Mexico: The International Comparative Legal Guide To: Patents 2018

Last Updated: 14 September 2017
Article by Alejandro Luna and Sergio L. Olivares Sr

1 Patent Enforcement

1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what would influence a claimant's choice?

In Mexico, the problem of selecting the competent judge or choosing jurisdiction is minimal. Indeed, the only venue to enforce a patent is through administrative proceedings (infringement action) before the Mexican Patent Office (IMPI), which is not a Court of Law, but a Federal administrative entity. IP enforcement is federal law, no state law is available. However, the decisions of this agency on patent infringement cases can be appealed by any one of the intervening parties, thus bringing the matter up before a single specialised IP Court. The decision issued by the specialised IP Court could be appealed before 20 Federal Circuit Courts at Mexico City, however the case is turned randomly by a computer system. By territorial jurisdiction, IP matters are mainly decided at Mexico City.

1.2 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?

Traditionally, Mexican Courts do not address the existence of patent infringement as, in accordance with the LIP, such cases must be filed and prosecuted with the IMPI. Arguments should be filed in writing and following applicable procedural rules to commence the procedure.

Government fees to commence a proceeding (patent infringement or invalidity) before the IMPI are around US$73.

The proceeding before the IMPI usually lasts two years. This is the first stage; at least two additional stages are available.

1.3 Can a party be compelled to disclose relevant documents or materials to its adversary either before or after commencing proceedings, and if so, how?

The IMPI may obtain all the evidence deemed as necessary for the verification of facts that may constitute a violation of one or more of the rights protected by this Act or the administrative declaration procedures.

When the owner concerned or the alleged infringer has submitted sufficient evidence to reasonably have access to support its claims and has specified evidence relevant to the substantiation of its claims that is under the control of the opposing party, the IMPI may order the presentation of such evidence before commencing proceedings and, where applicable, this authority should ensure the conditions for the protection of confidential information.

1.4 What are the steps each party must take pre-trial? Is any technical evidence produced, and if so, how?

All pieces of evidence should be filed or announced with the original infringement claim or with the invalidity action before the IMPI. The applicable regulations do not contemplate a pre-trial stage, therefore there is no evidence produced in such a stage, but its preparation may be necessary.

1.5 How are arguments and evidence presented at the trial? Can a party change its pleaded arguments before and/or at trial?

Arguments should be filed in writing and following applicable procedural rules. All arguments and evidence must be filed along with the initial brief requesting the infringement action, with an exception being provided for supervening evidence. The general rule is no, parties cannot change their pleaded arguments, unless there are supervening or unknown facts.

1.6 How long does the trial generally last and how long is it before a judgment is made available?

The initial stage before the IMPI of a patent infringement action usually takes two years. Once the IMPI issues a decision, two further stages of appeals before the Courts, lasting no less than three further years, are expected.

1.7 Are judgments made available to the public? If not as a matter of course, can third parties request copies of the judgment?

The IMPI does not make the judgments of patent infringement trials or any proceeding available to the public until they are final and beyond shadow of appeal, and some information regarding the decision remains confidential especially if the parties request it.

1.8 Are there specialist judges or hearing officers, and if so, do they have a technical background?

The IMPI is considered the only authority to solve patent enforcement proceedings in the first instance.

In January 2009, a specialised IP Division at the Federal Administrative Courts began operating. This Division has jurisdiction to review all cases based on the IPL, the Federal Copyright Act, the Federal Law of Plant Varieties and other IPrelated provisions. The creation of this Division should help improve, in general terms, the applicable criteria for IP cases, but the three Magistrates forming this tribunal have no technical background. The last appeal stage is formed by Federal Circuit Magistrates; although they are highly capable in legal issues, they do not need to have IP or technical backgrounds.

1.9 What interest must a party have to bring (i) infringement, (ii) revocation, and (iii) declaratory proceedings?

  1. Any patentee or licensee (unless expressly forbidden from doing so) has the right to prosecute a suit against a third party infringing his or her rights. A distributor may not bring a suit for infringement.
  2. An accused infringer may counterclaim patent invalidity under formal or technical considerations, upon receiving the infringement suit before the IMPI, but it is not possible to request an additional judicial ruling or declaration.
  3. Cease and desist letters provide the required legal standing to initiate invalidity actions. If pertaining to a specific industrial or commercial activity (i.e. the pharma industry), to provide legal standing, this is subject to debate and the Courts are divided.
  4. Amendments to the patent law allow anyone to request the IMPI to initiate officially the cancellation proceeding against patents.
  5. Simple legal standing, namely the mere business or commercial activity to challenge the validity of a patent, is under test before the Courts.

1.10 If declarations are available, can they address (i) non-infringement, and/or (ii) claim coverage over a technical standard or hypothetical activity?

In Mexico, non-infringement declarations are available.

