ARTICLE
25 March 2024

Mexico Patent Litigation 2024

O
OLIVARES

Contributor

Our mission is to provide innovative solutions and highly specialized legal advice for clients facing the most complicated legal and business challenges in Mexico. OLIVARES is continuously at the forefront of new practice areas concerning copyright, litigation, regulatory, anti-counterfeiting, plant varieties, domain names, digital rights, and internet-related matters, and the firm has been responsible for precedent-setting decisions in patents, copyrights, and trademarks. Our firm is committed to developing the strongest group of legal professionals to manage the level of complexity and interdisciplinary orientation that clients require. During the first decade of the 21st century, the team successfully led efforts to reshape IP laws and change regulatory authorizations procedures in Mexico, not only through thought leadership and lobbying efforts, but the firm has also won several landmark and precedent-setting cases at the Mexican Federal and Supreme Courts levels, including in constitutional matters.
Patent litigation in Mexico is taken before the Mexican Institute of Industrial Property (in the foregoing IMPI). IMPI has enough authority for ruling on infringement...
Mexico Intellectual Property
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1. What is the forum for the conduct of patent litigation?

Patent litigation in Mexico is taken before the Mexican Institute of Industrial Property (in the foregoing IMPI). IMPI has enough authority for ruling on infringement and invalidity cases regarding patent cases and also for awarding damages in separate proceeding, once infringement decision is final and beyond shadow of appeal. IMPI has also all the technical people and patent specialist needed to resolve the cases.

Final decisions of IMPI for both infringement and invalidity cases, can be appealed before the Specialized Court for Intellectual Property Matters of Federal Court for Administrative Affairs (in the foregoing FCAA). Before this Court, parties may request to rule again on the merits of the cases and argue due process of law. This Court, however, does not have technical judges.

The decisions of this Court can be finally appealed before a Federal Circuit Court in which only due process of law and unconstitutional arguments can be submitted. Federal Circuit Courts does not have technical people.

For purposes of damages, patent owner may also file civil claim for patent infringement before Federal or local Civil Courts in Mexico. However, nor the local neither Federal Civil Courts has technical people to rule on infringement cases.

This venue was introduced with the new IP Law enactment on November 5, 2020. However, the Federal Law for Industrial Property Protection (in the foregoing IPL), also provides that any action that is filed on these Courts will be stayed if a counterclaim invalidity action is filed with IMPI. IMPI has sole jurisdiction to rule on patent invalidity issues.

2. What is the typical timeline and form of first instance patent litigation proceedings?

The prosecution of an infringement claim before IMPI is rather simple and it begins with the filing of a formal written claim.

Once IMPI admits the claim, it serves notice to the defendant giving a term to answer of 10 days; the defendant is to answer the claim alleging whatever it is deemed pertinent, and thereafter IMPI opens a common term of ten working days for the parties to submit allegations briefs decides on the merits of the case. Both the plaintiff and the defendant must produce the supporting evidence at the time of filing the claim or answering it, respectively.

To prove the infringement, the plaintiff is entitled to file any kind evidence available except confessional and testimonial evidence. The most commonly used evidence to help prove an infringement is the visit of inspection to the premises of the infringer and expert witness testimonies analyzing the infringer device. The visit of inspection is conducted by IMPI's inspectors, and it usually takes place at the moment of serving notice of the claim and/or the order imposing a preliminary injunction on the defendant.

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 IMPI the issuance of an order addressed to the defendant requesting this documentation, pointing out exactly what documents is pursuing and the importance and relevance of them to the infringement case. Open discovery is not available in Mexico. In case of lack of compliance with this order, a fine will be imposed to defendant and the facts that plaintiff was seeking to prove with the documentation requested will be considered proved.

Expert Witness testimonies are render in writing in accordance with questionaries submitted by the parties. Each party is entitled to appoint its own Expert and IMPI will appoint a third expert, which is usually a patent examiner, which will review party's testimonies and issue a third one for the final decision.

The prosecution of a patent infringement action before IMPI takes between a year and a half and two years. The appeal before the FCTAA takes approximately the same time and the final appeal before a Circuit Court takes 8 months approximately.

