Comparative Guides
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Results: 4 Answers
Patents
4.
Validity/post-grant review and/or opposition procedures
4.1
Where can the validity of an issued patent be challenged?
 
Mexico
The validity of a granted patent can be challenged before the Mexican Institute of Industrial Property (IMPI).

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
4.2
How can the validity of an issued patent be challenged?
 
Mexico
Under the Mexican Industrial Property Law, the validity of a patent can be challenged through an invalidation action.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
4.3
What are the grounds to invalidate an issued patent?
 
Mexico
The Mexican Industrial Property Law sets out the following grounds to invalidate a patent:

  • The patent was granted against the requirements and conditions stated in the Mexican Industrial Property Law (ie, lack of novelty, inventive step, industrial applicability or patentable subject matter);
  • The patent was granted in violation of the provisions of the law in force at the time of grant;
  • The patent application was abandoned in the course of its prosecution;or
  • The patent was issued by serious error or negligence, or was granted to a person not entitled to it.

An action deriving from the first two grounds above may be brought at any time; however, an action deriving from the third and fourth grounds must be brought within five years of the date of publication of the granted patent in the IP Gazette.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
4.4
What is the evidentiary standard to invalidate an issued patent?
 
Mexico
The initial brief of an invalidation action should be accompanied by all evidence that supports the case.

All types of evidence are admissible, with the exception of testimonials and personal statements, unless this evidence is submitted in documentary form.

In most cases, in order to support the action, the infringer can offer as evidence a technical opinion or expert witness testimony, which endeavours to demonstrate why the patent in suit is not valid.

Moreover, IMPI may require a technical opinion from the examiners of its Patent Department in order to inform and support the corresponding decision.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
4.5
What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?
 
Mexico
On receiving a patent application which meets all the requirements, IMPI will publish the patent application in the IP Gazette. Once the application is published, any party affected by the patent application has two months in which to file an opposition against it.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
4.6
Who can oppose a granted patent?
 
Mexico
Any interested party that may be affected by the grant of the patent.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
4.7
What are the timing requirements for filing an opposition or post-grant review petition?
 
Mexico
Once the patent application is published in the IP Gazette, any interested third party has a two-month term to file an opposition, together with all evidence that demonstrates why the patent application should be rejected.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
4.8
What are the grounds to file an opposition?
 
Mexico
An opposition can be filed on the grounds that the patent was granted against the requirements and conditions stated in the Mexican Industrial Property Law (ie, lack of novelty, inventive step, industrial applicability or patentable subject matter).

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
4.9
What are the possible outcomes when an opposition is filed?
 
Mexico
IMPI will consider the arguments and evidence provided by the opponent in order to conduct a substantive examination of the patent application. However, IMPI is not compelled to issue an official decision in the opposition procedure.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
4.10
What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?
 
Mexico
The opponent must file arguments and/or evidence to prove that the patent application falls under one or more of the prohibitions provided in the Mexican Industrial Property Law. Therefore, the burden of proof rests with the opponent. Nevertheless, IMPI does not issue a decision in the opposition procedure; instead, it can use the opponent’s arguments and evidence to conduct its substantive examination and determine whether the patent application should be denied.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
4.11
Can a post-grant review decision be appealed and what are the grounds to appeal?
 
Mexico
No, an appeal is not possible in opposition proceedings. The opponent must wait until the patent is granted in order to challenge its validity through an invalidation action.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril