1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

The main sources of Mexican patent law include:

  • the Mexican Constitution of 1917; and
  • the Federal Law for the Protection of Industrial Property of 2020, which provides concise regulations on how to protect inventions, as well as the formal and substantial requirements that an applicant must fulfil in order to file an application with the Mexican Institute of Industrial Property (IMPI).

Mexico is also a signatory to a variety of international treaties, such as:

  • the Paris Convention for the Protection of Industrial Property (1883);
  • the Patent Cooperation Treaty (PCT) (1970);
  • the Hague Agreement (1925);
  • the Biodiversity Convention (1992); and
  • the Nagoya Protocol related to Traditional Knowledge and Access to Genetic Resources (2010).

In addition, Mexico is a party to free trade agreements with various countries, such as Costa Rica, Colombia, Bolivia, Nicaragua, Chile, Israel, Uruguay, Panama, El Salvador, Guatemala, the United States, the European Union and Japan. These agreements include provisions related to IP rights, which enhance the IP system in Mexico – especially in connection with patents and their enforcement.

1.2 Who can register a patent?

Any person, individual or corporation can file a patent application in Mexico, acting by themselves or through a legal representative; they may also authorise other natural persons to hear and receive notifications and documents from IMPI. Although it is possible for applicants to organise the documents required for filing themselves, it is normal for applicants to engage patent attorneys.

2 Rights

2.1 What rights are obtained when a patent is registered?

The exclusive right of temporary exploitation of the patented invention confers on the owner the prerogative to prevent others from manufacturing, using, selling, offering for sale or importing the patented invention without authorisation.

If the subject matter of the patent is a product, the patent confers the right to prevent other persons from manufacturing, using, selling, offering for sale or importing the patented product without authorisation. If the subject matter of the patent is a process, the patent confers the right to prevent others from using that process and from using, selling, offering for sale or importing products obtained directly from that process without authorisation. The scope of the rights conferred by a patent may not be interpreted beyond the protected matter and the provisions of the law (Article 55 of the Federal Law for the Protection of Industrial Property).

2.2 How can a patent owner enforce its rights?

A patent holder may enforce its rights through an administrative declaration of infringement, which may be enforced and initiated by the Mexican Institute of Industrial Property (IMPI) either ex officio or at the request of anyone with a proven legal interest.

Patent infringement and validity proceedings are administrative actions that must be pursued before IMPI. The decision can be appealed to the Administrative Court of Justice (ACJ), and thereafter to the collegiate courts. Before issuing its resolution, IMPI will conduct an analysis considering the seriousness of the infringement and nature of the potential measures, with the aim of avoiding violations of the patent holder's rights. In its judgment, IMPI may order:

  • withdrawal of the infringing merchandise from circulation;
  • prohibition of its commercialisation or use;
  • suspension of imports, exports or transit of goods, or provision of a service;
  • closure of a specific establishment; and
  • payment of damages to the patent holder.

IMPI will protect all novel qualities of a patent in any field of technology if they are strictly and explicitly claimed in the initial application through the patent specification and claims, in order to limit the protection of the claimed subject matter (Articles 45(V) and 48 of the Federal Law for the Protection of Industrial Property).

2.3 For how long are patents enforceable?

The patent will be effective for a non-renewable period of 20 years, counted from the recognised filing date of the application, and will be subject to the payment of fees corresponding to each annuity.

Industrial exploitation must start within three years of the date of grant or four years of the filing date, whichever is the later. Failure to exploit the patent exposes the patent to compulsory licensing. The patent may lapse two years after the first compulsory licence has been requested, provided that:

  • no industrial exploitation of the patent has been made; or
  • a legal or economic excuse exists for not either the patent holder or a licensee not exploiting the patent.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

A patent application can be filed with the Mexican Institute of Industrial Property (IMPI). IMPI will examine the patent application in order to determine the patentability of the claimed invention and will then grant or reject the same. Likewise, patent applications can be submitted under an international treaty.

