development in Mexico.
- It remains an open interpretative space.
3. Practical Relevance
For companies whose value depends on patent families filed before July 2020 — particularly in the pharmaceutical, biotechnology, chemical, or specialized technology sectors — this issue may directly impact:
- The actual exclusivity horizon.
- Intangible asset valuation models.
- Financial projections linked to key products.
- Licensing and negotiation strategies.
- Enforcement scenarios vis-à-vis competitors.
In practical terms, a consistent term compensation at the family level could significantly alter the commercial exploitation window of certain strategic assets.
4. Level of Maturity of the Issue
A prudent reading is essential:
- Compensation for parent patents under the prior regime is supported by Supreme Court precedent.
- Compensation for divisionals is a legally defensible construction, but unresolved.
- It is not an automatic right, but rather a hypothesis that would require analysis and potential judicial validation.
We are facing a “potential technical opportunity,” not a consolidated criterion in this specific dimension.
5. Strategic Recommendation
For companies with significant pre-2020 portfolios, it is advisable to:
- Identify patent families eligible for compensation under the Supreme Court’s criterion.
- Analyze the structure of associated divisionals.
- Assess the financial and regulatory impact of a potential consistent term compensation.
- Design a legal strategy aligned with the group’s commercial objectives.
Since the temporal window is closed for later-filed applications, this analysis is particularly relevant for legacy assets.
In Summary
The recent precedent opened a solid avenue for compensation of patents prosecuted under the prior regime. The potential extension of that compensation to their divisionals represents a novel issue with significant strategic implications for certain portfolios.
Its viability will depend on the specific analysis of each patent family and the careful design of the corresponding legal strategy.
For further information, please feel free to contact our strategic patent litigation team.
Adolfo Athié Cervantes
Claudio Ulloa
Mariana González Vargas
Erika Rodríguez Kushelevich