Claiming Patent Ownership with the IMPI (Article 40 BIS of the LFPPI)

June 10, 2026

A recent amendment to the Federal Law for the Protection of Industrial Property (LFPPI) introduced a provision in Article 40 BIS that allows ownership to be claimed with the Mexican Institute of Industrial Property (IMPI) for an industrial invention that has been registered to a person who doesn´t have a right it. In practical terms, this mechanism is an administrative procedure that allows the correction of a registration that was registered to an illegitimate owner from the outset, and which violates the guiding principle of Articles 38 and 92,  which establish that the right to apply for a patent is reserved exclusively for the inventor or their successor in title

Prior to this reform, controversies of this nature lacked a procedure before the IMPI. Furthermore, given that an application file maintains its confidential status until the moment of its publication (under the terms of Article 91), the legitimate owner often found themselves in a procedural “blind spot” being unable to learn of the misappropriation until the act acquired publicity.  Against this backdrop, ordinary practice consisted of seeking recourse in a civil court only after the patent was granted. It is worth noting that a large portion of these conflicts derive from prior contractual relationships, such as employment relationships, service agreements, confidentiality agreements, or collaborations on innovative projects.

It is important to distinguish this concept from traditional nullity. While an action for nullity seeks to invalidate a right due to technical flaws in its granting, a claim of ownership does not challenge the patentability, but rather the applicant’s standing. This figure is the procedural mechanism that enables the novelty exception under Article 52 to be applied, which protects the inventor against third-party filings without their consent, but which in practice often left the inventor defenseless given that there has been no clear mechanism to prove such lack of authorization.

A broad interpretation of Article 40 BIS would remedy this evidentiary gap, since the administrative decision recognizing the legitimate owner would constitute definitive proof that the third party did not have a right to registration. The objective is not to erase the legal value of the invention or place it in the public domain, but rather to transfer the right to its rightful owner, thus ensuring that the invention retains its novel status under the law despite leaked or misappropriated information.

This change also opens a significant debate regarding whether the IMPI has sufficient constitutional authority to resolve a dispute over private property. The rationale behind the reform appears to leverage the Institute’s technical expertise and offer a more streamlined process than a civil trial. Nonetheless, the actual scope of this jurisdiction will be put to the test in courts. Still, this procedure is a documentary and administrative one, which complicates the evidentiary analysis. Proving that the person who was granted the patent lacked a right to it requires reviewing the context in which the invention was developed and the conduct of those involved, which requires a more nuanced legal examination than the technical analysis of novelty or inventive step. Furthermore, Article 40 BIS states that this claim does not prejudice other rights, suggesting that the dispute could simultaneously be heard in a civil court, for example, to demand the performance of a contract or to seek damages. This runs the risk of producing conflicting decisions.

In short, this new provision marks a significant change whose purpose is to prevent an invention from remaining in the hands of someone who is not the legitimate owner, and which relies on the original inventor’s rights as established in Articles 52 and 92. Its success will depend on how the IMPI applies this authority and on federal courts´ interpretation regarding its limits and confrontation with judicial jurisdiction.