3.2 What is the cost of registration?

The cost of obtaining a patent in Mexico is difficult to establish with precision, since a variety of factors will influence this cost, such as:

  • the number of pages;
  • the treaty under which the application is filed; and
  • translations.

Depending on such factors, the average patent application should cost between $4,000 and $6,000 to file, including the costs of translation and fulfilment with requirements.

3.3 What are the grounds to reject a patent application?

According to the Federal Law for the Protection of Industrial Property, inventions in all fields of technology that are novel, the result of an inventive step and industrially applicable, in the terms of the law, will be patentable. However, certain subject matter is excluded, such as:

  • discoveries, scientific theories or their principles;
  • mathematical methods;
  • literary or artistic works and other aesthetic creations;
  • schemes, plans, rules and methods for the exercise of intellectual activities, for games or for economic-commercial activities, or to conduct business;
  • computer programs;
  • the forms of presenting information;
  • biological and genetic material, as it is found in nature; and
  • the juxtaposition of known inventions or combination of known products, except in case of their combination or fusion that cannot function separately, or where their qualities or functions are modified to obtain an industrial result or a use not obvious to a person skilled in the art.

Likewise, the following will not be considered inventions:

  • inventions whose commercial exploitation would be contrary to public order or contravene any legal provision, including those whose exploitation must be prevented to protect the health or life of people or animals or plants, or to avoid serious damage to the environment;
  • plant varieties and animal breeds, except in the case of micro-organisms; and
  • essentially biological procedures for obtaining plants or animals and the products resulting from these procedures (Articles 47 and 49 of the Federal Law for the Protection of Industrial Property).

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

IMPI has the Patent Prosecution Highway (PPH) as an option to speed up the substantive examination of patent applications filed in Mexico once the application has passed the corresponding formal examination. IMPI has signed this agreement with the main patent offices around the world. Thus, applicants may request accelerated substantive examination through a prescribed procedure including the submission of relevant documents on an application which is filed with IMPI and which satisfies the corresponding requirements.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

Patent applications cannot be allowed by IMPI for inventions comprising certain claims, such as those related to:

  • methods of surgical or therapeutic treatment;
  • computer programs; and
  • methods of doing business.

Restrictions also apply in relation to biotechnological inventions such as cloning procedures of human beings and their products.

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

According to the Federal Law for the Protection of Industrial Property, if there are unreasonable delays in the processing of a patent which are directly attributable to IMPI, and the period between the date of filing the application and grant of the patent is more than five years as a result, at the request of the interested party it may be granted a complementary certificate to adjust its validity. The validity of this complementary certificate may not exceed five years (Articles 126 and 127 of the Federal Law for the Protection of Industrial Property).

3.7 What subject matter is patent eligible?

The Federal Law for the Protection of Industrial Property defines an ‘invention' as any human creation that allows the transformation of matter or energy that exists in nature, for its use by humans to satisfy their specific needs. Likewise, inventions in all fields of technology that are novel, the result of an inventive step and industrially applicable, under the provisions of the law will be patentable (Article 45, sections I and 46 of the Federal Law for the Protection of Industrial Property).

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

When prosecuting a patent application before IMPI, and in relation to an act or resolution issued by IMPI that puts an end to each step or instance, the applicant may file a corresponding motion for review with IMPI within 15 days, which will be resolved by the hierarchical superior of the relevant examiner (Article 85 of the Federal Law of Administrative Procedure).

The filing of a motion for review may suspend execution of the challenged act where expressly requested by the appellant and on the assumption that the motion is admitted by IMPI.

If the applicant does not agree with the conclusions and determinations of the hierarchical superior on the motion for review, it may proceed to file a corresponding annulment action with the Intellectual Property Chamber of the Federal Court of Administrative Justice within 30 business days (Article 13 of the Federal Law of Contentious Administrative Procedure). This may be resolved by recognising the validity of the challenged act or declaring it null and void so that the challenged authority may reinstate the procedure or issue a new resolution.

