How have client demands shifted over the course of your 27-year career, and how have you adapted your approach to meet these?

The main shift relates to increasing budgetary restrictions arising from several economic crises, and the dissemination and broader use of software solutions by clients and patent offices. In Mexico, the value of local counsel intervention has diminished, thus transforming patent prosecution into a primarily administrative function. The key for adapting was predicting – and getting ahead of – efficiency challenges by reducing local prosecution costs in advance and being an early adopter of electronic patent office tools, but now that is no longer enough as AI is pushing for even greater efficiency.

However, IP consultancy also looks different. Tech transfer offices in universities and R&D centres are increasingly necessary for fostering licensing and industry cooperation activities, while covid-19 drove high-speed innovation. This has increased the need for consultancy regarding patents and their management and valuation.

These changes have been the main drivers to adapt and start Mextrategy as a consultancy that specialises in designing patent strategies, their management and licensing.

Against the backdrop of the recent proliferation of patent pools, what, in your view, is the cornerstone of a world-class licensing strategy?

Licensing strategies must always follow the market and technology intelligence. Constant identification of your patent portfolio’s impact in the market and that of your competitors is key for a successful licensing strategy. I always compare patent pool strategies to card collections – the more cards you have, the better the exchanges you can make, but there are a few extremely valuable cards, without which a collection cannot be complete. Unless you have a clear picture of the number of cards in a set and a clear inventory of what you have, and then identify the key cards in the collection, your ability to build a good strategy and choose the best pool will be limited.

What makes Mextrategy stand out, and what steps is the firm taking to future proof itself?

We started during the pandemic as an alternative to prosecution-oriented firms, covering a much-needed consultancy niche of intellectual property and intangible asset management. Mextrategy covers IP valuation, tech transfer strategies, innovation plans, trade secret systems and PCT filings and is an ally of its clients, particularly those that are too small to build an in-house team to managing their intellectual property. We are there to help them build and – more importantly – execute strong and sound IP strategies to maximise value through different monetisation strategies. Very often, Mextrategy serves as a bridge between Mexican and foreign entities for in or out licensing and the design of innovative projects.

How would you characterise the IP monetisation landscape in Mexico right now, and how do you expect attitudes to evolve over the next five years?

The impact of the Mexican market in global monetisation strategies is almost always overlooked. The 2020 Federal Law for the Protection of Industrial Property kept the settlement-driving standard at 40% of the selling price as the minimum infringement damages award – a risk that is too high to be neglected – and added other more typical alternatives for damages calculation (eg, profit loss, undue profit or equivalent royalty). 

Mexico remains a net technology importer and intellectual property is typically licensed in or acquired by Mexican companies – often subsidiaries – from foreign rights holders. This means that litigation and licence negotiations in the international context and particularly under patent pools may continue to manage Mexican patents based on the outcomes of litigation or negotiations happening elsewhere.

What has been your proudest professional achievement to date, and why?

Facing the covid-19 pandemic and maintaining filing operations and pending actions while also overcoming illness and even the passing of esteemed team members and remaining financially healthy during the full closure of the Mexican Patent Office. 

Under such circumstances, it was imperative to seize consulting opportunities related to licensing and technology transfer in a unique environment for vaccines, medical equipment and the boom of IoT, Big Data and AI-related services. This led to me deciding to found Mextrategy as a start-up for strategic IP consulting in February 2021.

Hector Chagoya

Founder, General Director
[email protected]

Héctor Chagoya-Cortes is a chemical engineer and attorney at law. For decades he has been recognised as a leading patent practitioner and technology transfer professional, and he currently focuses on high-value IP strategy consulting. Mr Chagoya-Cortes has extensive experience in patent prosecution, litigation and licensing, and he has formed part of the boards of several organisations related to intellectual property, technology transfer and chemical engineering in Mexico and elsewhere.