Mexican patent office shows intention to follow the Jurisprudence by which the Mexican Supreme Court gives clarification on how the Linkage Regulation applies to formulation patents
July 19, 2012
On July 6th, 2012 as done every six months, IMPI circulated a draft of the next edition of the Linkage Gazette, which is expected to be published by the end of this month.
In previous newsletters that can be found at www.olivares.com.mx, we have reported the developments of the Linkage regulation in Mexico since 2003, date of its enactment until the issuance of the jurisprudence in 2010 by the Mexican Supreme Court interpreting the scope of the Linkage regulation. In this regard we have highlighted that after more than fifty favorable decisions obtained by our law firm ordering the inclusion of formulation and use patents, the cases reached the Supreme Court to solve the dilemma as whether or not formulation patents should be included in the Linkage Gazette, the Supreme Court ruled that they should be included.
Two years after the jurisprudence, IMPI as administrative authority was reluctant to follow the Supreme Court Jurisprudence which is only binding to Courts of Law, therefore patent holders have required to litigate in order to obtain the benefits of the jurisprudence.
In this test draft of the Linkage Gazette, according to the Mexican Supreme Court Jurisprudence, there is a chapter at the end listing seven formulation patents (four owned by local companies and three by foreign companies) without litigation.
Therefore it seems that IMPI is willing to include the formulation patents and follow the jurisprudence, however we are unsure whether this draft will prevail in the ongoing discussions between the R&D and generic chambers, and what the process for further inclusions will be and if use patents will be also included.
We will follow up closely and keep our clients updated on this matter.