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?
In Mexico, the problem of selecting the competent judge or choosing jurisdiction is minimal. Indeed, the only venue to enforce a patent is through administrative proceedings (infringement action) before the Mexican Patent Office (IMPI), which is not a Court of Law, but a Federal administrative entity. IP enforcement is Federal law; no state law is available. However, the decisions of this agency on patent infringement cases can be appealed by any one of the intervening parties, thus bringing the matter up before a single specialised IP Court. The decision issued by the IP Specialised Court could be appealed before 20 Federal Circuit Courts at Mexico City; however, the case is turned randomly by a computer system. By territorial jurisdiction, IP matters are mainly decided in Mexico City.
1.2 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?
Traditionally, the Mexican Courts do not address the existence of patent infringement; as in accordance with the Mexican Industrial Property Law (LIP), such cases must be filed and prosecuted with the IMPI. Therefore, arguments should be filed in writing and following applicable procedural rules to commence the procedure. Government fees to commence a proceeding (patent infringement or invalidity) before the IMPI are around USD 73.
The proceeding before the IMPI usually lasts 12 to 18 months. This is the first stage; at least two additional stages are available.
1.3 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 as necessary for the verification of facts that may constitute a violation of one or more of the rights protected by this Act or the administrative declaration procedures.
When the owner concerned or the alleged infringer has submitted sufficient evidence to reasonably have access to support his claims, and has specified evidence relevant to the substantiation of its claims that is under the control of the opposing party, the IMPI may order the presentation of such evidence before commencing proceedings and, where applicable, this authority should ensure the conditions for the protection of confidential information.
1.4 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. The applicable Regulations do not contemplate a pre-trial stage; therefore, there is no evidence produced in such a stage, but its preparation may be necessary.
1.5 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, following 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 that parties cannot change their pleaded arguments, unless there are supervening or unknown facts.
1.6 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, the two further stages of appeals before Courts, lasting no fewer than three more years, are expected.
1.7 Are there specialist judges or hearing officers, and if so, do they have a technical background?
The IMPI is considered the only authority to solve patent enforcement proceedings in the first instance.
In January 2009, a specialised IP Division at the Federal Court of Tax and Administrative Affairs (FCTAA) began operating. This Division has jurisdiction to review all cases based on the LIP, 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 have no technical background. The last appeal stage is formed by Federal Circuit Magistrates, although they are highly capable in legal issues and they do not therefore need to have IP or technical backgrounds.
1.8 What interest must a party have to bring (i) infringement, (ii) revocation, and (iii) declaratory proceedings?
I) Any patentee or licensee (unless expressly forbidden from doing so) has the right to prosecute a suit against a third party infringing his or her rights. A distributor may not bring a suit for infringement.
II) An accused infringer may counterclaim patent invalidity under formal or technical considerations, upon receiving the infringement suit before the IMPI, but it is not possible to request an additional judicial ruling or declaration.
III) 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.
IV) Amendments to the Patent law allow anyone to request the IMPI to initiate officiously the cancellation proceeding against patents.
V) Simple legal standing, namely, the mere business or commercial activity to challenge the validity of patent, is under assessment before the Courts.
1.9 If declarations are available, can they address (i) non-infringement, and/or (ii) claim coverage over a technical standard or hypothetical activity?
No declarations are available.
1.10 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 but there is some room 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 measures may be imposed on third parties to some extent.
1.11 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.
1.12 Does the scope of protection of a patent claim extend to non-literal equivalents?
It has been interpreted that only literal infringement is recognised under the current IP law. Infringement under the doctrine of equivalence is not expressly provided in the law; a broader interpretation of the Patent law to explore the doctrine of equivalents has not been tested before the Mexican Courts.
1.13 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?
According to the IP law, a defendant can file an invalidity action against a patent as a counterclaim within the same statutory term to file the response to the infringement action. An independent invalidity action can be filed, but if it is not filed along with the brief of response, it may be decided separately from the infringement.
1.14 Other than lack of novelty and inventive step, what are the grounds for invalidity of a patent?
According to the IP law, patents are valid unless proven otherwise. Thus, the IP law establishes several 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. Said requirements and conditions for the grant of patents and registrations are those established in articles 16, 19, 27, 31 and 47 of the IP law (novelty, obviousness and utility).
(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 action mentioned under (1) and (2) may be filed at any time; the actions under (3) and (4) must be filed within five years, counted from the date on which the publication of the patent or registration in the Official Gazette becomes effective.
1.15 Are infringement proceedings stayed pending resolution of validity in another court or the Patent Office?
Under certain applicable procedural rules, yes; however, the general rule is to decide upon linked cases' invalidity and infringement simultaneously.
Download - ICLG to: Patents 2017
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.