1 Legal framework
1.1 What are the sources of patent law in your jurisdiction?
Mexican patent law is contained in the Mexican Industrial Property Law and its complementary regulation, as follows:
- general provisions - included in Articles 9 to 26 of the Mexican Industrial Property Law and Article 22 of its complementary regulation;
- prosecution provisions - included in Articles 38 to 61 of the Mexican Industrial Property Law and Articles 24 to 49 of its complementary regulation;
- patent licensing and transfer of rights provisions - included in Articles 62 to 77 of the Mexican Industrial Property Law and Articles 50 to 52 of its complementary regulation; and
- patent litigation provisions - included in Articles 78 to 80, as well as in general litigation provisions under Articles 187 to 222 of the Mexican Industrial Property Law.
The Mexican Industrial Property Law and its complementary regulation are directly applicable throughout the entire Mexican territory; therefore, compliance is binding on all companies and authorities.
The Mexican Industrial Property Law is influenced by the main international patent treaties, such as:
- the Paris Convention (in force since 27 July 1976);
- the Agreement on Trade-Related Aspects of Intellectual Property Rights (in force since 1 January 2000);
- the Patent Cooperation Treaty (in force since 1 January 1995); and
- the Strasbourg Agreement Concerning the International Patent Classification (in force since 26 October 2001).
Moreover, there are several procedural laws that apply to the different stages and instances of patent litigation.
1.2 Who can register a patent?
A patent may be registered by any person or company, regardless of nationality or industry.
2.1 What rights are obtained when a patent is registered?
A Mexican patent confers on its owner an exclusive right for the industrial and commercial exploitation of the patented invention within the Mexican territory. In particular, a patent confers on its owner the exclusive right:
- to make, use, put on the market, sell or import the patented product;
- to apply the patented process; and
- to use, put on the market, sell or import products directly obtained from that process.
2.2 How can a patent owner enforce its rights?
In order to enforce its rights, the owner of a Mexican patent can file for provisional measures and/or commence an infringement action.
These measures are available only in case of violation of a Mexican patent that has already been granted.
2.3 For how long are patents enforceable?
Patent are enforceable for as long as they remain in force. A Mexican patent is valid for a non-renewable period of 20 years, starting from the filing date of the patent application.
3 Obtaining a patent
3.1 Which governing body controls the registration procedure?
The Mexican Institute of Industrial Property (IMPI).
3.2 What is the cost of registration?
Several factors affect the cost of filing a patent application in Mexico, including:
- the size of the application;
- the filing route followed (Patent Cooperation Treaty or Paris Convention); and
- the completeness of the file on filing.
This uncertainty has been exacerbated by a recent change in the government fee structure. Whereas previously a fixed fee was charged to register a patent, in April 2018 this structure changed to a fixed fee for the first 30 pages plus a further fee for each additional page.
Depending on the above factors, the average patent application should cost between $1,500 and $2,500 to file, including the costs of translation and compliance with formalities. Larger applications can cost twice this amount or even more, once translation costs and government fees are added up. Electronic form nucleotide or amino-acid sequences for biotechnology inventions do not incur additional costs regarding government fees. After publication, the average application will receive a maximum of four office actions - typically two to three - for which an overall budget of between $3,000 and $8,000 should be factored in. The translation costs of foreign prior art may also substantially increase the costs at this stage, if non-English prior art is cited.
3.3 What are the grounds to reject a patent application?
The general grounds of lack of novelty, lack of inventive step or lack of industrial applicability and ineligibility of subject matter, including therapeutic methods of treatment or diagnostics, business methods and the like.
3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?
Patent Prosecution Highway (PPH) agreements with several offices are in place and such agreements are continually being expanded by IMPI. A list of current PPH agreements can be found online at www.gob.mx/impi/acciones-y-programas/servicios-que-ofrece-el-impi-patentes-programa-del-procedimiento-acelerado-de-patentes-pph?state=published. Early publication of the patent application is also available. Substantive examination starts only after publication.
