Mexico: Patent Litigation Law Review - Second Edition

I OVERVIEW

Mexico is one of the leading countries in Latin America, and has an increasing amount of patent litigation. The Mexican market is important for many multinational organisations, because it has an estimated gross domestic product of around US$2.224 trillion.

Patent litigation is handled at first stage by the Mexican Institute of Industrial Property (IMPI), which is also in charge of granting patents. The appeal stage before the Federal Court for Administrative Affairs is handle by a specialised bench on intellectual property (IP) matters. The judges only handle IP matters, but they do not need to have technical backgrounds. Circuit courts handle the final appeal stage.

Most patent litigation is related to pharmaceutical products and, recently, biotech products. The Mexican Industrial Property Law (IP Law) is pro-patents, as are the IMPI and courts. Generic efforts are usually against the patent system; fortunately, they have not had a strong influence.

Patent litigation is supposed to be abbreviated process, but in practice it is a lengthy process as a result of Mexico's civil law system. Strong expertise and key evidence is needed to reach a positive outcome. Damages can be pursed after reaching an infringement ruling beyond the appeal stage. Recently, few patent infringement cases have reached that point. Patent case law is still under construction in Mexico.

II TYPES OF PATENT

Products and processes can be the subject of patent protection under the IP Law and its regulations, provided that they meet patentability standards – mainly novelty, inventiveness and utility.

Utility models are also the subject of protection under the IP Law, provided that they meet novelty and utility standards.

The IMPI grants patent protection. Where pharmaceutical products, compounds are concerned, formulations, uses and manufacturing processes of medicines are the subject of patent protection.

Article 19 of the IP Law excludes medical procedures from being the subject matter of an invention. However, a patent can be obtained for a therapeutic method by drafting the claims in the EPC2000 or Swiss-style format.

i Obtaining protection

Applications must be filed before the IMPI. The average time for obtaining a Mexican patent varies, depending on the field of technology. Generally, it takes from three to six years to obtain a patent.

The IMPI conducts a formal examination of the documentation and may order clarifications or further details, or that an omission be remedied. If so, an official communication requests the outstanding documents (that is, a power of attorney and an assignment of rights). This communication is usually issued four to six months after filing.

The abstract is published in the Official Gazette. This step normally occurs 18 months after the filing of the priority claim or, if no priority is claimed, 18 months from the filing date.

Examination on the merits of the invention begins automatically after the corresponding fees are paid, concurrent with filing the application.

An official action is issued between two and three years after the filing date either requesting amendments to the claims (for example, due to disapproval or clarification regarding novelty), or granting the protection sought and requesting payment of the final IMPI fees together with the payment of the first five annuities.

Maintenance fees are due every five years until the end of the patent term.

ii Patent Prosecution Highway (PPH) programmes

The IMPI has implemented PPH pilot programmes to accept examinations by foreign patent offices, such as the United States Patent and Trademark Office, the European Patent Office, the Japanese Patent Office, the National Intellectual Property Administration of China, Pacific Alliance (Colombia, Chile and Peru), the Spain Patent Office, the Singapore Patent Office, the Canada Patent Office, the Portugal Office, the Austria Patent Office and the Korean Intellectual Property Office. In general, PPH is a mechanism that enables applicants to request accelerated substantive examination, based on the search and examination results from an office of first filing, who have already determined one or more claims to be allowable.

The request for examination under PPH should be filed after the publication of the patent application in the Industrial Property Gazette and prior to the issuance of the first official action.

III PROCEDURE IN PATENT ENFORCEMENT AND INVALIDITY ACTIONS

The only venue to enforce and to contest validity of a patent is through administrative proceedings (an infringement action or an invalidity action) before the IMPI. The IMPI is an administrative authority that has exclusive jurisdiction to hear all patent infringement and invalidity cases at first stage. There is no judge or jury participation in patent infringement actions.

i Evidence

Proving patent infringement in Mexico is a difficult task, because the jurisdiction follows a strict civil law system that has formalistic rules for both evidence and proceedings.

The IP Law does not regulate the manner in which an invalidity or infringement is to be proven. The Federal Code of Civil Procedure is applied supplementary to the IP Law.

Expert testimony can be filed as documentary evidence or as a report given during the proceeding. The IMPI also requires a technical report from its Patents Department to determine the grounds of an invalidity or infringement action.

The IMPI rejects depositions and testimonial evidence unless they are included with an affidavit. Affidavits will not be considered a primary source of evidence. Mexican law does not allow live testimony or cross-examination of witnesses. However, in accordance with recently case law issued by the federal courts, it has been ordered to IMPI to admit this evidence for isolated cases. Actually, it is under discussion as a part of draft of the reform to the IP Law to permit the this type of evidence.

ii Obtaining evidence from defendant and third parties

In Mexico, there is no pretrial stage or discovery. However, the plaintiff in an infringement action is entitled to request from the defendant all the documentation necessary to help to prove the infringement that should be in the defendant's possession. The plaintiff must request from the IMPI the issuance of an order addressed to the defendant requesting this documentation and data, pointing out exactly what documents he or she is pursuing, and the importance and relevance of them to the prosecution of the infringement case. In case of lack of compliance with this order, a fine will be imposed on the defendant and the facts that plaintiff were seeking to prove with the documentation requested will be considered proved.

iii Structure of the main proceeding

Basically, the Mexican enforcement of a patent starts with an infringement claim filed before the IMPI. The claim is served on the alleged infringer, who then has 10 working days to respond and, if applicable, bring a counterclaim. That response is then served on the claimant to refute it. All the evidence is analysed, and finally a decision is issued.

