Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
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Results: 4 Answers
Patents
6.
Patent infringement
6.1
What Constitutes Patent Infringement?
 
Mexico
The following activities constitute patent infringement:

  • manufacturing, developing, offering for sale or distributing goods that are protected by a patent without the owner’s consent or without the appropriate licence;
  • using a patented process without the owner’s consent or without the appropriate licence; and
  • offering for sale or bringing into circulation goods that are the result of the use of a patented process.
For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.2
Does your jurisdiction apply the doctrine of equivalents?
 
Mexico
No. In Mexico, the patent applicant is prevented from broadening the interpretation of the claims as originally filed. This limitation is expressly established in the Mexican Industrial Property Law, which provides that voluntary amendments may not contain additional material or claims that expand the scope of the patent beyond that contained in the original application considered as a whole.

Therefore, the doctrine of equivalents may be taken into account for the purposes of interpreting claim scope during a post-grant proceeding, as long as:

  • the amendments are presented as evidence by the interested party;
  • they are relevant for the authority before which the proceeding is being held to make its judgment; and
  • they do not seek to broaden the interpretation of the patent as filed in Mexico and do not contravene what has been expressly stated in the prosecution history file of the Mexican patent; in any case, the information that has been put on record in the Mexican file will prevail.
For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.3
Can a party be liable if the patent infringement takes place outside the jurisdiction?
 
Mexico
No, the patent infringement must take place in Mexican territory in order for a party to be liable.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.4
What are the standards for wilful infringement?
 
Mexico
The Mexican Industrial Property Law provides that when someone offers for sale or distributes goods protected by a patent in the knowledge that they have been manufactured or developed without the consent of the patent owner or without the appropriate licence, such conduct will incur a penalty of double the fine for patent infringement. Wilful infringement is understood as infringement where the infringer was aware of the patent right.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.5
Which parties can bring an infringement action?
 
Mexico
The parties that can bring an infringement action are the patent owner and an authorised licensee which has been duly recorded as such with the Mexican Institute of Industrial Property (IMPI) and which has the capacity to enforce the patent rights.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.6
How soon after learning of infringing activity must an infringement action be brought?
 
Mexico
An infringement action may be brought at any time, as long as the patent is in force and the applicant has evidence to demonstrate that an infringement has occurred or is occurring.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.7
What are the pleading standards to initiate a suit?
 
Mexico
The following information must be provided to initiate a suit:

  • the name of the plaintiff and its representative;
  • the address for service and receipt of notifications;
  • the name and address of the infringer;
  • a description of the facts; and
  • the legal grounds of the infringing conduct.
For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.8
In which venues may a patent infringement action be brought?
 
Mexico
A patent infringement action must be filed and prosecuted before IMPI. Decisions of IMPI regarding patent infringement may be appealed through a review recourse or before the FCAA and at second instance by the federal circuit courts.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.9
What are the jurisdictional requirements for each venue?
 
Mexico
At first instance, before IMPI, the jurisdictional requirement is to have a patent which is valid and in force. At second instance, the party filing the action must have been affected by IMPI’s decision. At third instance, the constitutional rights of the party filing the action must have been affected by the FCAA’s decision.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.10
Who is the fact finder in an infringement action?
 
Mexico
The fact finders in an infringement action are:

  • the plaintiff, as it should file all available evidence along with its initial brief;
  • IMPI through its inspectors (if an inspection is offered by the plaintiff); and
  • technical experts or expert witness who are tasked with gathering evidence and analysing it to confirm whether the patent has been infringed.
For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.11
Does the fact finder change based on venue?
 
Mexico
No, the fact finders remain the same, as at further instances of appeal no new evidence is admitted; rather, the appeal courts merely analyse the legality or constitutionality of decisions issued based on the evidence previously filed or obtained in the infringement action.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.12
What are the steps leading up to a trial?
 
Mexico
When patent infringement is detected, the patent owner can choose between filing a judicial action immediately or exploring extrajudicial actions. The patent owner should first conduct an infringement analysis in order to confirm that the product or process in fact violates its IP rights. Once this has been confirmed, the patent owner can send a cease and desist letter in order to try to resolve the conflict amicably. If the alleged infringer does not cooperate, the patent owner can then file an infringement action with IMPI.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.13
What remedies are available for patent infringement?
 
Mexico
Where IMPI finds that patent infringement has occurred and thus confirms the violation of the patent owner’s IP rights, IMPI can impose different penalties on the alleged infringer. In most cases, the penalty will consist of a fine of up 20,000 Units of Measure and Update (approximately $94,000).

Moreover, once the decision in the infringement action is beyond the shadow of appeal, the patent owner can also file a civil action in order to claim damages.

For more information about this answer please contact: Juan Carlos Amaro from Becerril Coca & Becerril
6.14
Is an appeal available and what are the grounds to appeal?
 
Mexico
Yes, there are two possibilities to appeal a decision rendered in an infringement action. The first is by filing for a review recourse before the head of the IP Enforcement Department of IMPI within 15 working days of being served notice of the decision, alleging illegality or lack of due process in the infringement proceeding. This option is recommended only if there has been an evident error or mistake in the proceeding; the first administrative decision may be revoked, modified or confirmed accordingly.

The party affected by the review recourse decision - or the first administrative decision, if a review recourse has not been pursued - may further file a nullity claim with the FCAA within 30 working days of being served notice of the relevant decision.

The FCAA is an independent jurisdictional administrative court which will review any violations of due process and/or the merits of the case, analysing only the causes for appeal expressed by the appellant in its brief of appeal. The nullity claim is prosecuted as a full trial and therefore all parties - that is, the plaintiff and the defendant in the administrative proceeding, as well as IMPI itself - are entitled to appear before the FCAA to file allegations and evidence.

In the nullity claim, the plaintiff can also request preventive measures in order to suspend execution of IMPI’s decision (ie, the imposition of a fine or other sanctions ordered by IMPI).

The FCAA will either confirm the administrative decision(s) or declare it null, ordering IMPI to issue a new decision following guidelines established by the FCAA. Usually IMPI takes about four months to comply with the FCAA’s ruling.

The FCAA’s decision may be appealed through a constitutional action on the grounds that it violates fundamental rights recognised in the Mexican Federal Constitution or in international treaties which Mexico has signed and ratified. Normally, the appellant claims violations of the right to legality, due process or judicial protection.

This type of action is known as an ‘amparo’ appeal and is prosecuted before a federal circuit court, by a panel of three magistrates. Once the appeal has been admitted, the interested parties are entitled to file arguments supporting the constitutionality of the FCAA’s decision.

If the federal circuit court decides in favour of the appellant, it will order the FCAA to revoke its decision and to issue a new decision following guidelines established by the federal circuit court. Otherwise, it will deny the appeal and the FCAA’s decision will become final.

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