Mexico-Selected Compulsory Licensing, Government Use, and Notable Patent Exception Provisions

Industrial Property Law
(of June 25, 1991, as last amended by the Decree of December 26, 1997)

Title 1
General Provisions

Sole Chapter

Art. 6. The Mexican Institute of Industrial Property, the administrative authority in industrial property matters, is a decentralized body with legal personality and its own assets which shall have the following powers:

I. to liaise with the administrative organs of the Secretariat of Trade and Industrial Development, and with the various public and private institutions, national, foreign and international, the aims of which are the promotion and protection of industrial property rights, technology transfer, the study and promotion of technological development, innovation, the differentiation of goods and also to provide such information and technical cooperation as is required of it by the competent authorities in accordance with provisions and policies established for the purpose;

II. to encourage the participation of the industrial sector in the development and implementation of technology that will increase the quality, competitiveness and productivity thereof, and also to conduct research on the progress and implementation of national and international industrial technology and its likely effect on the achievement of the said aims, and propose policies to stimulate its development;

III. to process applications for, and where appropriate to grant, patents and registrations of utility models, industrial designs, trademar under it for the recognition and preservation of industrial property rights;

IV. to substantiate proceedings for the invalidation, lapse and cancellation of industrial property rights, to hand down rulings and issue the corresponding administrative declarations in accordance with the provisions of this Law and the regulations under it, and in general to rule on such requests as may arise from the implementation thereof;

V. to conduct investigations into alleged administrative infringements, to arrange and conduct inspection visits, to request information and particulars, to order and implement precautionary measures to prevent violations of industrial property rights or cause them to cease, hear alleged infringers speak in their defense and to impose the appropriate administrative sanctions in industrial property matters;

VI. to appoint experts when requested to do so under the Law, to issue such technical rulings as may be required of it by individuals or by the Federal Public Prosecutor and to take such action and secure such proof as may be necessary for the issue of such rulings;

VII. to act as depositary when so designated under the Law, and to make available to the competent authority such goods as have been entrusted to it;

VIII. to hear and settle the administrative appeals provided for in this Law that are lodged against the rulings handed down by it relating to acts performed pursuant to it, to the regulations under it and any other relevant provisions;

IX. to act as arbitrator in the settlement of disputes relating to the payment of damages for violation of the industrial property rights protected by this Law where the parties to the said disputes expressly designate it, and in due conformity with the provisions contained in Title IV of Part V of the Code of Commerce;

X. to carry out the legal publication, in the Gazette, and also the dissemination of information deriving from patents, registrations, authorizations and publications granted and any other information relating to industrial property rights as entrusted to it by this Law;

XI. to disseminate, give advice and assistance and render services to the public in industrial property matters;

XII. to promote the creation of industrially applicable inventions, support their development and exploitation in industry and commerce and stimulate technology transfer through:

(a) the disclosure of documentary files on inventions published in the country or abroad, and assistance with the consultation and exploitation thereof,

(b) the compilation, updating and distribution of directories of natural persons and legal entities concerned with the making of inventions and with technological research work,

(c) the holding of competitions, contests or exhibitions and the award of prizes and other recognition that will promote inventive activity and creative- ness in the design and presentation of goods,

ks and advertising slogans, to issue declarations of protection of appellations of origin, to authorize the use thereof, to publish trade names and also to record renewals thereof and the transfer or licensing of their use and exploitation, and such other powers as are conferred on it by this Law and the regulations

(d) assistance to firms or financial intermediaries undertaking or financing the manufacture of prototypes and the industrial or commercial development of specific inventions,

(e) the dissemination among persons, groups, associations or institutions concerned with research, higher education or technical assistance, of knowledge of the provisions of this Law and their scope, such as will facilitate their work in the creation of inventions and the subsequent industrial and commercial development thereof,

(i) the conclusion of agreements providing for cooperation, coordination and concerted action with the governments of the federated entities, and also with national or foreign, public or private institutions, for promoting and developing inventions and creations susceptible of industrial and commercial application;

