Patent Litigation 2019 Comparisons

Last Updated June 20, 2019

Law and Practice

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Basham, Ringe y Correa S.C. has a patent litigation team consisting of 11 professional lawyers and engineers working together to litigate issues concerning the unconstitutionality of laws and treaties before federal courts and the Supreme Court of Justice in Mexico, designing legal strategies to compensate for lost times in the granting of patents. The engineers are specialised in subjects such as chemistry, biology, biotechnology, pharmaceuticals, physics, mechanics and electronics.

In Mexico, an invention is protected by a patent right and this intellectual property right is based on statutory law. Specifically, it is included in Mexican industrial property law (IPL).

The right arises through the filing of a patent application with the Mexican Institute of Industrial Property. The application must contain all the information regarding the inventor and if the right has been assigned, the information of the assignee. This also must contain the formal documents such as assignment and Power of Attorney document. The inventor or the applicant may file the application themselves or through an agent. Also, it is possible to claim a priority from a previous application filed in a different country, member of the Paris Convention, if such claim is made within the 12-month term provided for such effect. A certified copy of the priority application must be filed within three months from the filing date and it must include its full Spanish translation.

The application may be filed also as a National Phase Patent Cooperation Treaty Patent Application, for which Mexico is a 30-month term country. If the information regarding the inventors, applicants and priority applications, are the same to the information from the International Application’s publication, we would not require the assignment and priority document as in Paris Convention applications. The application is studied by a Formal Examiner who will determine if there are any formal documents missing or if all documents are in good order. The application must contain the invention’s specification, claims and drawings, in Spanish. However, it is possible to file the application in a different language, in order to avoid missing the filing due date.

The Examiner requests the Spanish translation during the formal examination. The application must be published in the Mexican Industrial Property Gazette as soon as possible following the expiration of a period of 18 months from the national filing date, provided that all formalities are deemed complete. After the publication has taken place, the application is studied as soon as possible by a Technical Examiner and if deemed necessary an Official Action is issued, requesting clarification or changes to the application. This may be done up to four occasions and if the Examiner determines that the application complies with all requirements, a Notice of Allowance is issued, granting a four-month term to pay the grant fees and five annuities, which include the year of grant and four additional years. Please note that during the prosecution of the application the annuity payment is not required.

The grant procedure currently lasts from four-five years from the filing date and it will depend on the number of official actions issued by the Technical Examination Department and the complexity of the matter. In Mexico, either the inventor or the owner of the patent, if this has been assigned by the inventor, may initiate personally the grant proceedings, meaning that they sign the application form, or they may appoint an agent, that does not need to be a patent lawyer, the agent must only need to have an address in the Mexican territory. The costs to grant may vary widely since it depends in a series of factors such as the complexity of the invention, the number of priorities, number of claims or number of official communications issued by the Mexican Patent Office. However, for an average application, with 20 pages of 30 lines in English, two priorities and ten claims, the cost may range from USD8,000-9,000.

The term of a patent right is 20 years from the filing or legal date, which is the national filing date for Paris Convention applications, or the international filing date for National Phase PCT applications.

The patent holder has the right to an injunction, may claim damages to third parties even if the illegitimate use of the patent was made before granting, without his consent, provided that the application had already been published. If the subject matter of the patent is a product, the patentee has the right to prevent others from making, using, selling, offering for sale or importing the patented product without his consent. If the subject matter of the patent is a process, the patentee has the right to prevent others from using that process and from using, selling, offering for sale or importing the product obtained directly by that process, without his consent. The owner must use the patent in the Mexican territory, within three years from the grant date or four years from the filing date, whichever comes later, in order to avoid that a third party requests at the Mexican Institute of Industrial Property a compulsory licence.

Currently there are no further means of protection available, under Mexican Industrial Property Law, for Patented inventions, after their 20-year term has lapsed. Exceptionally if the patent applications took more than five years to be granted, by a litigation strategy could be requested a compensation of time because of the administrative delay, based on the NAFTA.

According to Mexican patent law, third-party observations may be made within two months after the Patent Application is published. The observations may or may not be taken into consideration for the examination of the patent, depending on the Examiner’s criteria.

Against a refusal to grant a patent, two actions may be used. The first is a reconsideration appeal, which is filed at the Mexican Institute of Industrial Property (IMPI), and the second is an appeal, which is filed at the Federal Court.

The failure to pay annuities will result in the loss of the patent right. The maintenance fees are paid every five years after the grant of the patent and must include five years in advance, only if the inventor is also the applicant, he may pay one annuity at the time. The first five annuities are paid together with the grant fee. The annuity payment must be done in the anniversary month that corresponds to the filing or legal date. There is a six-month grace period to pay the annuities. If the annuities are not paid during the regular term or the grace period, there will be an additional six-month term to file a reinstatement request.