3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
Medical method claims, plant claims and computer-implemented invention claims directed to a method of doing business, mental acts, games and the like are not accepted. Case by case, however, claim drafting forms are accepted by IMPI, but these depend on the nature of the invention and the actual drafting of the specification of the application.
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)?
Currently, no such mechanisms are available in Mexico. However, under the new United States-Mexico-Canada Agreement, they should be implemented in the terms of such agreement if and when enacted.
3.7 What subject matter is patent eligible?
Mexican law defines an ‘invention' as "any human creation that allows transforming matter or energy for the benefit of mankind in satisfying their concrete needs".
There are general exceptions consistent with the Agreement on Trade-Related Aspects of Intellectual Property Rights, including:
- plant varieties and animal breeds;
- essentially biological processes (non-microbiological);
- methods for performing games;
- mental acts;
- business or mathematical methods; and
- obvious combinations of known inventions.
Combinations of known inventions and new uses of known inventions may be patentable if they have synergistic effects (ie, solve a problem that cannot be solved by using the inventions separately) or lead to a non-obvious industrial result or use.
3.8 If the patent office does not grant a patent, is an appeal available and to whom?
The denial of a patent can be appealed through the following channels:
- before IMPI, through a review recourse filed within 15 working days of the date on which the applicant is served notice of the decision, which will be studied and decided by the chief of the authority which issued the decision; or
- before the Federal Court for Administrative Affairs (FCAA), through a nullity claim filed within 30 working days of the date on which the applicant is served notice of the decision, which will be studied by the magistrates of the FCAA.
In practice, IMPI patent denials are appealed through nullity claims, since the review recourse is studied and decided by the chief of the authority that issued the denial and in most cases IMPI will confirm its own decisions.
The FCAA's decision can be subject to further and final appeal before the Federal Circuit Court; while IMPI's decision in a review recourse can be challenged first before the FCAA and finally before the Federal Circuit Court.
4 Validity/post-grant review and/or opposition procedures
4.1 Where can the validity of an issued patent be challenged?
The validity of a granted patent can be challenged before the Mexican Institute of Industrial Property (IMPI).
4.2 How can the validity of an issued patent be challenged?
Under the Mexican Industrial Property Law, the validity of a patent can be challenged through an invalidation action.
4.3 What are the grounds to invalidate an issued patent?
The Mexican Industrial Property Law sets out the following grounds to invalidate a patent:
- The patent was granted against the requirements and conditions stated in the Mexican Industrial Property Law (ie, lack of novelty, inventive step, industrial applicability or patentable subject matter);
- The patent was granted in violation of the provisions of the law in force at the time of grant;
- The patent application was abandoned in the course of its prosecution;or
- The patent was issued by serious error or negligence, or was granted to a person not entitled to it.
An action deriving from the first two grounds above may be brought at any time; however, an action deriving from the third and fourth grounds must be brought within five years of the date of publication of the granted patent in the IP Gazette.
4.4 What is the evidentiary standard to invalidate an issued patent?
The initial brief of an invalidation action should be accompanied by all evidence that supports the case.
All types of evidence are admissible, with the exception of testimonials and personal statements, unless this evidence is submitted in documentary form.
In most cases, in order to support the action, the infringer can offer as evidence a technical opinion or expert witness testimony, which endeavours to demonstrate why the patent in suit is not valid.
Moreover, IMPI may require a technical opinion from the examiners of its Patent Department in order to inform and support the corresponding decision.
4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?
On receiving a patent application which meets all the requirements, IMPI will publish the patent application in the IP Gazette. Once the application is published, any party affected by the patent application has two months in which to file an opposition against it.
4.6 Who can oppose a granted patent?
Any interested party that may be affected by the grant of the patent.
4.7 What are the timing requirements for filing an opposition or post-grant review petition?
Once the patent application is published in the IP Gazette, any interested third party has a two-month term to file an opposition, together with all evidence that demonstrates why the patent application should be rejected.