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

The Mexican Institute of Industrial Property (IMPI) is the administrative authority responsible for industrial property matters, which has the authority to conduct nullity proceedings:

  • ex officio;
  • at the request of a party; or
  • at the request of the Federal Public Prosecutor's Office where the federation has an interest in the matter (Articles 5(II) and 159 of the Federal Law for the Protection of Industrial Property).

4.2 How can the validity of an issued patent be challenged?

Under Mexican patent law, the validity of an issued patent can be challenged through a declaration of nullity, which seeks to retroactively revoke the effects of the patent to the filing date of the respective application (Article 159 of the Federal Law for the Protection of Industrial Property).

4.3 What are the grounds to invalidate an issued patent?

The grounds on which to invalidate an issued patent according to Article 154 of the Federal Law for the Protection of Industrial Property are as follows:

  • The protected subject matter:
    • is not considered an invention;
    • is not patentable; or
    • lacks novelty, inventive step or industrial application;
  • The application does not disclose the invention in a sufficiently clear and complete way, so that it can be performed by a technician of the art;
  • The claims exceed the disclosure contained in the application, as it was initially filed before IMPI;
  • The application is the result of a divisional application and includes claims that are not different from the parent application;
  • As a result of the rectification of formal errors in the title of the patent or registration, or due to a limitation proceeding in which the proposed changes to the granted claims would extend the protection conferred by the patent, the subject matter protected by the patent has been broadened;
  • Due to mistake or inadvertence, a right of priority has been recognised and the novelty or inventive step of the subject matter protected by the patent has thus been unduly determined;
  • The patent was granted in contravention of the principle against double patenting; or
  • The patent was granted to a person who did not have the right to obtain it (ie, not the inventor, designer, creator or assignee).

4.4 What is the evidentiary standard to invalidate an issued patent?

In administrative declaration of nullity proceedings, all kinds of evidence will be admitted, except for testimonial and confessional evidence, unless this is contained in a documentary evidence.

Otherwise, any evidence will be accepted if it shows, for example, that:

  • the patented invention should not have been considered as an ‘invention';
  • the invention is not patentable or lacks novelty, inventive step or industrial application, in terms of the Federal Law for the Protection of Industrial Property;
  • the application does not disclose the invention in a sufficiently clear and complete manner;
  • the claims exceed the disclosure contained in the application;
  • due to a rectification or limitation procedure, the subject matter protected by the patent has been extended; or
  • due to mistake or inadvertence, a claimed priority has been recognised and the novelty or inventive step of the protected subject matter through the patent has thus been unduly determined.

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

The Mexican patent legislation does not provide for opposition. However, it does provide for a procedure through which IMPI may receive information from third parties on whether an application complies with the patentability requirements for potential grant, giving IMPI the discretion to decide whether to rule on the third party's request (Article 109 of the Federal Law for the Protection of Industrial Property).

4.6 Who can oppose a granted patent?

The Mexican patent legislation does not provide for opposition. However, any party may submit information on whether an application complies with the patentability requirements (Article 109 of the Federal Law for the Protection of Industrial Property).

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

IMPI may receive information from third parties on whether an application complies with the patentability requirements for potential grant within two months of publication of the patent application. IMPI may consider this information as technical support documentation in the substantive examination process, although it is not obliged to decide on the scope of the informant's request and the latter will not have the status of an interested party.

Accordingly, IMPI will provide the applicant with the information and documents filed by the third party, so that the applicant can file arguments against this information where this is considered necessary (Article 109 of the Federal Law for the Protection of Industrial Property).

4.8 What are the grounds to file an opposition?

The Mexican patent legislation does not provide for opposition.

4.9 What are the possible outcomes when an opposition is filed?

The Mexican patent legislation does not provide for opposition.

4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?