The current costs of the annuities are as follows:

  • a professional fee of USD250 every five years:
  • an official fee for patent annuities from the first to the fifth year of USD80 each year:
  • an official fee for patent annuities from the sixth to the tenth year of USD92 each year; and
  • an official fee for patent annuities from the 11th to the 19th year of USD105 each year.

Infringement actions and temporary restraining orders are available. After the declaration of infringement, the plaintiff may ask for damages before civil courts. In case of trade marks, criminal action is also an option when there are trade marks and products or services.

There are two potential actions:

  • file a counterclaim requesting the cancellation of the intellectual property rights; and/or
  • post a counterbond to neutralise the injunction filed against the defendant.

In some specific cases, compulsory licence could be an option.

Jurisdiction in intellectual property matters is as follows:

  • first instance at the IMPI;
  • second instance at the IMPI and/or the Federal Court (IP Specialised Court);
  • third instance at the Circuit Court of Appeals; and
  • exceptionally, a fourth instance before the Supreme Court of Justice (SCJ) in the case of an unconstitutional provision of industrial property law (IPL).

It is required to file the lawsuit along with a Power of Attorney, the payment of Government fees, intellectual property rights and evidence.

The documents may be signed by the company's representative directly. Even legal proceedings at the courts, writs can be signed by the company's representative; however, if the company does wish to be represented by somebody else at court, he/she must be a lawyer having his/her license duly recorded at the court.

The infringement of an IP right gives the right to request an injunction. The injunction will be granted by the IMPI if the plaintiff proves:

  • the existence of an intellectual property right;
  • the infringement of an intellectual property right;
  • the posting of a bond; and
  • the public existence of an intellectual property right.

The opponent may post a counterbond to release the seizure of products. However, if the defendant loses the case, the plaintiff may collect the counterbond.

If the plaintiff wishes to ask for damages, he or she will have to follow the administrative procedure to the end to obtain the declaration of infringement after four years of litigating. Once the declaration of infringement is obtained, the plaintiff will be able to ask for damages before a civil court litigating another three/four years through the Civil proceeding. It is considered as limitation of a compensation for IP matters, as a compensation could take from six to eight years considering the Administrative and Civil proceedings together. In other words, to obtain a compensation the legal proceeding is too long to recover the damages caused by the infringement of an intellectual property right.

The IPL establishes a legal mechanism for the parties to request the IMPI information and data that is owned by third parties. If the request is related to the merits of the case, the IMPI can request that information or data to other entities or third parties, so that the IMPI has more elements and evidence to resolve the case.

The preparation of a lawsuit requires a narration of facts that put the case in context. Each statement must be proved except when it is made under oath. Negative facts are not subject to proof; only positive facts, or also negative facts with positive effects Once the lawsuit or the response to it is filed, allegations follow. At that point, details may be added to the case. The procedures for tangible and intangible (eg, intellectual property, privacy and data protection, etc) claims are different. Tangibles case (eg, property rights, etc) are resolved before civil courts and intangible matters are resolved before administrative courts.

Collective actions are not allowed for intellectual property matters.

The right conferred by a patent does not have effect against:

  • any third party who is engaged in the private or academic sphere and not for purposes of profit;
  • any person who markets, acquires or uses a patented product or a product obtained through a patented process after said product has been lawfully introduced into commerce;
  • any person who has used the patented process, manufactured the patented product or initiated preparations necessary to carry out said use or manufacture prior to the date of filing of the patent application or an application for acknowledged priority;
  • employment of the corresponding invention in transport vehicles of other countries forming a part thereof, when such vehicles are in transit in national territory;
  • any third party who, with regard to patents relative to live matter, uses the patented product as an initial source of variation or propagation for obtainment of other products, unless said use is in reiterated manner; nor
  • any third party who, in respect of patents relative to products consisting of live matter, uses, places in circulation or markets the patented product for purposes other than multiplication or propagation, and after the product has been lawfully introduced into commerce by the patent-holder or by  a licence of the latter.

In accordance with the IPL, an infringement action may be initiated ex officio or ex parte. In the latter, any party with legal standing and a founded claim may file the infringement action.

Therefore, an infringement action may only be filed by the owner of the intellectual property right, or any other person who may be authorised to carry out actions to protect it on the owner’s behalf (including a licensee authorised to do so), as well as initiated by the IMPI.

However, the law also allows for any third party to inform the IMPI of circumstances that may be constitute patent infringement, in which case such allegations may be considered by the IMPI to initiate a proceeding.

The IPL does not differentiate between direct and indirect patent infringement.