At first sight, the proceeding seems abbreviated. In practice, depending on the evidence submitted by parties and the backlog at the IMPI, the proceeding becomes lengthy. A decision by the IMPI usually takes between 18 and 24 months. However, there are cases where the decision has taken up to five years.

iv Defences

An accused infringer may assert that the patent that is the subject matter of the infringement action is void, and hence subject to nullity.

This defence must be alleged when answering the plaintiff's claim, but by means of a counterclaim. The IMPI will give notification of the counterclaim to the party that filed the original complaint. Both the infringement claim and the counterclaim should be decided simultaneously to preclude the possibility of contradictory resolutions.

Separately, the IP law expressly states that a patent cannot be enforced against a third party manufacturing the patented product or using the patented process for scientific or technological investigation, without commercial purpose.

Article 167 bis of the Health Law Regulations contains a Bolar-type exception, allowing for an application for authorisation of a follow-on drug within three years for chemicals and eight years in advance for biologics of the expiration of the corresponding patent, in order to perform the necessary studies and experiments to obtain the authorisation.

A prior use defence would be also available as a cause for non-infringement. Additionally, the Mexican patent system operates on a first-to-file basis.

No laches defence is recognised by the IP Law.

v Preliminary injunctions

The provisional injunctions established by the IP Law are essentially:

1. ordering the recall or impeding circulation of the infringing merchandise;
2. ordering the following materials to be withdrawn from circulation:
   
   
   • illegally manufactured or used articles;
   • articles, packaging, wrapping, stationery, advertising material and other similar items that infringe upon any of the rights protected by law;
   • advertisements, signs, posters, stationery and other similar articles that infringe any of the rights protected by law; and
   • utensils or instruments destined for or used in the manufacture, production or obtainment of any of the concepts indicated in the above bullet points;
3. immediately prohibiting the marketing or use of the products with which any rights protected by the law are violated;
4. ordering the attachment of the commodities of the products (pursuant to Articles 211– 212 bis (2) of the IP Law);
5. ordering the alleged transgressor or third parties to suspend or cease all acts that constitute a violation to the provisions of the law; and
6. ordering a suspension of service or the closure of the establishment when the measures indicated above are insufficient to prevent or avoid the violation of rights protected by the law.

The same obligation is imposed on producers, manufacturers, importers and their distributors, who will be responsible for immediately recalling the products that are found in trade.

vi Requirements for getting preliminary injunctions

In order to grant preliminary injunctions, the IMPI requires the petitioner to comply with the following:

1. provide evidence showing that he or she is the holder of the right, proving any one of the following hypotheses:
   
   
   • the existence of a violation of his or her right;
   • that the violation of his or her right is imminent;
   • the existence of the possibility of suffering an irreparable damage; and
   • the existence of a grounded fear that the evidence may be destroyed, concealed, lost or altered;
2. post a bond in a sufficient amount to respond to harm and damages that may be caused to the person against whom the measure has been requested. (The main problem with this is that the law and regulations are silent about the rules and parameters for the IMPI to fix the amount of the bonds and eventual counterbonds to lift the preliminary injunctions.) (The full discretion of the IMPI in this regard has caused certain inequities that have provoked the continuation of the infringing activity rather than discouraging the infringer due to the contingency); and
3. provide necessary information to identify the products, services or establishments with which or where the violation of industrial property rights is committed.

The IMPI will take into account the seriousness of the infringement and the nature of the requested measure to determine the amount of the bond and the counter-bond.

vii Structure of the preliminary injunctions proceeding

If a plaintiff chooses to ask the IMPI for a preliminary injunction, a bond will be fixed to warrant possible damages to the defendant. This injunction should be petitioned in writing, and within a term of 20 days from its execution the plaintiff is required to file a formal written claim of infringement. Failure to do so will cause the plaintiff to lose the bond in favour of the defendant.

Once the injunctions are imposed, the IMPI may request to broaden the amount of the bond, if necessary. The main problem with setting this amount is that the law and the regulations are silent about the rules and parameters for the IMPI to fix such amounts. The IMPI's faculty of discretion in this regard has caused certain inequities that have also caused the continuance of the infringing activity rather than discouraging infringers.

Injunctions must be requested by means of a writ. The defendant has the right to place a counter-bond to stop the effects of the provisional injunction, which amount will have to be 40 per cent higher than the amount of the bond posted by the plaintiff. Defendants have the right to allege whatever they deem pertinent with respect to the provisional injunctions within a term of 10 days from the date of execution.

viii Costs

IMPI fees are very low, and there are no government fees for appeals before the courts.

ix Invalidity actions and post-grant amendments

The IP Law states that amendments or changes in the text or drawings of a letter patent may be allowed only to correct any obvious or formal errors, or to narrow the scope of the claims. The IP Law is silent about post-grant amendments for those patents under litigation, and there are no court precedents in this regard to rely on.

Olivares has pioneered a method of handling cases where a post-grant amendment petition is submitted as a strategy in response to an invalidity action. This strategy has achieved positive outcomes, but those cases wherein the strategy has been implemented are pending decisions on the merits, so the strategy is still being tested.

To read this Chapter in full, please click here.

Originally published by Law Business Research Ltd.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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