The Mexican patent legislation does not provide for opposition, and the mechanism described in question 4.5 to 4.7 cannot be considered an opposition process, since the law is clear in not granting the status of interested party to anyone that submits information in a given patent application process, as well as in giving discretion to decide whether to rule on the third party's request (Article 109 of the Federal Law for the Protection of Industrial Property).

4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?

The Mexican patent legislation does not provide for opposition; and where information is submitted on whether an application complies with the patentability requirements, IMPI is not obliged to rule on its scope, so there may be no act or resolution issued by IMPI to appeal.

By contrast, a declaration of nullity may be appealed:

  • within 15 working days before IMPI by any party that does not agree with the resolution on the administrative declaration of nullity; or
  • within 30 working days before the Intellectual Property Chamber by filing the respective annulment action.

5 Patent enforceability

5.1 What makes a patent unenforceable?

The rights conferred by a patent shall have no effect against:

  • a third party that carries out purely experimental, testing or education scientific or technological research activities, in the private or academic sphere and for non-commercial purposes, and that for this purpose manufactures, imports or uses the patented invention;
  • a third party that uses, manufactures, offers for sale or imports a product with a valid patent, exclusively to conduct tests, generate information and undertake experimental production necessary for the obtaining sanitary registration of medicines for human health;
  • any party that markets, acquires or uses the patented invention after it has been lawfully introduced into commerce in Mexico;
  • any person that has initiated the use or manufacture of the invention or the necessary preparations to carry out its use or manufacture, or that uses or manufactures the patented invention, prior to the filing date of the patent application or, if it is the case, the date of recognised priority;
  • any party that uses the invention in transport vehicles from other countries while they are in transit in the national territory (Article 57 of the Federal Law for the Protection of Industrial Property).

5.2 What are the inequitable conduct standards?

There are no inequitable conduct standards in Mexico.

5.3 What duty of candour is required of the patent office?

The provisions of the Federal Law for the Protection of Industrial Property are of public order and general observance. Its administrative application corresponds to the Federal Executive through the Mexican Institute of Industrial Property (IMPI). The law aims to:

  • protect industrial property through the regulation and grant of patents; and
  • prevent acts that infringe industrial property or that constitute unfair competition in relation to industrial property, and establish sanctions and penalties in this regard

6 Patent infringement

6.1 What Constitutes Patent Infringement?

According to Article 386 of the Federal Law for the Protection of Industrial Property, a patent holder can sue for patent infringement on any of the following grounds:

  • Goods covered by a patent, registered utility model or industrial design are manufactured or produced without the consent of the owner or without the appropriate licence;
  • Products are made to appear as though they are patented when they are not (eg, because the patent has expired or has been declared null and void);
  • Goods covered by a patent are offered for sale or put into circulation without the consent of the owner or without the appropriate licence;
  • Patented processes are used without the authorisation of the patent holder;
  • Products that are protected by the Federal Law for the Protection of Industrial Property are imported, sold, used or distributed without the authorisation of the patent holder or the appropriate licence; or
  • Information that is considered a trade secret is improperly appropriated without the authorisation of the person exercising legal control or its authorised user, in order to obtain a competitive market advantage.

6.2 Does your jurisdiction apply the doctrine of equivalents?

Mexico does not apply the doctrine of equivalents; in fact, the general rule that applies in the field is the literal application of the law or legal content.

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

The infringement must take place within the Mexican territory. If the infringement involves a product or invention patented in Mexico, traders or suppliers involved in the infringement will be obliged to refrain from selling or providing the infringing products in Mexico as of the date of notification of the administrative declaration resolution. This also applies to producers, manufacturers, importers and distributors, which will be responsible for immediately recovering products that have already been placed on the market.

6.4 What are the standards for wilful infringement?

Mexican law and court precedents do not formally distinguish between different types of infringement. The former Industrial Property Law provided that the following activities constituted wilful infringement:

  • offering for sale or putting into circulation goods covered by a patent or by a registered utility model or industrial design in the knowledge that they were manufactured or produced without the consent of the patent holder or registration or without the appropriate licence; or
  • offering for sale or putting into circulation goods that are the result of the use of patented processes, knowing that this has been used without the authorisation of the holder of the patent or licence holder.