In accordance with Mexican industrial property law, the scope of protection of a patent is limited to its claims, ie, only the subject matter of the granted patent. The owner holds exclusive rights to exploit its patent’s claims, or to authorise third parties to exploit it. These exclusive rights carry the prerogatives of preventing unauthorised parties from exploiting a patented process or invention:

  • if the subject matter is a product, the owner may prevent third parties from making, using, offering for sale, selling or importing a patented invention; and
  • if the subject matter is a process, the owner may prevent third parties from using the patented process or from making, using, offering for sale, selling or importing the resulting product of a patented process. 

The owner’s prerogatives are further detailed by the IPL as the following specific hypotheses of patent infringement:

  • the unauthorised manufacturing of products covered by a patent;
  • offering for sale or selling products covered by a patent, knowing that they were manufactured without authorisation by the patent holder;
  • using patented processes, without the authorisation of the patent owner;
  • offering for sale products resulting from the use of patented processes, knowing that they were used without the patent owner’s consent.

In addition to these specific patent infringement hypotheses, the IPL sets forth a broader premise for infringement, consisting of any acts that go against traditions and customs in industry and commerce that involve unfair competition and are linked to industrial property rights.

In deciding a patent infringement action, the IPL will analyse the circumstances brought before it and must then determine whether any of the above hypotheses is met. To do this, the IMPI will evaluate whether the whole patent or any of its independent claims is identifiable in the activity that has been brought to the IMPI’s attention.

Any of the above examples may be used by the defendant, depending on the circumstances of the case. Defendants will also usually seek to counterclaim the invalidation of the patent that has supposedly being infringed, through claims of lack of novelty, non-patentable subject matter or any other argument that may lead to the revocation/cancellation of the patent.

Parties may offer expert opinions as evidence, in which case they must provide the IMPI with the name and qualifications of their designated expert. In turn, the opposing party may designate his or her own expert, and the IMPI will designate a third expert. In order to participate as an expert in the proceedings, each expert must clarify their position before the IMPI.

Each expert submits a report based on questionnaires submitted by the parties (as opposed to live examination and cross-examination in other jurisdictions). The reports are then added to the evidence to be valued by the appointed officials.

There is a way to limit the claims of a patent: through voluntary limitation.

Revocation/cancellation actions are available and may be initiated ex officio or ex parte. Any third party or a Federal public prosecutor (where there are Federal interests involved) may bring an action before the IMPI.

A patent shall be revoked/cancelled if any of the following hypotheses is met:

  • the patent was granted in violation of specifications and requirements regarding patentability;
  • the patent was granted in violation of the Mexican industrial property law in force when that the patent was granted;
  • the application was abandoned during prosecution; and
  • the patent was granted by mistake or inadvertently or was granted in favour of someone who has no right to have it.

When the revocation/cancellation only affects one or some of the claims, or a part of a claim, the revocation/cancellation will be declared solely for the affected claim or claims. Thus, the revocation/cancellation will be declared in the form of a limitation concerning the revoked/cancelled claims.

Generally, applicants are only allowed to make amendments before the patent is granted. However, claims may be limited at any time, including during revocation/cancellation proceedings. This could happen if the owner of the patent subject to revocation/cancellation voluntarily limits the claims.

It is possible for revocation/cancellation actions and infringement actions to be decided together. This may happen when, for example, an infringement action is counterclaimed with a revocation/cancellation action seeking to invalidate the patent that is claimed to have been infringed. To successfully link the two actions, the counter-claimant will argue the revocation/cancellation of the patent as a exemption against the infringement action (forcing the Patent Office to analyse the revocation/cancellation action before going forth to the substantive analysis in the infringement action). 

The most important special procedural provisions for intellectual property rights proceedings are listed here:

  • intellectual property rights proceedings are heard by a specialised branch of the Patent Office;
  • intellectual property rights proceedings in Mexico may be initiated ex officio;
  • it is not possible to offer testimonials (regarding other individual or entity’s actions) or confessions (regarding own actions) as evidence in intellectual property rights proceedings in Mexico;
  • expert opinions are presented in writing, answering the questions submitted by the parties, and not in direct examination or cross-examination, as is the case of other jurisdictions;
  • Mexican law makes no distinction between cancellation, revocation or invalidity actions, and therefore a single action may contain claims attributable to revocation and invalidity actions.

A case is determined by officials appointed by the IMPI. They have legal a background and are supported by people with technical knowledge. The parties have no say about who is the decision-maker.

The parties may reach an agreement at any time before a final and conclusive decision is made. The IMPI may also suggest and/or assist the parties in finding an amicable solution to a contentious matter through a conciliation procedure.

