Mexico: Patent Litigation In Mexico

In the past it was commonly believed that enforcement of intellectual property in Mexico was something unusual. However, with recent changes in the law, particularly since the Law for the Development of Industrial Property was enacted in 1991 and modified in 1994 under the name of Law of Industrial Property, the status of Industrial Property in Mexico has highly improved, as well as the ability of a patentee to enforce its patents in Mexico. Although it is perfectly possible to enforce patents through a complaint filed with a Civil Court, this action has not been regarded by some attorneys as fully recommendable, mainly due to lack of expertise of the judges in industrial property matters. Infringement actions have been preferably brought before the Mexican Institute of Industrial Property (IMPI) rather than to the courts, which become involved only after the Patent Office has determined whether an infringement exists and that the patent is valid. If such requirements are met, then the patentee may bring an action before the courts to obtain criminal penalties or a civil remedy against the infringer. Furthermore, IMPI has the right in an administrative action to impose sanctions on an infringer depending on the seriousness of the infringement and the sanctions requested.

In Mexico, patent infringement is an administrative infringement with civil consequences and, if repeated, it becomes a criminal offense. In administrative actions, suits are filed before the IMPI in order to obtain an administrative declaration of infringement. Once such declaration is issued, the patentee can go to the civil courts to claim damages and other rights. Criminal actions are started by filing a complaint with the Federal Prosecutor. If no determination of infringement exists yet, the Prosecutor requests IMPI to issue it. IMPI has also the right to issue provisional and final orders that infringement should cease.

Any further remedy of a civil or criminal nature is a matter for the courts having jurisdiction over the infringer. Decisions of the IMPÏ are subject to judicial review by an amparo suit before the District Courts whose decision may be appealed in a revision appeal to the Circuit Courts, whose decision is final.

In order to obtain evidence of infringement, an inspection order can be issued. If "irrefutable proof" of infringement is found during an inspection, the infringing goods and other materials relating to the infringement may be seized. In this case, a bond is posted to cover possible damages to the defendant if he is finally found not to have been an infringer.

According to article 24 of the Law of Industrial Property, once the patent has been granted, the patentee may demand from the courts an award of damages for exploitation of the patented invention back to the date of its publication.

The main purpose of an administrative patent infringement action is to obtain an order to stop the infringer from using the patented invention and to impose sanctions to the infringer. Relapse is subject to imprisonment of from two to six years.

Generally, an infringement action in Mexico takes about three years; but if an amparo is filed, it may need a year an a half more.