Invalidity cases are litigated with almost the same rules; however, defendant has one month to respond to the invalidity action and the narrow discovery described above is not available. Invalidity actions filed as counterclaim of an infringement action are litigated separately, however IMPI will issue a decision of the invalidity claim before ruling on the infringement case. As mentioned in 1. above, in case of a civil claim for damages, an invalidity claim will stay said litigation until a final decision is reached.

Timeframes for invalidity actions are same than for infringement cases.

3. Can interim and final decisions in patent cases be appealed?

Interim decisions from IMPI can be appealed through the so-called Amparo Law Suit with a Federal District Court. For these purposes, it is necessary to demonstrate that the challenged decision causes an irreparable harm to appellant that could affect the outcome of the final decision. The District Court ruling may finally appeal with a Federal Circuit Court.

Final decisions from IMPI may be appealed by a review recourse before IMPI itself (which and optative appeal), or before the Specialized IP Court of the Federal Administrative Courts. The decision of this Court may be appealed before a Federal Circuit Court.

In Civil litigations, there are many different remedied for interim acts, that vary depending on the nature of the contested act. Final decisions may be appealed before the Superior Civil Court with the Court of choice is a state court or before a Circuit Appellant Court in case of choosing the federal venue. In both cases a final appeal can be taken before a Circuit Court.

4. Which acts constitute direct patent infringement?

Patentee holds the right to carry the invention by excluding others from making, using or selling. From a legal stand point, a patent holder is entitled to work its own patented invention as long as it does not invade patents pertaining to third parties. Broadly speaking, infringement triggers then when third parties perform any of said activities. Infringement can be imputed to direct infringers only as the Law does not recognize the theory of contributory infringement.

In other words, only persons or entities making, using or selling the patented invention can be liable of infringement, but not whoever helps them to perform the infringing activity. Infringement could anyway be found when there is more than one infringer, held equally liable or responsible for having participated in the infringement activity in a direct form.

5. Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?

The theory of contributory infringement is not recognized as a legal rule under the IPL. However, it could be prosecuted under unfair competition rules provided by the IPL and Paris Convention.

6. How is the scope of protection of patent claims construed?

In Mexico, the protection conferred by a patent is determined by the granted claims, with the description and drawings being useful to interpret them. The scope of the rights conferred by a patent cannot be interpreted beyond the protected subject matter and the provisions of the law.

Infringement in Mexico can only be literal; therefore an accused product or process will require reading upon the scope of the claims, this makes finding infringement hard in some cases, but it really depends on the number of elements included in the claims. Contributory infringement and inducement to infringe are not recognized by our law.

Although the doctrine of equivalents is not expressly recognized by the Mexican Industrial Property Law, there has been a recent development. A Federal Circuit Court issued a decision acknowledging the application of the peripheral interpretation method. While this case is nonbinding and does not establish a legal precedent, it signifies an initial step towards recognizing the necessity of implementing the doctrine of equivalents in Mexico. This development could pave the way for a more nuanced approach to patent infringement analysis in the future.

However, such decision was issued by interpreting the provisions of the former IPL, while new IPL has a more detailed set of provisions as to how claims must be interpreted, as described above.

7. What are the key defences to patent infringement?

A. Claims of Non Infringement.

Among the defenses that an alleged infringer may raise against claims of patent infringement are:

  • That defendant is not making, using or selling the patented product or process.
  • The product or process does not fall within the scope of the patent.
  • The alleged infringer can show that is acting under the scope of a license (whether expressed or implied license).
  • The activity by the alleged infringer falls into one or more of the exceptions to patent rights (ie: non commercial experimental use, exhaustion of rights, -which would probably include the international exhaustion of rights-, prior use, in transit foreign vehicle exception, and use of patented microorganisms for the reproduction or preparation of others which are new).

B. Claims of Annulment.

An accused infringer may assert that the patent which is the subject matter of the infringement action is void and hence subject to invalidity. This argument can be brought by means of an invalidity action, generally filed as a counterclaim, under the grounds explained in the next answer.

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Originally Published by The Legal 500

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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