Patents 2025

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 IMPI'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 alternative dispute resolution before commencing court proceedings? Is mediation or arbitration a commonly used alternative to court proceedings?

The parties are not required to undertake alternative dispute resolution 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 must 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 Administrative Affairs (FCAA), 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 considered persuasive?

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 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.

1.13 What interest must a party have to bring (i) infringement, (ii) revocation, and (iii) declaratory proceedings?

1. Any patentee or licensee (unless expressly forbidden from doing so) has the right to prosecute a suit against a third party infringing their rights. A distributor may not bring a suit for infringement.
2. An accused infringer may counterclaim patent invalidity under formal or technical considerations, upon receiving the infringement suit before the IMPI or Civil Courts, but it is not possible to request an additional judicial ruling or declaration.
3. Cease-and-desist letters provide the required legal standing to initiate invalidity actions. If pertaining to a specific industrial or commercial activity (i.e. the pharmaceutical industry), to provide legal standing, this is subject to debate and the Courts are divided.
4. Amendments to the patent law allow anyone to request the IMPI to officially initiate the cancellation proceedings against patents.

1.14 If declarations are available, can they (i) address non-infringement, and/or (ii) claim coverage over a technical standard or hypothetical activity?

In Mexico, non-infringement declarations are not available.

1.15 Can a party be liable for infringement as a secondary (as opposed to primary) infringer? Can a party infringe by supplying part of, but not all of, the infringing product or process?

There is no specific provision in the IP Law relating to the doctrine of contributory infringement, inducement to infringe or any other indirect type of infringement. There is some room, however, to argue in favour of this doctrine; however, it has not been tested before the IMPI or the Courts. Actions may be brought against distributors of an infringing product, and provisional injunctions may be imposed on third parties to some extent.

1.16 Can a party be liable for infringement of a process patent by importing the product when the process is carried on outside the jurisdiction?

Yes, the infringement of a patent in Mexico includes the commercialisation and importation of a product derived from a patented process even if it is carried on outside Mexico.

1.17 Does the scope of protection of a patent claim extend to non-literal equivalents (a) in the context of challenges to validity, and (b) in relation to infringement?

For many years, it has been interpreted that only literal infringement is recognised under the current IP Law. Infringement under the doctrine of equivalents is not expressly provided in the law; a broader interpretation of the patent law to explore the doctrine of equivalents is required.

Nevertheless, recently a Circuit Court in Mexico ruled on behalf of a pharmaceutical company, considering the peripheral interpretation method as a precedent, but this is not mandatory.

The Circuit Court considered that, according to the Mexican rules and regulations, the intention of the legislator to grant the claim a fundamental role in the definition of the subject matter of the patent is very clear, since this rule allows the State to protect the industrial property to a greater extent and to prevent actions affecting such exclusivity or that constitute unfair competition and, if applicable, eradicate this practice by means of the imposition of the corresponding sanctions.

Therefore, the level of a possible infringing action shall be decreed based on the identification with the scope of protection of the claims that shall determine the existence of an eventual infringement due to identity or equivalence.

Although this ruling does not exactly implement the U.S. doctrine of equivalence, this is a positive start. Concerning challenges to validity, there is no precedent that establishes that the scope of protection of a patent is extended to nonliteral equivalents. Further, the law does not expressly recognise equivalents. However, from a broad interpretation of the patent law, it might be possible to raise an argument in favour of the applicability of the doctrine of equivalents in regard to invalidity actions.

1.18 Can a defence of patent invalidity be raised, and if so, how? Are there restrictions on such a defence, e.g. where there is a pending opposition? Are the issues of validity and infringement heard in the same proceedings or are they bifurcated?

Although the issues of infringement and validity are prosecuted in different filings with the IMPI, they are decided at the same time, especially if the invalidity action is filed as a counterclaim; specifically, if filed at the same time as the response to the infringement action. This administrative venue will continue.

The Civil Court allows patent owners to claim damages directly without waiting for an administrative decision. In this venue, in case an invalidity action is filed, the IMPI will be the only authority entitled to rule over it and the civil case will be stayed until a decision is reached.

1.19 Is it a defence to infringement by equivalence that the equivalent would have lacked novelty or inventive step over the prior art at the priority date of the patent (the "Formstein defence")?

As explained in question 1.17, the doctrine of equivalence is still developing in Mexico. The law does not expressly provide a defence to infringement by equivalence. However, the interpretation of the law provisions concerning patentability conditions and patentable subject matter enable the application of the "Formstein defence".