1.11 Can a party be liable for infringement as a secondary (as opposed to primary) infringer? Can a party infringe by supplying part of, but not all of, the infringing product or process?

There is no specific provision in the IP Law relating to the doctrine of contributory infringement, but there is some room to argue in favour of this doctrine; however, it has not been tested before the IMPI or the Courts. Actions may be brought against distributors of an infringing product, and provisional measures may be imposed on third parties to some extent.

1.12 Can a party be liable for infringement of a process patent by importing the product when the process is carried on outside the jurisdiction?

Yes, the infringement of a patent in Mexico includes the commercialisation and importation of a product derived from a patented process even if it is carried on outside Mexico.

1.13 Does the scope of protection of a patent claim extend to non-literal equivalents?

For many years, it has been interpreted that only literal infringement is recognised under the current IP Law. Infringement under the doctrine of equivalence is not expressly provided in the law; a broader interpretation of the patent law to explore the doctrine of equivalents.

Nevertheless, recently a Circuit Court in Mexico ruled on behalf of a pharmaceutical company, considering the peripheral interpretation method as a precedent, since it is not mandatory.

The Circuit Court considered that, according to the Mexican rules and regulations, the intention of the legislator to grant the claim a fundamental role in the definition of the subject matter of the patent is very clear, since this rule allows the State to protect the industrial property to a greater extent and to prevent actions affecting such exclusivity or that constitute unfair competition and, if applicable, eradicate this practice by means of the imposition of the corresponding sanctions.

Therefore, the level of a possible infringing action shall be decreed based on identification with the scope of protection of the claims that shall determine the existence of an eventual infringement due to identity or equivalence.

Although this ruling does not exactly implement the U.S. doctrine of equivalence, this is a positive start.

1.14 Can a defence of patent invalidity be raised, and if so, how? Are there restrictions on such a defence e.g. where there is a pending opposition?

According to the IP Law, a defendant can file an invalidity action against a patent as a counterclaim within the same statutory term to file the response to the infringement action. An independent invalidity action can be filed, but if it is not filed along with the brief of response, it may be decided separately from the infringement.

1.15 Other than lack of novelty and inventive step, what are the grounds for invalidity of a patent?

According to the IP Law, patents are valid unless proven otherwise. Thus the IP Law establishes several grounds upon which a patent can be invalidated:

  1. When it was granted in contravention of the provisions on requirements and conditions for the grant of patents or registrations of utility models and industrial designs.
  2. When it was granted in contravention of the provisions of the law in force at the time when the patent or registration was granted. The nullity action based on this section may not be based on a challenge of the legal representation of the applicant when prosecuting and obtaining a patent or a registration.
  3. When the application is abandoned during its prosecution.
  4. When granted by error or serious oversight, or when it is granted to someone not entitled to obtain it. The nullity action mentioned under (1) and (2) may be filed at any time; the actions under (3) and (4) must be filed within five years, counted from the date on which the publication of the patent or registration in the Gazette becomes effective.

1.16 Are infringement proceedings stayed pending resolution of validity in another court or the Patent Office?

Under certain applicable procedural rules, yes; however, the general rule is to decide linked cases' invalidity and infringement simultaneously.

1.17 What other grounds of defence can be raised in addition to non-infringement or invalidity?

The basis of this defence is that the proper interpretation of the patent claim does not catch the alleged infringing product or process.

Challenging the validity of patents

Under the IP Law, patents are valid until the contrary is proven.

One of the most common defences in patent litigation in Mexico is to attack the validity of the allegedly infringed patent. As the patent exists, an administrative resolution is required to declare its annulment. This defence must be alleged when replying to the plaintiff's claim, by means of a counterclaim. The IMPI will give notification of the counterclaim to the party who filed the original complaint. Both the infringement claim and the counterclaim should be resolved simultaneously to preclude the possibility of contradictory outcomes. The grounds for invalidating a patent are mentioned in question 1.15.

Fair or experimental use

This refers to the no-profit use of the patented invention.

Roche Bolar Exception

In the case of medicines, a party shall be entitled to apply for the registration of a product relating to a substance or active ingredient covered by a patent pertaining to someone else, if the application is filed within three years before the corresponding patent expires. This provision, supported by the "Roche Bolar Exception", would allow the applicant to start performing tests and experiments, in order to be ready to enter the market as soon as the patent has expired.

1.18 Are (i) preliminary, and (ii) final injunctions available, and if so, on what basis in each case? Is there a requirement for a bond?

The Mexican Patent and Trademark Law provides so-called provisional injunctions whereby the IMPI can take certain important measures against infringers. The requirements to get the injunctions are:

Proof of a valid right.

Presumption of the violation of the patent.

Postage of a bond to guarantee damages.