In the new provisions of the Federal Law for the Protection of Industrial Property, the expression "knowing that they were …" was deleted from the text of Article 386 (Sections VI and VII).

6.5 Which parties can bring an infringement action?

The procedure for an administrative declaration of infringement may be enforced and initiated by the IMPI either ex officio or at the request of anyone that proves a legal interest.

6.6 How soon after learning of infringing activity must an infringement action be brought?

The Federal Law for the Protection of Industrial Property does not establish a timeframe within which an action must be brought after learning of an infringing activity. Such an action may be filed by the patent holder once a patent has been granted against third parties that, prior to grant but following publication of the application in the IMPI Gazette, exploited the patented invention without its consent. This is because publication is considered notification of the applicant's right to claim the invention as its own and to prevent third parties from using and profiting from such creation.

6.7 What are the pleading standards to initiate a suit?

In order to initiate a suit, the patent holder usually pleads infringement of its IP rights by a third party which is selling, promoting or making a wrongful use of its invention without its consent. Additionally, it may state that it was unable to reach an agreement with the potential infringer if, prior to initiating a suit, the patent holder sent a cease-and-desist letter highlighting the existence of the duly granted patent and a preliminary analysis of the infringement, and requesting the infringer to stop the illegal use or exploitation of the invention.

6.8 In which venues may a patent infringement action be brought?

A patent infringement action may be brought before IMPI. In order to determine what measures to apply, IMPI will conduct a weighted analysis of the provisions on good faith and the non-contravention of public order, and will consider whether the general interest is affected. It will consider the seriousness of the infringement and the nature of the measures requested (Article 345 of the Federal Law for the Protection of Industrial Property).

6.9 What are the jurisdictional requirements for each venue?

In Mexico, and in accordance with the Federal Law for the Protection of Industrial Property, IMPI is the authority before which administrative infringement proceedings are initiated. In that respect, the Federal Law for the Protection of Industrial Property does not establish jurisdictional requirements or venues to carry out infringement proceedings, since the sole authority that can carry out such proceedings is IMPI.

6.10 Who is the fact finder in an infringement action?

During an infringement action, IMPI will serve as fact finder and impartial examiner to appraise the facts underlying each particular case. Through its examiners, IMPI will evaluate the facts presented, as well as the evidence offered by the parties, to finally determine whether there is sufficient reason to find an infringement of rights.

6.11 Does the fact finder change based on venue?

No, this does not change based on venue since in all infringement proceedings must be carried out before IMPI, which will thus serve as fact finder.

6.12 What are the steps leading up to a trial?

In practice, prior to initiating a patent infringement action before IMPI, the patent holder will send the infringer a cease-and-desist letter, highlighting the existence of the duly granted patent and a preliminary analysis of the infringement, and requesting the infringer to stop the illegal use or exploitation of the invention. In some cases, the patent holder may claim the payment of damages.

If the infringer does not respond or if the patent holder cannot reach agreement with it, the patent holder will commence infringement proceedings before IMPI.

6.13 What remedies are available for patent infringement?

After evaluating the circumstances presented in each particular case, IMPI may order remedies such as injunctions, damages and sanctions to prevent the further infringement of the patent holder's rights.

6.14 Is an appeal available and what are the grounds to appeal?

In relation to an act or resolution issued by IMPI that puts an end to each step or instance, the applicant may file a corresponding motion for review with IMPI within 15 days, which will be resolved by the hierarchical superior of the relevant examiner.

The filing of a motion for review may suspend execution of the challenged act where expressly requested by the appellant and on the assumption that the motion is admitted by IMPI.

