When all efforts to obtain the protection of an invention have succeeded, applicant is granted a Letters Patent, whereby an exclusive monopoly right is obtained for a specific period of time, commonly for 20 years, to exploit the invention in the country wherein the said rights were granted.
However, the actions of a patentee do not end when receiving the Title, Certificate or Letters Patent. On the contrary, it is important to act properly to protect and to keep said exclusive monopoly in force, since rights may be lost when overlooking the following aspects:
Maintenance Fees: The first issue is to effect the payment of the maintenance fees for the patent granted, inasmuch as if the fees are not paid before the expiration date yearly or by period (in Mexico the periods comprise five years), the corresponding Patent Office may declare the patent as nullified or cancelled.
Reinstatement of rights: In case the date for the payment of the maintenance fees has expired without having made such payment, it is always useful to review the local Law of the country since it might be possible to reinstate the rights. Mexico grants a grace term of six months after the expiring date to reinstate the patent rights with the payment of the corresponding maintenance fee plus an extra fee.
Exploitation of the Patent: The Law in some countries, Mexico included, establishes that the owner of a patent has the obligation to exploit his protected invention within a period of time after the granting of the rights. If the owner does not comply with this obligation, third parties may request the corresponding Authorities an obligatory license for the exploitation of the patent.
Licenses: If the patentee decides not to exploit the patent by himself, but to grant a license to a chosen third party, it is suggested to review what the local Law establishes to determine the obligation to record the license with the corresponding Patent Office. Otherwise, the Authorities may consider the license as non-official and the patent as not exploited, thus causing it to fall in the case of an obligatory license.
In México, the importation of a patented product, or of a product obtained by a patented process either by the patentee or by a licensee, is counted as exploitation of the patent rights.
Publication of patent application for opposition purposes: In some countries, Mexico excluded, the abstract of the invention is published for opposition purposes as a stage within the prosecution of a patent application. It is important that the patentee or his agent considers reviewing the publications in the Official Gazette of the pertinent country in order to detect any application that may infringe the rights of the patent, and if that is the case, to file an opposition to the grant of said application. If the owner does not perform this watch and consequently permits the granting of a potentially infringing patent to a third party, his property rights may dilute, and to reinstate them, it may be necessary to start a nullity procedure for said potentially infringing patent.
Watching the competitors: It is useful to keep a watch over the competitors to ensure that the appropriated rights are not being invaded. At any suspicion of an infringement, it is very important to proceed immediately by notifying the existence of the patent rights and of its scope.
Summarizing, the obtainment of a patent involves rights but also obligations that may be kept in mind in order to comply with the purpose of having an exclusive monopoly, and in addition, to commercially succeed with the creation of innovations.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
