Answer ... The Mexican Industrial Property Law foresees several exceptional situations in which a patent right may not be effective, as follows:
- against a third party which is using the patent in the private or academic sphere for non-commercial purposes, such as scientific or technological research activities, as well as for testing or teaching purposes;
- against anyone that markets, acquires or uses the patented product or a product obtained by means of the patented process after such product has been lawfully placed on the market;
- against anyone that, prior to the filing date of the patent application or, where applicable, the recognised priority date, uses the patented process, manufactures the patented product or undertakes the necessary preparations for such use or manufacture;
- where the invention forms a part of a transportation vehicle manufactured in another country and in transit through the national territory;
- against a third party which, in the case of patents relating to living matter, makes use of the patented product as an initial source of variation or propagation to obtain other products, except where such use is made repeatedly; and
- against a third party which, in the case of patents relating to products consisting of living matter, uses, distributes or markets the patented products for purposes other than multiplication or propagation, after said products have been lawfully placed on the market by the patent owner or a licensee.
Answer ... Mexican law provides for three specific actions in the case of inequitable conduct. The first is a general infringement cause relating to unlawful competition in general; there are no patent-related precedents in this regard and it is interpreted case by case in light of the evidence. The second relates to deceitful patent marking or publicity which makes it appear that a product is covered by a patent when it is not, such as in the case of a standard. The third relates to the second: specifically, where a patent owner loses an infringement action through a definitive decision (beyond appeal) and subsequently sues for infringement of the same product.
Answer ... The Mexican Industrial Property Law states that authorities such as the Mexican Institute of Industrial Property (IMPI) must be impartial and must consider all facts and evidence provided by the parties in issuing its decision.
Moreover, authorities such as IMPI must follow due process and respect constitutional principles.
In addition, if IMPI’s decision is appealed, IMPI is obliged to send a copy of the official file to the federal courts, so that they can consider the records of the official file when issuing a decision on appeal.