If the applicant does not agree with the conclusions and determinations of the hierarchical superior on the motion for review, it may proceed to file a corresponding annulment action with the Intellectual Property Chamber of the Federal Court of Administrative Justice within 30 business days (Article 13 of the Federal Law of Contentious Administrative Procedure). This may be resolved by recognising the validity of the challenged act or declaring it null and void so that the challenged authority may reinstate the procedure or issue a new resolution.

7 Discovery

7.1 Is discovery available during litigation?

In Mexico, once a request for a declaration of infringement has been admitted, IMPI will send a simple copy of the request and the accompanying documents to the affected owner or the alleged infringer, so that it may state its rights and present the corresponding evidence (Article 336 of the Federal Law for the Protection of Industrial Property).

The infringer will be notified of the claim so that, within 15 working days of the respective notification, it may state what is in its best interests and submit all evidence it deems appropriate. Once the evidence has been presented and taking into account the statements submitted, IMPI will determine the damages caused and the amount of the corresponding indemnification (Article 398 of the Federal Law for the Protection of Industrial Property).

7.2 What kinds of discovery are available?

Mexican law does not provide for different types of discovery, but rather establishes that the parties may provide any evidence that they consider relevant and important to prove their claims.

In administrative declaration proceedings, all kinds of evidence are admissible, except for testimonial and confessional evidence, unless the testimony or confession is contained in documentary evidence. Invoices issued and inventories drawn up by a licensee or sub-licensee which are related to the facts that are the subject matter of the evidence will likewise be given probative value.

7.3 Are there any limitations to the amount of discovery allowed?

The Federal Law for the Protection of Industrial Property imposes no limitations on the amount of discovery allowed in an infringement proceeding; it only states that IMPI may avail itself of such means of proof as it deems necessary.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

In Mexico, only literal infringement is considered infringement; hence, the claim construction depends upon the approved claims. The claims are interpreted on the basis of:

  • the specification;
  • examples;
  • drawings, if applicable;
  • sequences (where nucleotides or amino acids are involved);
  • the deposit of biological material, if any; and
  • the provisions of the Federal Law for the Protection of Industrial Property, the accompanying regulations and the Rules for Filing Applications in Mexico pursuant to the dispositions of the law (ie, Articles 36, 55 and 116 of the law).

8.2 What is the legal standard used to define claim terms?

Patent claims must describe an invention that is new, useful and non-obvious in view of the public knowledge and pre-existing inventions, known as the ‘prior art'. In this respect, Mexico sustains an absolute novelty requirement, in which a disclosure anywhere in the world represents valid prior art against a patent application. Therefore, patent examiners and IP courts in Mexico will compare the existing prior art against the claims of any pending or granted application, to determine whether such invention constitutes a new development on the prior art or might constitute an IP infringement.

Therefore, prior art is the basis for claim construction in Mexico. Applicants must be clear and concise when drafting the subject matter contained in the claims for which the protection is sought, in terms of its essential technical characteristics. The claims must further be supported by the description, drawings, sequence listing or deposit of biological material for interpretation; and must be drafted in acknowledgement of the existing prior art anywhere in the world.

8.3 What evidence does the tribunal consider in defining claim terms?

The existence of infringement is determined on the basis of the claim scope. To this end, in order to identify the subject matter of a patent within an infringement proceeding, the Mexican courts will conduct an analysis of the patent considering the opinion of a person skilled in the art, who would interpret the vocabulary of the invention and extract its meaning based on the technical context of the claims without considering their ordinary and customary meaning.

If, after analysing the claim scope, the court concludes that the relevant activity contains all elements of the prior art, it will be understood to constitute identical exploitation and thus will qualify as patent infringement. However, if after analysing the content of the claims the court concludes that the relevant activity cannot be considered identical to that stated in the prior art, an analysis of the invention in terms of the equivalence of the means may be conducted.

