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Patents - Law on Employees' Inventions - Mexico

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-When does the law on employees' inventions apply?

The General Labor Law applies every time an employee makes an invention whilst carrying out his or her activities in favor of the employer.


-Is the employee obliged to notify the employer of an invention?

Although there is no specific provision in the General Labor Law with regard to an obligation for the employee to notify the employer that he or she has made an invention, this could be agreed by the parties in an employment contract or any other kind of legal document. In fact, it is a common practice to do so in Mexico, particularly for workers involved with inventions or the creation of works so that they may assign the related rights to their employers.


-Who becomes owner of employee inventions?

As a general rule, the worker (inventor) has the right of being considered the author of the corresponding invention.  However, the ownership over the inventions will be subject to the following provisions:

(i) If the employer is specialized in works related to research or improvement of the employer’s processes under the labor relationship, the employer shall be the owner of the invention and any exploitation right over the related patent. .

(ii) In any other case, ownership of the invention shall be vested in the person or persons that made it, although the employer shall have a preferential right, on equal circumstances, to the exclusive use and acquisition of the invention and the corresponding patents.



-Which duties do employers have in relation to employee inventions?

If the employer is specialized in works related to research of the employer’s processes, the employer shall pay the inventor a complementary compensation, which shall be negotiated by the parties or by the Labor Conciliation and Arbitration Board (the amount will depend on the importance of the invention and the benefits for the employer). Also, the employer must make sure that the employee is recognized as the inventor.


-Is the employee inventor entitled to additional remuneration?

If the employer is specialized in works related to research of its own processes, then the inventor shall have the right to receive a complementary compensation, which shall be negotiated by the parties or by the Labor Conciliation and Arbitration Board (the amount will depend on the importance of the invention and the benefits for the employer). In any other case, ownership of the invention shall be vested in the person or persons that made it, although the employer shall have a preferential right, on equal circumstances, to the exclusive use and acquisition of the invention and the corresponding patents.

It is common that from the beginning of the labor relationship, employer and employee agree that the compensation or salary includes the corresponding complementary compensation.



-How is the remuneration calculated?

The additional remuneration (where the employer is specialized in works related to research or improvement of the employer’s processes) that would be received by the employee could be calculated based upon variances between the employer's income derived from the invention and the employee's salary.  At this time, no precedents or case law has been issued for determining a standard procedure to calculate additional remunerations; therefore, the same should be negotiated by the related parties.  


-Are contractual agreements possible?

Although the General Labor Law states the manner in which complementary compensations could be made to the employee, it is a common practice for employment agreements to convey that the salary includes any compensation related to inventions. However, it is possible for the employer and employee to enter into contractual agreements with respect to additional remunerations over inventions.


-Procedural Issues

In the event the employee and employer are unable to reach an agreement corresponding to the benefits received by the employer from the invention, they have to go before the Labor Conciliation and Arbitration Board. This Board will determine the amount of the remuneration, and the ensuing resolution enforcing remuneration could be challenged through a Constitutional Appeal before the Collegiate Circuit Court.