4.8 What are the grounds to file an opposition?
An opposition can be filed on the grounds that the patent was granted against the requirements and conditions stated in the Mexican Industrial Property Law (ie, lack of novelty, inventive step, industrial applicability or patentable subject matter).
4.9 What are the possible outcomes when an opposition is filed?
IMPI will consider the arguments and evidence provided by the opponent in order to conduct a substantive examination of the patent application. However, IMPI is not compelled to issue an official decision in the opposition procedure.
4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?
The opponent must file arguments and/or evidence to prove that the patent application falls under one or more of the prohibitions provided in the Mexican Industrial Property Law. Therefore, the burden of proof rests with the opponent. Nevertheless, IMPI does not issue a decision in the opposition procedure; instead, it can use the opponent's arguments and evidence to conduct its substantive examination and determine whether the patent application should be denied.
4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?
No, an appeal is not possible in opposition proceedings. The opponent must wait until the patent is granted in order to challenge its validity through an invalidation action.
5 Patent enforceability
5.1 What makes a patent unenforceable?
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.
5.2 What are the inequitable conduct standards?
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.
5.3 What duty of candour is required of the patent office?
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.
6 Patent infringement
6.1 What Constitutes Patent Infringement?
The following activities constitute patent infringement:
- manufacturing, developing, offering for sale or distributing goods that are protected by a patent without the owner's consent or without the appropriate licence;
- using a patented process without the owner's consent or without the appropriate licence; and
- offering for sale or bringing into circulation goods that are the result of the use of a patented process.
6.2 Does your jurisdiction apply the doctrine of equivalents?
No. In Mexico, the patent applicant is prevented from broadening the interpretation of the claims as originally filed. This limitation is expressly established in the Mexican Industrial Property Law, which provides that voluntary amendments may not contain additional material or claims that expand the scope of the patent beyond that contained in the original application considered as a whole.
Therefore, the doctrine of equivalents may be taken into account for the purposes of interpreting claim scope during a post-grant proceeding, as long as:
- the amendments are presented as evidence by the interested party;
- they are relevant for the authority before which the proceeding is being held to make its judgment; and
- they do not seek to broaden the interpretation of the patent as filed in Mexico and do not contravene what has been expressly stated in the prosecution history file of the Mexican patent; in any case, the information that has been put on record in the Mexican file will prevail.
6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?
No, the patent infringement must take place in Mexican territory in order for a party to be liable.
6.4 What are the standards for wilful infringement?
The Mexican Industrial Property Law provides that when someone offers for sale or distributes goods protected by a patent in the knowledge that they have been manufactured or developed without the consent of the patent owner or without the appropriate licence, such conduct will incur a penalty of double the fine for patent infringement. Wilful infringement is understood as infringement where the infringer was aware of the patent right.
6.5 Which parties can bring an infringement action?
The parties that can bring an infringement action are the patent owner and an authorised licensee which has been duly recorded as such with the Mexican Institute of Industrial Property (IMPI) and which has the capacity to enforce the patent rights.
6.6 How soon after learning of infringing activity must an infringement action be brought?
An infringement action may be brought at any time, as long as the patent is in force and the applicant has evidence to demonstrate that an infringement has occurred or is occurring.
6.7 What are the pleading standards to initiate a suit?
The following information must be provided to initiate a suit:
- the name of the plaintiff and its representative;
- the address for service and receipt of notifications;
- the name and address of the infringer;
- a description of the facts; and
- the legal grounds of the infringing conduct.
6.8 In which venues may a patent infringement action be brought?
A patent infringement action must be filed and prosecuted before IMPI. Decisions of IMPI regarding patent infringement may be appealed through a review recourse or before the FCAA and at second instance by the federal circuit courts.
6.9 What are the jurisdictional requirements for each venue?
At first instance, before IMPI, the jurisdictional requirement is to have a patent which is valid and in force. At second instance, the party filing the action must have been affected by IMPI's decision. At third instance, the constitutional rights of the party filing the action must have been affected by the FCAA's decision.
