Patent Invalidity Actions

November 3, 2020

As of November 5, 2020, a new Federal Law for the Protection of Industrial Property (IPPL) will supersede the current Industrial Property Law (IPL). However, both laws will still apply for invalidity actions, since the applicable law for these purposes will be the one upon which the patent was prosecuted and granted.

With that in mind, it will be necessary to consider both sets of invalidity actions when analysing the validity of a patent.

According to the current IP Law, patents are valid unless proven otherwise. The current IP Law establishes several grounds upon which a patent can be invalidated:

• when it was granted in contravention of the provisions on requirements and conditions for the grant of patents or registrations of utility models and industrial designs;
• when it was granted in contravention of the provisions of the law in force at the time it was granted (The nullity action based on this section may not be based on a challenge of the legal representation of the applicant when prosecuting and obtaining a patent or a registration.);
• when the application is abandoned during its prosecution; and
• when a patent was granted in error or by serious oversight, or when it was granted to someone not entitled to obtain it.

The nullity actions mentioned under (1) and (2) may be filed at any time. The actions under (3) and (4) must be filed within five years, counted from the publication date of the patent or registration in the official Gazette.

Now, in accordance with the IPPL, a patent can only be declared invalid:

• when subject matter is not considered an invention, or in the case of non-patentable subject matter, lack of novelty, inventive step, or industrial applicability;
• due to lack of disclosure;

• due to lack of support;
• in the case of divisional applications, when granted against new rules for them;
• when broadening the scope of protection originally allowed during a correction proceeding;
• due to mistakes recognising priority rights that otherwise could result in lack of novelty or inventive step;
• in double patenting cases; and
• when granted to a person that was not entitled to apply for it.

None of these actions have statutes of limitations.

The first set of invalidity actions mentioned above will be applied only for patents granted before November 5, 2020. Any patent granted after that date may only be challenged using the second set of invalidity actions.