1.20 Other than lack of novelty and inventive step, what are the grounds for invalidity of a patent?

The IP Law, which was in force until November 5, 2020, provided grounds upon which a patent can be invalidated:

1. When it was granted in contravention of the provisions on requirements and conditions for the grant of patents or registrations of utility models and industrial designs.
2. When it was granted in contravention of the provisions of the law in force at the time when the patent or registration was granted. The nullity action based on this section may not be based on a challenge of the legal representation of the applicant when prosecuting and obtaining a patent or a registration.
3. When the application is abandoned during its prosecution.
4. When granted by error or serious oversight, or when it is granted to someone not entitled to obtain it.

The nullity actions mentioned under (1) and (2) may be filed at any time; the actions under (3) and (4) must be filed within five years and counted from the date on which the publication of the patent or registration in the Gazette becomes effective.

These causes of invalidation can be enforced against patents granted before November 5, 2020.

Now, in accordance with the IPPL, in force as of November 5, 2020, a patent can be only declared invalid:

1. when the subject matter is not considered an invention, or in case of non-patentable subject matter, lack of novelty, inventive step or industrial applicability;
2. due to lack of disclosure;
3. due to lack of support;
4. in case of divisional applications, when granted against new rules for them;
5. when broadening the scope of protection originally allowed during a correction proceeding;
6. due to mistakes recognising priority rights that otherwise could result in a lack of novelty or inventive step;
7. in double patenting cases; and
8. when granted to a person that was not entitled to apply for it.

None of these actions have statutes of limitations.

The first set of invalidity actions mentioned above will be applied only for patents granted before November 5, 2020. Any patent granted after that date may only be challenged using the second set of invalidity actions.

1.21 Are infringement proceedings stayed pending resolution of validity in another court or the Patent Office?

The general rule is to decide linked cases' invalidity and infringement simultaneously in the administrative venue. As to the new civil venue, please see question 1.1 above.

1.22 What other grounds of defence can be raised in addition to non-infringement or invalidity?

The basis of this defence is that the proper interpretation of the patent claim does not catch the alleged infringing product or process. The IP Law does not contemplate affirmative defences such as laches.

1.23 (a) Are preliminary injunctions available on (i) an ex parte basis, or (ii) an inter partes basis? In each case, what is the basis on which they are granted and is there a requirement for a bond? Is it possible to file protective letters with the court to protect against ex parte injunctions? (b) Are final injunctions available? (c) Is a public interest defence available to prevent the grant of injunctions where the infringed patent is for a life-saving drug or medical device?

Preliminary injunctions can be requested with the IMPI before the filing of the infringement action or at any time during prosecution. The proceeding is inaudita altera pars with no formal hearing as it is followed up in writing.

For the implementation of the preliminary injunctions, the IMPI will analyse the appearance of a prima facie case and the non-violation of public order provisions. The IMPI will also take into consideration the seriousness of the infringement and the nature of the preliminary injunction. For such analysis, the party moving forward with the injunction must:

• Prove that they own an exclusive right, and:
  • the potential existence of an infringement to such right;
  • that violation of such right is imminent;
  • the possibility of the right being irreparably damaged; or
  • a well-founded fear that the evidence may be destroyed or hidden.
• Post a bond to warrant the possible damages to the defendant. The amount of the bond will be fixed by the IMPI considering the evidence filed by the plaintiff, and the IMPI may request the plaintiff to extend the bond after the implementation of the injunctions.
• Provide the necessary information to identify the establishment goods subject to the injunction.

Preliminary injunctions are available on an ex parte basis. However, after the defendant is served with the injunctions, the alleged infringer is entitled to the lifting of preliminary injunctions by placing a counterbond, in which case the IMPI will analyse if the damages that the alleged infringer may suffer with the implementation of the injunctions are greater than the damages that the plaintiff may suffer. The defendant has the right to allege whatever he may deem pertinent with respect to the provisional injunctions within a term of 10 days from the day of the execution.

Once the case is resolved by the IMPI and infringement is found, definitive injunctions are imposed on the infringer. It is possible to file a constitutional trial (Amparo) before the Federal District Courts to try to stop the imposition of preliminary injunctions. However, the admissibility and likelihood of success of such an action has to be assessed on a case-by-case basis.

There is no specific remedy to prevent an injunction in the case of life-saving drugs or medical devices; however, compulsory licences are available in Mexico. Please see question 3.2 above.

1.24 Are damages or an account of profits assessed with the issues of infringement/validity or separately? On what basis are damages or an account of profits assessed? Are punitive/flagrancy damages available?

According to the IPPL, the awarding of damages for the violation of an IP right shall not be lower than 40% of the commercial value of the infringing goods, the profits of the infringer, the lost profits of the patentee or the fee that the infringer should have paid for a licence.

