Mexico Patent Litigation 2024 – Patent

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.