This begins with a comparison of the subject matter of the patent and the relevant prior art. During this analysis, the court must consider the following points:

  • the elements contained within the claim scope of the analysed patent;
  • the date on which the possible existence of the infringement is examined;
  • evidence of substitution, based on its own knowledge and on the elements that make up the prior art;
  • the use of embodiments or elements which, although they are substitutes for the invention and could be interpreted as falling within the claim scope of the patent, are excluded because they fall within the subject matter of the prior art; and
  • innovations and developments subsequent to the date of application or priority of the allegedly infringed patent.

9 Remedies

9.1 Are injunctions available?

During infringement proceedings initiated before IMPI, the applicant may request IMPI to carry out an inspection at places where products are manufactured, stored, transported, sold or marketed, or where services are provided, in order to examine the products, the conditions for the provision of services and the documents relating to the activity in question, whether in physical establishments or on digital platforms (Article 358 of the Federal Law for the Protection of Industrial Property).

Additionally, the Federal Law for the Protection of Industrial Property provides for several injunctions in case of infringement, which may be adopted by IMPI.

9.2 What is the standard to obtain an injunction?

Where an inspection is carried out at an establishment as part of the infringement proceedings, if the inspector verifies the commission of an act of infraction foreseen in the Federal Law for the Protection of Industrial Property, he or she will secure, as a precautionary measure, the allegedly infringing products making an inventory of the secured goods which will be recorded in the inspection report (Article 362 of the Federal Law for the Protection of Industrial Property).

The insured merchandise must be always at the disposal of IMPI. If IMPI requires the merchandise and this is not provided accordingly, the depositary will be subject to the sanctions set out in Article 388, Section I of the Federal Law for the Protection of Industrial Property, without prejudice to the corresponding civil or criminal actions, unless there is a justified cause.

In securing the goods, the owner of the establishment in which the infringing products are located may be designated as depositary if it is a fixed establishment. If this is not the case, the person or institution indicated by the applicant will be designated as depositary; or the products may be stored at IMPI (Article 365 of the Federal Law for the Protection of Industrial Property).

9.3 Are damages available?

According to Article 5 of the Federal Law for the Protection of Industrial Property, IMPI has the authority to order the payment of damages and losses caused to the patent holder in proceedings for an administrative declaration of infringement, and to quantify the amount of compensation to be paid.

In this respect, Article 56 of the Federal Law for the Protection of Industrial Property provides that once a patent has been granted, the patent holder may claim the payment of damages from third parties which, prior to grant but following publication of the application in the IMPI Gazette, exploited the patented invention without its consent.

Additionally, if the patent holder seeks to claim damages through civil, commercial or punitive actions, it must:

  • have applied the indications and legends set out in Articles 44, 89, 236 and 302 of the Federal Law for the Protection of Industrial Property to the products, containers or packaging of its product; or
  • otherwise have stated or made public knowledge that the products or services are protected by an industrial property right (Article 409 of the Federal Law for the Protection of Industrial Property).

9.4 What types of damages are available?

Once IMPI has issued an enforceable declaration of administrative infringement, the patent holder may present its claim for damages and losses caused, as well as the corresponding quantification thereof. To this end, it can present all evidence which it deems pertinent.

In determining the amount of compensation to be paid, account will be taken of:

  • the date on which the infringement was established; and
  • at the option of the patent holder, any indicator of legitimate value presented by it.

These administrative penalties are imposed in addition to appropriate indemnification for material damages, which in no case will be less than 40% of the public sale price of each infringing product.

9.5 What is the standard to obtain certain types of injunctions?

According to Article 344 of the Federal Law for the Protection of Industrial Property, in proceedings concerning acts of infringement and alleged violations of any rights protected by the Federal Law for the Protection of Industrial Property, IMPI may order any of the following measures:

  • the withdrawal from circulation of the infringing goods;
  • an immediate prohibition on the commercialisation or use of infringing goods;
  • the securing of assets;
  • the suspension of the free circulation of any merchandise destined for import, export, transit or any customs regime which violates the provisions of the Federal Law for the Protection of Industrial Property, in accordance with the applicable legal ordinances on customs matters;
  • the suspension, blockage or removal of infringing content, or the cessation of infringing acts, carried out through any virtual, digital or electronic means, known or unknown; and
  • the suspension of the provision of the service or the closure of an establishment where the measures listed above are not sufficient to prevent or avoid the violation of the protected rights.

