As is well known, Mexico has recently opened its economy and is now fully inserted in the worldwide globalization process.
For this reason Mexico is now in need of modern technologies, which are not available within the country, that may enable it to become competitive at the international level. Mexican companies need to attain competitiveness in a very short time, which means that technology acquisition through licensing may be regarded as the most favored alternative since local R&D activities have not fully developed.
In order to make the Mexican market more attractive for foreign technology owners and investors, the legal frame in Mexico has been drastically modified to transform the previous defensive statutes into modern and efficient laws which are designed to encourage both local R&D and technology transfer.
Under the Mexican Industrial Property Law presently in force, licensing agreements no longer need to be registered with any government body. The only exception are those agreements including a patent license that may be recorded before the Mexican Institute of Industrial Property (IMPI) for the purposes of rendering them valid against third parties and also for enabling the owner of the patent to prove working thereof, thus preventing the possible grant of compulsory licenses.
However, if the license is not recorded, it will continue to be perfectly valid between the contracting parties in every respect.
Licensing of technology is a procedure that may now be regarded as entirely free and negotiable between the parties to the agreement. The parties are now able to freely select the technology that they need and to freely negotiate the terms and conditions of the technology transfer, including confidentiality provisions of indefinite duration for protecting the trade secrets, without any intervention of the government.
We must stress the fact, however, that both licensor and licensee must additionally take into account certain other important provisions of the Mexican laws and international treaties, such as the antitrust law, the situation regarding parallel imports, the nature of the confidential information, the rules for taxation, the rules for foreign investment, and also the political stability, the economic situation and the social problems. in order to develop adequate licensing strategies.
The content of this article is intended only to provide general guidelines related to this particular matter. For your specific circumstances, full specialist advise is recommended.