A proceeding may be stayed when its procedural matters or substance are subject to the solving of a different proceeding. For example, if the legal standing of the plaintiff in a specific infringement action is a patent, and the patent is subject to the resolution of a revocation/cancellation proceeding, the infringement action will be stayed, or at least will be solved, until after the revocation/cancellation action has been solved.

To ask for damages, a case must be filed before a civil court after the declaration of infringement by administrative courts, which take from three to four years to resolve a declaration of infringement. Once it is obtained, the plaintiff is able to ask for damages and legal fees before a civil court. The parties must request remedies, or the judge will do it reluctantly.

In the event that the plaintiff does not prove the damages in the lawsuit, the defendant may request the payment of legal expenses incurred by taking the matter to trial without good cause.

The remedies are the same for all technical intellectual property rights. Usually remedies apply to damage proceedings. In the administrative courts the IMPI is able to impose sanctions and fines but they are collected by the Treasury Department and not by the other party to the action.

If the patent is valid and infringed by the defendant, the IMPI will impose a fine on the defendant and order the infringement to be suspended, unless the defendant appeals and requests the suspension of the IMPI´s decision before a Federal Court. In this case, the defendant must post a bond to suspend the execution of the payment of the infringement and may continue using the patent until a final decision is issued by the Federal Court or Circuit Courts - if the final decision is challenged.

There is only one appeal of reconsideration against the rejections of patent applications being regulated in the IPL. The other legal provisions on the challenging of IMPI's decisions are regulated in a generic form in another law that applies to different subjects, including intellectual property, called the federal law of administrative procedure.

The appeal is limited to the arguments made by the appellant. Therefore, if he or she does not challenge a specific issue or illegality identified in the former decision, the IMPI and/or Federal Court – depending on the type of challenge – is not bound to resolve it. As a result, the facts, articles or interpretations of articles not contested by the appellant are interpreted as consent.

The estimated cost for filing a cancellation or  infringement action or responding to either is approximately USD9,000. To prepare and send a cease-and-desist letter costs USD500. The estimated costs for preparing and filing pleadings are USD2,500.

Only the first instance before the IMPI government fees shall be paid. The rest of the litigation until the last instance no government fees apply.

In the case of infringement proceedings only, if the plaintiff has obtained a favourable resolution in the administrative proceedings, he or she may claim compensation in civil proceedings for damages and legal expenses. If the legal procedure is not raised in civil proceedings, neither of the parties can claim payment of legal expenses and each party will pay his or her own expenses without the possibility of reimbursement.

It is not a common method but if the parties agree, it may be implemented through a mediator or arbitrator.

An assignment of an intellectual property right must be recorded at the IMPI. The recording of the assignment is made by filing the assignment document, duly signed by both parties, bearing original signatures or a copy duly certified and authenticated with the Hague Convention apostille, or by a Mexican Consulate. If an authorised agent makes a request for the recording of the assignment, the request must include the corresponding Power of Attorney document.

The recording of the assignment is requested in writing by the agent authorised by either of the parties, including the respective Power of Attorney document to confirm the authorisation. The IMPI reviews the documents and issues an acceptance or an official requirement, if anything is missing, within three-four weeks from the date the request is filed. The official action informing that the recording of the assignment has taken place indicates the recording date and the name of the new owner of the intellectual property.

A licensing of an intellectual property right must be recorded at the IMPI. The recording of the licence is made by filing the licence document, duly signed by both parties, bearing original signatures or a copy duly certified and authenticated with the Hague Convention apostille, or by a Mexican Consulate. If an authorised agent makes a request for the recording of the assignment, the request must include the corresponding Power of Attorney document.

The authorised agent of either of the parties requests the recording of the licence in writing by, including the respective power of document to confirm the authorisation. The IMPI reviews the documents and issues an acceptance or an official requirement, if anything is missing, within three-four weeks from the date the request is filed. The official action announcing that the recording of the licence has taken place indicates the recording date and the name of the licensee of the intellectual property.

Basham, Ringe y Correa S.C.

Paseo de los Tamarindos
No. 400-A, Piso 9
Mexico, D.F.
05120
Mexico

+52 55 5261 0400

+52 55 5261 0496

contacto@basham.com.mx www.basham.com.mx
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Law and Practice

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Basham, Ringe y Correa S.C. has a patent litigation team consisting of 11 professional lawyers and engineers working together to litigate issues concerning the unconstitutionality of laws and treaties before federal courts and the Supreme Court of Justice in Mexico, designing legal strategies to compensate for lost times in the granting of patents. The engineers are specialised in subjects such as chemistry, biology, biotechnology, pharmaceuticals, physics, mechanics and electronics.

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