If the infringing product or service is already on the market, merchants or service providers must abstain from its sale or provision as of the date on which they are notified of the resolution. This also applies to producers, manufacturers, importers and their distributors, who will be responsible for immediately recovering the products from the market.

9.6 Is it possible to increase or multiply damages due to a party's actions?

If the patent holder seeks to increase or multiply damages, it must file evidence demonstrating that the damages suffered are greater than 40%. The action to claim damages must be filed within two years of the date on which IMPI issued its declaration of patent infringement.

9.7 Are sanctions available?

Sanctions are available and are applied by IMPI according to the seriousness of the conduct or omission incurred by the infringer. There is no specific priority in terms of their imposition, and they are additional to the corresponding compensation for damages or reparation of the material damage to those affected.

In determining the applicable sanctions, IMPI will consider:

  • whether the infringement was intentional;
  • the economic conditions of the infringer;
  • the seriousness of the infringement in the relevant trade; and
  • the damage caused to those directly affected (Article 392 of the Federal Law for the Protection of Industrial Property).

Where the infringer has carried out the infringing act or omission while knowing of the existence of the patent holder's rights, the amount imposed should be twice the fine imposed for the infringing conduct.

9.8 What kinds of sanctions are available?

According to Article 388 of the Federal Law for the Protection of Industrial Property, administrative infractions may be sanctioned with:

  • a fine of up to 250,000 units of measure and update (UMAs) in effect at the time the infraction is committed for each type of conduct that occurs;
  • an additional fine of up to 1,000 UMAs for each day during which the infraction persists;
  • temporary closure for up to 90 days; and
  • definitive closure.

9.9 Can a party obtain attorneys' fees?

A party may obtain attorneys' fees if this is stipulated in the claim for damages filed before a civil court. However, infringement proceedings must be brought separately and before IMPI.

9.10 What is the standard to obtain attorneys' fees?

According to the Federal Court of Civil Procedure, the party that loses, in whole or in part, with respect to the claims of the opposing party must reimburse its opponent for the costs of the proceedings.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

According to Article 144 of the Federal Law for the Protection of Industrial Property, unless otherwise stipulated in the licence agreement, a licensee will have the power to exercise all legal actions to protect the patent as if it were itself the patent holder. Exploitation of the patent by a licensee will be deemed to have been carried out by the patent holder (Article 145 of the Federal Law for the Protection of Industrial Property), except in the case of compulsory licences.

That said, a licensee may exercise all rights as if it were the patent holder itself, except where otherwise stipulated in the licence agreement.

10.2 What limits can a patent owner impose on a licence?

This will depend entirely on the parties at the time of negotiating and signing the licence agreement. They can adapt it to their needs, since the law does not restrict the conditions that a patent holder can impose on a licensee.

For example, an exclusive or non-exclusive licensee can sue for patent infringement, unless there is a restriction to this effect in the agreement. In practice, however, the patent holder normally retains the right to sue third parties.

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

The Federal Economic Competition Law (FECL) aims to:

  • promote, protect and guarantee free market access and economic competition; and
  • prevent, investigate, combat, prosecute effectively, severely punish and eliminate monopolies, monopolistic practices, unlawful concentrations, barriers to entry and to economic competition, and other restrictions to the efficient operation of markets.

In this regard, Article 7 of the FECL states that the privileges granted for a certain period to authors and artists regarding the production of their works, and those granted to inventors and individuals that perfect an invention for the exclusive use of their inventions or improvements, do not constitute monopolies. Thus, antitrust laws do not limit the scope of a patent right; but they could restrict the patent holder's ability to enforce the corresponding rights.

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.