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Effects of the Coronavirus or COVID-19 Pandemic on Industrial Property Law

On March 30, 2020, through publication in the Federal Official Gazette, the General Health Council of Mexico stated the SARS-CoV2 virus disease epidemic (COVID-19) as health emergency due to force majeure. Likewise, authorizes the Secretariat of Health to determining all the actions that are necessary to attend in the emergency.

Regarding the Intellectual Property Law, some of the actions that may be determined by the referred Secretariat can be found in article 77 of the Intellectual Property Law, which establishes the concept, definition and scope of "Public Utility Licenses". This became relevant due to the endless information regarding medications or vaccines to cure the SARS-CoV2 virus (COVID-19).

Although, no patent has been granted in Mexico for a drug that cure the highly infectious virus, nonetheless there are drugs and diagnostic devices (testing devices) for which the National Health System is constantly requesting supplies, given that a global pandemic is being treated, it is logical that lack of stock will occur. From other counters we have knowledge how the President of the United States of America has requested support from companies in the automotive sector for the mass manufacture of artificial respirators, for which some components are protected by a patent.

In the Mexican case, the article referred states:

"Article 77. For reasons of emergency or national security and while these last, including serious diseases declared of priority attention by the Council of General Health, the Institute, by declaration to be published in the Official Gazette of the Federation, will determine that the exploitation of certain patents will be done by means of the concession of licenses of public utility, in the cases in which, not doing it, the production, benefit or distribution of basic satisfiers or medicines for the population is blocked, delayed or made more expensive.

In cases of serious diseases that are a cause of emergency or threaten national security, the General Health Council shall declare priority attention on its own initiative or at the written request of national institutions specialized in the disease that are accredited by the Council, which justifies the need for priority attention. Once the Council's declaration has been published in the Federal Official Gazette, pharmaceutical companies may apply to the Institute for a public utility license and the Institute shall grant it, after hearing the parties, as soon as the case merits it in accordance with the opinion of the General Health Council within a period not exceeding 90 days from the date of submission of the application to the Institute.

The Ministry of Health will establish the conditions of production and quality, duration and scope of the license, as well as the qualification of the applicant's technical capacity. The Institute shall establish, after hearing both parties, a reasonable amount of royalties to be paid to the owner of the patent.

The grant may cover one or all the prerogatives referred to in Section I or II of Article 25 of this Law.

Except for the grant of licenses for public use referred to in the second and third paragraphs of this Article, the grant of other licenses shall be governed by the terms of the second paragraph of Article 72. None of the licenses considered in this article may be exclusive or transferable.”

Therefore, the first paragraph of the article clearly indicates the cases in which the Mexican Trademarks and Patents Office (“IMPI”) will determine that the exploitation of certain patents will be done through the granting of licenses of public utility, for instance, block, delays or makes more expensive the production, provision or distribution of basic satisfiers or medicines (that are protected by a patent title in Mexico) for the population.

While the second and third paragraphs clearly establishes the procedure to be followed so that those pharmaceutical companies that request access to a public utility license can obtain it.

Foreseen a probable declaration of public utility licenses by IMPI, we should not set aside the importance of the role that the Federal Commission for the Protection against Sanitary Risks (COFEPRIS) should play, since it will be the one to carry out the inspections and tests that will lead to granting sanitary authorizations and registrations so that the products manufactured under such licenses can be used in patients as soon as possible.