XIII. to participate in programs for the provision of encouragement and support for the protection of industrial property with a view to the generation, development and implementation of Mexican technology in economic activity, and also for the improvement of the productivity and competitiveness thereof;

XIV. to compile and update the files of inventions published in the country and abroad;

XV. to conduct searches of the state of the art in the various sectors of industry and technology;

XVI. to promote international cooperation through the exchange of administrative and legal experience with institutions responsible for the registration and legal protection of industrial property in other countries, including the following in particular: basic and further training of staff, transfer of work and organizational methodology, exchange of publications and updating of documentary files and databases in the industrial property field;

XVII. to conduct studies on the industrial property situation in the international field, and take part in international meetings or forums concerned with that subject;

XVIII. to act as advisory body on industrial property matters for the various departments and agencies of the Federal public administration, and also advise social and private institutions;

XIX. to take part in the training of human resources specialized in the various industrial property disciplines by means of the design and implementation of training, teaching and specialization programs and courses for professional, technical and auxiliary staff;

XX. to devise and implement its corporate operational program;

XXI. to take part, in coordination with the competent organs of the Secretariat of Trade and Industrial Development, in any negotiations lying within its sphere of competence;

XXII. to render such other services and take such measures as are necessary for the due exercise of its

powers under this Law and whatever other legal provisions are applicable.

Chapter II

Art. 16. Inventions that are new, the result of an inventive step and susceptible of industrial application within the meaning of this Law shall be patentable, with the exception of:

I. essentially biological processes for obtaining, reproducing and propagating plants and animals;

II. biological and genetic material as found in nature;

III. animal breeds;

IV. the human body and the living matter consti- tuting it;

V. plant varieties.

Art. 19. The following shall not be considered inventions for the purposes of this Law:

I. theoretical or scientific principles;

II. discoveries that consist in making known or revealing something that already existed in nature, even though it was previously unknown to man;

Ill. schemes, plans, rules and methods for carrying out mental processes, playing games or doing business, and mathematical methods;

IV. computer programs;

V. methods of presenting information;

VI. esthetic creations and artistic or literary works;

VII. methods of surgical, therapeutic or diagnostic treatment applicable to the human body and to animals;

VIll. juxtaposition of known inventions or mixtures of known products, or alteration of the use, form, dimensions or materials thereof, except where in reality they are so combined or merged that they cannot function separately, or where their characteristic qualities or functions have been so modified as to produce an industrial result or use not obvious to a person skilled in the art.

Chapter VI
Licensing and the Transfer of Rights

Art. 70. In the case of inventions, after three years from the date of grant of the patent, or four years from the filing of the application, whichever period elapses later, any person may apply to the Institute for the grant of a compulsory license to use the said invention where it has not been used unless there are duly justified reasons for such non-use.

There shall be no grounds for the grant of a compulsory license when the patent owner or the holder of a contractual license has been importing the patented product or a product obtained using the patented process.

Art. 71. Whoever applies for a compulsory license must have the technical and economic ability to use the patented invention efficiently.

Art. 72. Prior to granting the first compulsory license, the Institute shall give the patent owner the opportunity of working the patent within a period of one year from the date of the personal notification addressed to him. After the parties have been heard, the Institute shall decide on the grant of the complusory license and, if it decides to grant it, shall specify the duration, terms and scope thereof and the amount of the royalties payable to the owner of the patent.

In the event of a compulsory license being applied for where another already exists, the person holding the earlier license shall be notified and heard.

Art. 77. For reasons of national emergency or security, and for as long as those reasons obtain, the Institute shall, in a declaration published in the Viario Oficial, declare that use may be made of certain patents by means of the grant of licenses of public utility in cases where, if such use were not made, the production or the supply or distribution to the public of staple goods and services would be prevented, hindered or made more expensive.

The procedure laid down in the second paragraph of Article 72 shall be observed for the grant of such licenses, which shall not be either exclusive or transferable in character .