If the plaintiff chooses to ask the IMPI for a provisional injunction, a bond will be fixed to warrant possible damages to the defendant. This injunction is to be petitioned in writing and, within a term of 20 days from its execution, the plaintiff is required to file a formal written claim infringement. Failure to do so will cause the plaintiff to lose the bond in favour of the defendant. This party has the right to place a counter-bond to have the effects of the provisional injunction stopped. The defendant has the right to allege whatever he may deem pertinent with respect to the provisional injunctions within a term of 10 days from the day of the execution.

1.19 On what basis are damages or an account of profits assessed?

The IP Law contemplates a claim for damages and lost profit, in a civil law action. Damages and lost profit start accruing from the date on which the existence of an infringement can be proven. Even though claims for damages involve a lengthy proceeding in addition to the administrative infringement action, the wording of Mexican laws intends to provide fair compensation to the affected party.

The IP Law establishes that the award to the plaintiff in infringement cases cannot be less than 40% of the sale price to the public of each infringing product or service. However, to be allowed to claim damages, the affected title holder must have a final decision declaring the violation of the IP right.

1.20 How are orders of the court enforced (whether they be for an injunction, an award of damages or for any other relief)?

In the event of a second or subsequent offence, the fines previously imposed on the offender shall be doubled. A second or subsequent offence refers to every subsequent infringement of one and the same provision, committed within the two years following the date on which the ruling on the infringement was handed down.

Likewise, closures may be ordered in the decision that rules on the infringement, in addition to a fine or without a fine having been imposed. There shall be grounds for permanent closure when the establishment has been temporarily closed twice within a period of two years if, during said period, the infringement is repeated regardless of whether the location thereof has changed.

Criminal actions for patent infringement are available for reoffence cases. In accordance with the provisions of our IP Law, re-offence is found when a party infringes a patent after a final and beyond-shadow-of-appeal decision from the IMPI declaring the infringement. This re-offence is considered a felony that can be pursued ex officio or ex parte through the Federal District Attorney Office (PGR). This felony can be punished with up to six years of imprisonment and a fine.

1.21 What other form of relief can be obtained for patent infringement? Would the tribunal consider granting cross-border relief?

Other forms of relief are orders to stop the infringement activity, fines and closure of the facilities where the infringement activities take place. Costs and attorneys' fees can be recovered in a civil claim for damages and lost profits. This takes place after the IMPI has declared the administrative infringement. The civil Courts follow a specific scheme for reasonable attorneys' fees, regardless of whether this table reflects the actual fees charged.

Criminal sanctions in the event of recidivism are also contemplated in the IP Law.

1.22 How common is settlement of infringement proceedings prior to trial?

Is very unusual to settle cases before the decision is reached, because there are very few incentives for both parties to settle; that is because contingency derived from the infringement proceedings requires a final decision and this would be a long period of time, therefore neither plaintiff nor defendant would face the corresponding recovery/contingency of damages as an actual or imminent situation.

1.23 After what period is a claim for patent infringement time-barred?

The IMPI's current criterion is that the time limit for seeking a remedy is during the life term of the patent. Once the patent has expired, an action may not be brought for events that took place before the end of the life term (we consider that the IMPI is wrong in this consideration and it is under appeal). A defence of laches has not been tested before the Courts; therefore, legally speaking, a specific time limit exists in the IP Law to bring an infringement action during the life term of the patent.

However, there is a two-year limitation period to pursue a civil action for damages; therefore this statutory term to claim damages should be taken into consideration when looking at the timing to file infringing actions.

1.24 Is there a right of appeal from a first instance judgment, and if so, is it a right to contest all aspects of the judgment?

Appeals against the IMPI can be brought either before the specialised IP Division of the Federal Administrative Court, or before the IMPI itself through a review recourse. Decisions by either Court can be appealed in a final stage before Federal Circuit Courts.

1.25 What are the typical costs of proceedings to first instance judgment on (i) infringement, and (ii) validity? How much of such costs are recoverable from the losing party?

Government fees are minimal in the administration of patent infringements and there are no government costs in the subsequent appeal stages.

Costs and attorneys' fees may be recovered in a civil claim for damages and lost profits.

1.26 For jurisdictions within the European Union: What steps are being taken in your jurisdiction towards ratifying the Agreement on a Unified Patent Court, implementing the Unitary Patent Regulation (EU Regulation No. 1257/2012) and preparing for the unitary patent package? For jurisdictions outside of the European Union: Are there any mutual recognition of judgments arrangements relating to patents, whether formal or informal, that apply in your jurisdiction?

Needless to say, Mexico is not part of the European Union but, as a clarification, there is no binding mandatory provision in the Mexican legal system that would oblige the IMPI and the Mexican Courts to recognise foreign judgments related to patents; this applies for infringement and validity rulings abroad.

However, those decisions in jurisdiction abroad would be evaluated and can be persuasive as documentary evidence.

In some cases, if the factual pattern and evidence are very similar to the case under review in Mexico, the case ruled in another jurisdiction may have relevant weight when the case is decided in Mexico.

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