8 Jan
2021

Héctor Elías Chagoya

Becerril Coca & Becerril SC

What is the biggest career challenge that you have faced and what can others learn from how you overcame it?

The biggest challenge I had to face was when I took charge of the patents practice at Becerril Coca & Becerril, SC. Overseeing an operation responsible for prosecuting 2,000 patents per year plus all the accompanying opinion and technology transfer work was very intimidating. The way to overcome such a challenge is, in a word, teamwork. I accepted it because I knew that I had a team that could make it happen and I trusted that we all had the expertise and qualities necessary to succeed.

How have client demands changed over the past five years and how have you adapted to meet these needs?

Over the past five years we have seen a trend towards budgetary restrictions and hesitation regarding the management of patent portfolios between centralised and distributed models – that is, a model where a central provider manages all filings worldwide and uses computing tools to move towards a distributed model with internal management. We have adapted to both of these by providing efficient and competitive cost schemes with different levels of service depending on the needs of the client and by aligning our efforts in a hub for Latin America, taking advantage of the common language, to provide high-quality services at a competitive price.

What do you expect to be the next big tech sectors to take off – and how can rights holders and IP practitioners capitalise on these?

The trends that are currently pushing development in all industries are well known: the Internet of Things, Big Data and AI comprise what I call the ‘IT continuum’. The worldwide regulation of these technologies is also moving protection strategies from trade secrets to patents or perhaps towards sui generis protection. The ability of practitioners and legislation to clarify the patent eligibility of inventions related to these trends in every jurisdiction should make it clearer to rights holders how they can shape their strategies, which are currently blurred between trade secrets, copyrights and patents. Of course, IP bundles of all available rights will still be used, but the emphasis on a certain kind of right remains unclear.

You are a past president of the Mexican Institute of Chemical Engineers (Mexico City Chapter), as well as international vice president of the Licensing Executives Society International (LESI) and a past president of LES Mexico. What value do such organisations bring to the wider IP ecosystem?

Industry and professional organisations give cohesion to all ecosystems as platforms for developing meaningful relationships, trust and knowledge. In the case of an organisation specialising in chemical engineering, the participation of IP professionals helps to spread knowledge as to the importance of intellectual property to a community that uses and generates knowledge constantly. In the case of LES Mexico and LESI, the quality of the professionals involved and the knowledge base that these organisations represent mean that people who are new to intellectual property can learn from the best and most experienced professionals, while those that have been around for a while can be assured of a certain level of trust, ethics and knowledge from every member.

What legislative changes would you like to see made to improve licensing in Mexico and further afield?

The Federal Law for the Protection of Industrial Property, which entered into force on 5 November 2020, is a good baseline for bringing certainty to IP protection, which is fundamental for licensing. However, the situation remains opaque regarding commercialisation and the rules for use in cases of co-ownership, licensing from universities and R&D centres, government-funded inventions and the like. All these rules (eg, what activities can be performed by each co-owner, such as the grant of exclusive licences) are left to general civil law, which is not well suited for the management of intangible assets. At this point good contractual provisions are crucial to ensure the smooth running of licensing transactions, as omissions cannot be easily settled by referring to either statutory provisions or court decisions, since these are extremely scarce for licensing contracts.

Héctor Elías Chagoya

Partner
[email protected]

Héctor Chagoya is a senior partner and patents and technology director at Becerril Coca & Becerril, SC, where he heads the patents practice and services for leveraging value from IP assets. With a chemical engineering background and having worked in intellectual property since 1997, he is a certified licensing professional (the first in Mexico) and has been consistently recognised as a leading patent practitioner in several international surveys since 2005. Mr Chagolya has occupied various positions in professional associations related to his practice in Mexico and internationally. Héctor Chagoya is a senior partner and patents and technology director at Becerril Coca & Becerril, SC, where he heads the patents practice and services for leveraging value from IP assets. With a chemical engineering background and having worked in intellectual property since 1997, he is a certified licensing professional (the first in Mexico) and has been consistently recognised as a leading patent practitioner in several international surveys since 2005. Mr Chagolya has occupied various positions in professional associations related to his practice in Mexico and internationally.

Click here to see his IAM 300 2020 profile. 

Becerril Coca & Becerril SC

Leibnitz 117 PH1

Col Anzures, Deleg Miguel Hidalgo

Mexico City 11590

Mexico

Tel +52 55 5263 8730

Fax +52 55 5263 8731

Web https://www.bcb.com.mx/