The awarding of damages is assessed through a special incidental proceeding with the IMPI after the infringement is declared. In the case of the Civil venue, the awarding of damages is assessed with the issues of the infringement.

In April 2018, the Mexican Supreme Court published a decision relating to the interpretation of the so-called 40% rule for calculating damages.

The decision expressly establishes that the validity and constitutionality of the provision establishing the 40% rule, and the rule itself, is not questioned by the Supreme Court, but the ruling establishes that the concept of damages is separate from the amount of the compensation and that the plaintiff is required to prove, on a case-by-case basis, evidence of actual harm, material and immaterial and a "causal nexus" between the infringing activity and the damages suffered by the IP owner.

Even though this ruling was issued during the validity of the former IP Law, we consider that it will be used by the IMPI and the Courts to analyse the quantification of damages in infringement actions filed under the IPPL.

1.25 How are orders of the court enforced (whether they be for an injunction, an award of damages or for any other relief)?

In the event of a second or subsequent offence, the fines previously imposed on the offender shall be doubled. A second or subsequent offence refers to every subsequent infringement to the same provision, after the first infringement is declared in a final resolution.

Likewise, closures may be ordered in the decision that rules on the infringement, in addition to a fine or without a fine having been imposed. There shall be grounds for permanent closure when the establishment has been temporarily closed twice within a period of two years if, during said period, the infringement is repeated regardless of whether the location thereof has changed.

1.26 What other form of relief can be obtained for patent infringement? Would the tribunal consider granting cross-border relief?

Other forms of relief include orders to stop the infringement activity, fines and closure of the facilities where the infringement activities take place. Costs and attorneys' fees can be recovered in a civil claim for damages and lost profits. This takes place after the IMPI has declared the administrative infringement. The Civil Courts follow a specific scheme for reasonable attorneys' fees, regardless of whether this table reflects the actual fees charged.

1.27 How common is settlement of infringement proceedings prior to trial?

It is very unusual to settle cases before the decision is reached, because there are very few incentives for both parties to settle; this is because contingency derived from the infringement proceedings requires a final decision which would require a long period of time. Therefore, neither plaintiff nor defendant would face the corresponding recovery/contingency of damages as an actual or imminent situation.

1.28 After what period is a claim for patent infringement time-barred?

The IMPI's current criterion is that the time limit for seeking a remedy is during the life term of the patent. Once the patent has expired, an action may not be brought for events that took place before the end of the life term. A defence of laches has not been tested before the Courts; therefore, legally speaking, a specific time limit exists in the IP Law to bring an infringement action during the life term of the patent.

However, there is a two-year limitation period to pursue a civil action for damages; therefore, this statutory term to claim damages should be taken into consideration when looking at the timing to file infringing actions.

1.29 Is there a right of appeal from a first-instance judgment, and if so, is it a right to contest all aspects of the judgment?

Appeals against the IMPI can be brought either before the specialised IP Division of the Federal Administrative Court, or before the IMPI itself through a review recourse. Decisions by either Court can be appealed in a final stage before Federal Circuit Courts.

Appeals against Civil Courts can be brought with the Superior Civil Tribunal and its decisions can be appealed before the Federal Civil Circuit Courts.

1.30 What effect does an appeal have on the award of: (i) an injunction; (ii) an enquiry as to damages or an account of profits; or (iii) an order that a patent be revoked?

As a matter of principle, when filing an appeal, the plaintiff can request the Federal Court for Administrative Affairs or a District Judge to suspend the effects of the resolution issued in the first instance.

In the case of injunctions, the plaintiff is able to request the courts to order the IMPI to refrain from collecting the fine imposed as a result of the infringement, but the plaintiff will not be allowed to sell or use the infringing goods.

If an appeal is filed against a resolution awarding damages, the decision of the appeal can either revoke the awarding of damages, modify the amount of damages awarded or order the replenishment of the procedure.

If a patent is invalidated by the IMPI, the appeal with the Federal Court for Administrative Affairs can have the effect of revoking the decision issued by the IMPI and recognise the validity of the patent.

1.31 Is an appeal by way of a review or a rehearing? Can new evidence be adduced on appeal?

The two options are available; if the resolution is challenged through a Review Recourse before the IMPI itself, the Head of the Litigation Department will review that it was issued accordingly with the provisions of the law, and consider the evidence in the file only.

If the resolution is challenged through an appeal before the Federal Court for Administrative Affairs, the parties are able to submit new evidence to prove that the resolution is illegal or that certain technical aspects of the patent were not duly analysed by the IMPI.

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