6.10 Who is the fact finder in an infringement action?
The fact finders in an infringement action are:
- the plaintiff, as it should file all available evidence along with its initial brief;
- IMPI through its inspectors (if an inspection is offered by the plaintiff); and
- technical experts or expert witness who are tasked with gathering evidence and analysing it to confirm whether the patent has been infringed.
6.11 Does the fact finder change based on venue?
No, the fact finders remain the same, as at further instances of appeal no new evidence is admitted; rather, the appeal courts merely analyse the legality or constitutionality of decisions issued based on the evidence previously filed or obtained in the infringement action.
6.12 What are the steps leading up to a trial?
When patent infringement is detected, the patent owner can choose between filing a judicial action immediately or exploring extrajudicial actions. The patent owner should first conduct an infringement analysis in order to confirm that the product or process in fact violates its IP rights. Once this has been confirmed, the patent owner can send a cease and desist letter in order to try to resolve the conflict amicably. If the alleged infringer does not cooperate, the patent owner can then file an infringement action with IMPI.
6.13 What remedies are available for patent infringement?
Where IMPI finds that patent infringement has occurred and thus confirms the violation of the patent owner's IP rights, IMPI can impose different penalties on the alleged infringer. In most cases, the penalty will consist of a fine of up 20,000 Units of Measure and Update (approximately $94,000).
Moreover, once the decision in the infringement action is beyond the shadow of appeal, the patent owner can also file a civil action in order to claim damages.
6.14 Is an appeal available and what are the grounds to appeal?
Yes, there are two possibilities to appeal a decision rendered in an infringement action. The first is by filing for a review recourse before the head of the IP Enforcement Department of IMPI within 15 working days of being served notice of the decision, alleging illegality or lack of due process in the infringement proceeding. This option is recommended only if there has been an evident error or mistake in the proceeding; the first administrative decision may be revoked, modified or confirmed accordingly.
The party affected by the review recourse decision - or the first administrative decision, if a review recourse has not been pursued - may further file a nullity claim with the FCAA within 30 working days of being served notice of the relevant decision.
The FCAA is an independent jurisdictional administrative court which will review any violations of due process and/or the merits of the case, analysing only the causes for appeal expressed by the appellant in its brief of appeal. The nullity claim is prosecuted as a full trial and therefore all parties - that is, the plaintiff and the defendant in the administrative proceeding, as well as IMPI itself - are entitled to appear before the FCAA to file allegations and evidence.
In the nullity claim, the plaintiff can also request preventive measures in order to suspend execution of IMPI's decision (ie, the imposition of a fine or other sanctions ordered by IMPI).
The FCAA will either confirm the administrative decision(s) or declare it null, ordering IMPI to issue a new decision following guidelines established by the FCAA. Usually IMPI takes about four months to comply with the FCAA's ruling.
The FCAA's decision may be appealed through a constitutional action on the grounds that it violates fundamental rights recognised in the Mexican Federal Constitution or in international treaties which Mexico has signed and ratified. Normally, the appellant claims violations of the right to legality, due process or judicial protection.
This type of action is known as an ‘amparo' appeal and is prosecuted before a federal circuit court, by a panel of three magistrates. Once the appeal has been admitted, the interested parties are entitled to file arguments supporting the constitutionality of the FCAA's decision.
If the federal circuit court decides in favour of the appellant, it will order the FCAA to revoke its decision and to issue a new decision following guidelines established by the federal circuit court. Otherwise, it will deny the appeal and the FCAA's decision will become final.
7.1 Is discovery available during litigation?
No, discovery is not available. The plaintiff must file, along with the infringement action brief, all available evidence that demonstrates the infringement; while the defendant must file, along with its brief of response, all available evidence to refute the grounds of infringement.
The exception to the above is supervening evidence that was not available to the plaintiff or defendant when it filed its initial brief.
7.2 What kinds of discovery are available?
As mentioned, discovery is not available in patent infringement litigation; however, if the plaintiff conducts a site inspection of the infringer's premises, the results of this inspection may be assessed by IMPI in the infringement action.
