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?

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 a specialised IP 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 at Mexico City.

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?

There is a provision in the supplementary provisions to the Mexican Industrial Property Law (MIPL) establishing that prior to the issuance of the decision in the administrative proceeding at the first stage, when acting as a Judge in solving disputes, the IMPI has the prerogative to invite the parties to reach an amicable settlement. However, this option is poorly explored by the IMPI and the parties. Mediation and arbitration are not common in patent litigation, perhaps due to the lack of culture of mediation and arbitration in Mexico, especially in administrative proceedings. We need to recall that patent litigation in Mexico (enforcement and validity) is decided under the umbrella of federal and administrative laws, and the appeal Courts reviewing the decisions by the IMPI are also Administrative Courts. In addition, parties may expect some difficulties in enforcing an arbitration award on the invalidation of patents, as it has not been tested if the IMPI would obey a private arbitration award and eventually proceed to cancel a patent based on an arbitration ruling. In this regard, we consider that there is no reason for the IMPI to refuse to observe an arbitration award related to the cancellation of a patent, but the degree of uncertainty has probably discouraged the use of alternative dispute solutions in Mexico for patent disputes.

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.

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?

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 its 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 during the proceedings and, where applicable, this authority should ensure the conditions for the protection of confidential information.

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. 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

1.7 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 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, two further stages of appeals before Courts, lasting no less than three further years, are expected.

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?

There is no alternative procedure for patent enforcement. As mentioned before, the only venue to enforce a patent is through administrative proceedings (infringement action) before the IMPI in first instance and thereafter appeal it before the competent Courts.

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 shadow of appeal, and some information regarding the decision remains confidential especially if the parties request it.

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 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 them when deciding the administrative proceedings, but only persuasive. Legally speaking they are right; however, as they 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.

1.12 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 Administrative Courts began operating. This Division has jurisdiction to review all cases based on the IPL, the Federal Copyright Act, the Federal Law of Plant Varieties and other IPrelated 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, they do not need to have IP or 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 his or her 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, 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 pharma 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 initiate officially the cancellation proceeding against patents.
  5. Simple legal standing, namely the mere business or commercial activity to challenge the validity of a patent, is under test before the Courts.

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, 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 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, since it 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 non-literal 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, they are decided at the same time, especially if the invalidity action is filed as a counterclaim; specifically, filed at the same time as the response to the infringement action is filed.

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 before, 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?

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.
  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, counted from the date on which the publication of the patent or registration in the Gazette becomes effective.

1.21 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 linked cases' invalidity and infringement simultaneously

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.

Challenging the validity of patents

Under the IP Law, patents are valid until the contrary is proven.

One of the most common defences in patent litigation in Mexico is to attack the validity of the allegedly infringed patent. As the patent exists, an administrative resolution is required to declare its annulment. This defence must be alleged when replying to the plaintiff 's claim, by means of a counterclaim. The IMPI will give notification of the counterclaim to the party who filed the original complaint. Both the infringement claim and the counterclaim should be resolved simultaneously to preclude the possibility of contradictory outcomes. The grounds for invalidating a patent are mentioned in question 1.15.

Fair or experimental use

This refers to the non-profit use of the patented invention.

Roche Bolar Exception

In the case of medicines, a party shall be entitled to apply for the registration of a product relating to a substance or active ingredient covered by a patent pertaining to someone else, if the application is filed within three years before the corresponding patent expires. This provision, supported by the "Roche Bolar Exception", would allow the applicant to start performing tests and experiments, in order to be ready to enter the market as soon as the patent has expired.

Originally published by ICLG

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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.