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?
As of November 5, 2020, the Industrial Property Protection Law (IPPL) provides the possibility of enforcing patent rights either through an administrative infringement action before the Mexican Patent Office (IMPI) or a civil claim before the Civil Courts.
The traditional venue to enforce a patent is through administrative proceedings (infringement action) before the IMPI, which is not a Court of Law, but a federal administrative entity. The decisions of this agency on patent infringement cases can be appealed by any one of the intervening parties with a specialised IP Court. The decision issued by a specialised IP Court can be appealed before the Federal Circuit Courts in Mexico City; however, the case is turned randomly by a computer system. By territorial jurisdiction, IP matters are mainly decided in Mexico City.
In the administrative venue, it is possible to request the IMPI to quantify the damages caused by the infringer through a special incidental proceeding once the infringement is declared and before the appeals with the specialised IP Court and the Federal Circuit Courts are solved. Once the damages have been quantified by the IMPI, it is necessary to request a Civil Court to execute the Mexican Trademark Office (MTO)'s resolution. The civil venue allows the patentee to file a claim for damages directly with a Civil Court without the requirement of having a declaration of infringement issued by the IMPI. This means that it is no longer required to have a decision from the IMPI before submitting any civil action against an infringer for the payment of damages. The Civil Courts are now empowered to solve disputes in accordance with the IPPL, which means that the Civil Court will decide on the infringement and the awarding of damages at once.
The downside of the civil venue is that the Civil Courts are not empowered to solve invalidity actions against IP rights. Therefore, if an invalidity action is filed with the IMPI against the patent, the civil procedure will be suspended until the invalidity action is solved beyond the shadow of any appeal.
The filing of an infringement action before the IMPI or a Civil Court provides the defendant with legal standing to file an invalidity action against the patent being enforced. Therefore, the claimant may be influenced to choose the administrative venue to prevent the infringement action from being suspended.
1.2 Can the parties be required to undertake mediation before commencing court proceedings? Is mediation or arbitration a commonly used alternative to court proceedings?
The parties are not required to undertake mediation before an infringement action; however, conciliation may be requested by any party of an existing litigation with the IMPI and, if the counterparty accepts, two conciliation meetings will be held, in which the IMPI will try to "conciliate" the parties' positions, without expressing any possible decision about the merits of the case, to reach a settlement. If the parties reach a settlement, it needs to be formalised by the IMPI, and in such case, the settlement agreement will be enforceable. Conciliation proceedings will not suspend the litigation, which will continue normally.
This option has been poorly explored by patent infringement parties; however, we consider that it is a reasonable option that could benefit both parties and save time and costs. After a claim is filed in the civil venue, the Court will order a conciliation hearing where the parties may or may not reach a settlement. If the parties do not reach a settlement, the Court will continue with the prosecution of the claim.
1.3 Who is permitted to represent parties to a patent dispute in court?
At the first stage before the IMPI, there is no legal requirement to represent individuals or companies in patent disputes, other than the formalities of the corresponding Power of Attorney, but there is no registration at the Bar or certifications required to represent a party in patent litigation at the first stage of the administrative proceedings before the IMPI, namely: infringement; and invalidity actions.
However, at the further two appeal stages - the nullity trial before the Federal Court for Tax and Administrative Affairs (FCTAA), and the Amparo suit before the Circuit Courts - the lawyers representing the parties are required to be attorneys- at-law, qualified at a federally licensed law school. In the civil venue, it is required for the lawyers representing the parties to be attorneys-at-law, qualified at a federally licensed law school.
1.4 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?
In the administrative venue, there is a requirement to pay Government fees to commence a proceeding (patent infringement or invalidity) before the IMPI. The Government fees usually amount to approximately US$73. The proceeding before the IMPI usually lasts two years. This is the first stage; at least two additional stages are applicable. In the civil venue, Government fees are not required to be paid.
1.5 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 necessary for the verification of facts that may constitute a violation of one or more of the rights protected by the IPPL or the administrative declaration procedures.
When the owner concerned or the alleged infringer has submitted sufficient evidence to reasonably support its claims and has specified evidence relevant to the substantiation of its claims that are under the control of the opposing party, the IMPI may order the submission of such evidence during the proceedings and, where applicable, this authority should ensure the confidentiality of this information.
The Civil Courts are also empowered to order the submission of any evidence that may be essential to solve the controversy and are compelled to keep its confidentiality, if necessary.
1.6 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 or the Civil Court.
The applicable regulations do not facilitate a pre-trial stage; therefore, there is no evidence produced in such stage, but its preparation may be necessary.
1.7 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 follow the 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.
1.8 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, there can be two further stages of appeals before the Courts, lasting no less than three further years.
1.9 Is there any alternative shorter, flexible or streamlined procedure available? If so, what are the criteria for eligibility and what is the impact on procedure and overall timing to trial?
The Conciliation proceeding before the IMPI or the Civil Courts is a shorter and more streamlined procedure in resolving the controversy.
The civil action is a shorter alternative in comparison to the administrative procedure; however, it can be hampered if an invalidity action is filed as a counterclaim.
1.10 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 the shadow of appeal, and some information regarding the decision remains confidential, especially if the parties request this. The IMPI only publishes the conclusion of the judgment (depending on whether an infringement or invalidation was declared) in the IP Gazette, and not the reasoning of the judgment. The Civil Courts publish versions of their judgments, but delete confidential information, such as the name of the parties.
1.11 Are courts obliged to follow precedents from previous similar cases as a matter of binding or persuasive authority? Are decisions of any other jurisdictions of persuasive authority?
Only jurisprudence is mandatory for the Courts. In fact, as the IMPI is an administrative authority, it is not part of the judiciary, thus they are not bound to follow jurisprudence. Briefly speaking, jurisprudence is construed by five rulings issued unanimously by the same Court or by the Supreme Court en banc, but this jurisprudence is mandatory for lower Courts from the judiciary. The IMPI has stated that as it is an administrative authority, jurisprudence and judicial precedents are not compulsory for the lower courts when deciding the administrative proceedings, and are only persuasive. Legally speaking, the IMPI is right; however, as the lower courts are acting as Judges when deciding contentious cases, ethically and as a matter of principle, they should observe binding jurisprudence, as the higher appeal Courts will do so; otherwise, they would only be delaying the application of the binding jurisprudence. On the other hand, Civil Courts are bound to follow legal precedents. This will be an important issue in future civil actions, as mentioned in question 1.1 above.
1.12 Are there specialist judges or hearing officers, and if so, do they have a technical background?
The IMPI is considered the only first instance specialised authority that can solve patent enforcement proceedings in the first instance. As of November 5, 2020, the new IPPL allows Civil Judges, either federal or local, to decide on damages without exhausting the patent infringement proceeding, which forces them indirectly to rule on the infringement; these Judges are not specialised in IP Law.
In January 2009, a specialised IP Division at the Federal Administrative Courts began operating. This Division has jurisdiction to review all cases resolved by the IMPI and based on the IP Law, the Federal Copyright Act, the Federal Law of Plant Varieties and other IP-related 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 will have no technical background.
The last appeal stage is formed by the Federal Circuit Magistrates; although they are highly capable in legal issues, they do not need to have IP or technical backgrounds.
These two last authorities will not review the decision of the Civil Courts. In those cases, the Superior Civil Tribunal and finally the Federal Civil Circuit Courts will decide on the appeals filed, with neither of them having IP-specific technical backgrounds.
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Originally published by ICLG
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.