7.3 Are there any limitations to the amount of discovery allowed?
As mentioned, discovery is not available in patent infringement litigation.
8 Claim construction
8.1 When during a patent infringement action are claim terms defined by the tribunal?
Infringement actions are heard and decided by the Mexican Institute of Industrial Property (IMPI). IMPI will issue a technical report, which is prepared internally by the patents group, in which the claims are construed and compared with the allegedly infringing product based on the evidence provided by the parties. In other instances, the claims are analysed and construed once the parties and IMPI have provided all evidence for the case.
8.2 What is the legal standard used to define claim terms?
Claims are construed based on the literal drafting of the claims, but interpreted in the context of the specification and drawings. Under this approach, the law establishes that "the rights conferred by a patent shall be defined by the granted claims and the specification and drawings shall serve to interpret them only". This criterion has been confirmed in court decisions which are not binding precedent, but merely a reference. It is thus possible to use self-defined terms to interpret the claims.
8.3 What evidence does the tribunal consider in defining claim terms?
The tribunal must use only the literal drafting of the claims and the specification and drawings, as necessary, to clarify the terms in the claims.
9.1 Are injunctions available?
Yes, the Mexican Industrial Property Law provides for preliminary injunctions.
9.2 What is the standard to obtain an injunction?
Under the Mexican Industrial Property Law, the party seeking a preliminary injunction must demonstrate the following:
- ownership of an IP right duly granted by the Mexican Institute of Industrial Property (IMPI);
- the violation of this IP right by a third party;
- the provision of security (by filing a bond) to compensate for potential damage to the alleged infringer that the injunction might cause; and
- compliance with the marking requirement.
9.3 Are damages available?
Yes, the Mexican Industrial Property Law provides for a patent owner to seek damages against an infringer.
9.4 What types of damages are available?
9.5 What is the standard to obtain certain types of injunctions?
The patent owner must demonstrate before a civil court that:
- IMPI has issued a decision declaring the infringement of an IP right, which is final and beyond the shadow of appeal; and
- the infringing conduct has caused it damage.
The Mexican Industrial Property Law provides that the damages claimed as a consequence of the violation of an IP right may be no less than 40% of the sale price of each infringing product sold by the infringer. However, this amount may be higher if the plaintiff can demonstrate that the quantum of the damage caused by the infringement was higher.
9.6 Is it possible to increase or multiply damages due to a party's actions?
The amount of damages awarded will depend on the civil court's assessment of the evidence submitted in the civil action. The standard basis of 40% can be increased depending on the severity of the damage caused and proved.
9.7 Are sanctions available?
9.8 What kinds of sanctions are available?
Infringements are administratively punished by fines of up to 20,000 Units of Measure and Update (approximately $94,000), administrative arrest and the temporary or permanent closure of the infringer's business.
9.9 Can a party obtain attorneys' fees?
In an infringement action before IMPI, it is not possible to request the payment of attorneys' fees.
However, in a civil action before a civil court for recovery damages, it is possible to request them from the infringer.
9.10 What is the standard to obtain attorneys' fees?
If the civil court orders the infringer to pay attorneys' fees, this will cover only the attorneys' fees for the civil action, as calculated and limited in accordance with the schedule of fees of the civil court.
10.1 What patent rights can a party obtain through a licence?
All rights of the patent owner, either in full or partially.
10.2 What limits can a patent owner impose on a licence?
Any limits under the principle of freedom to contract. However, to register the licence with the Mexican Institute of Industrial Property so that it is effective against third parties, the duration of the licence agreement must not be longer than that of the licensed patent.
11.1 Are there any limits on patent protection due to antitrust laws?
This question must be answered on a case-by-case basis, considering all merits of the case; but as a general response, antitrust laws cannot limit patent protection, as patents are rights which are expressly recognised under Mexican law as a kind of temporary monopoly that cannot be challenged under other laws (eg, antitrust regulations).
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.