Overall environment of the IP market in Mexico
Patent infringement in Mexico is more common every day.
With globalization and the advantages granted by the Patent Cooperation Treaty, Mexico has become one of the countries where patent protection is a must. Considering that Mexico shares 2600 miles of border with the US, companies need to consider patent protection in Mexico if this is sought in the US, otherwise, an infringement of a technology being used in the US will not have any means of enforcement in Mexico. Assuming that indeed patent protection is obtained in Mexico, the following paragraphs will present an overview of how to enforce you valuable patent assets in this country.
First of all, it is worth noting that patent infringement in Mexico is an administrative proceeding. In this case, the Mexican Industrial Property Institute (IMPI) is the same authority which is in charge of prosecuting an application and it is the first entity to hear infringement cases. IMPI proceedings are governed by the Mexican Industrial Property Law (LPI) which provides specific evidentiary rules.
According to Mexican Industrial Property Law (LPI), a plaintiff can obtain precautionary measures against an infringer either before filing the complaint or together with it. The commented precautionary measures usually involve the seizure of infringing merchandise, molds, raw materials or any other products related to the patented invention, as well as the issuance of restrictive orders. For getting said measures, IMPI usually requests some kind of evidence demonstrating that the defendant is infringing the respective patent.
It is important to consider that according to Mexican Law (LPI), the scope of patent rights is only determined by the subject matter of the corresponding claims, including technical features from the specification and drawings or, when applicable, the deposit of biological material. According to Mexican Practice the so-called “literal infringement” is the most common acceptable criterion when analyzing patent infringement.
Please bear in mind that Mexican Law (LPI) does not contain specific provisions on preliminary relief related to patents. In this case, general procedural rules apply to cases relating to patent and trade mark infringement.
In Mexico, a patent owner can request an injunction (granted under the administrative proceeding and not by a court) provided that it complies with the applicable normative, but cannot specifically request a search.
In connection with injunctions, IMPI can grant a preliminary injunction provided that the claimant proves its ownership of the patent on one of the following circumstances:
- Presume existence of the infringement.
- Possibility of irreparable damage being sustained.
- Imminence of the infringement.
- Justified fear that evidence may be destroyed, lost or altered.
It is worth noting that after IMPI grants an injunction, it involves an inspection, seize of infringing goods (if any), and notifies the alleged infringer. For this kind of cases, under the LPI, only IMPI can decide to perform an inspection or to seize infringing goods.
At this point, the defendant can file a brief within ten days after the commented inspection, then the defendant is able to raise arguments against said inspection and the grounds of infringement. Finally, and after the cited preliminary injunction is granted, a 20 days period is given to the claimant for filing a patent infringement action before IMPI for confirming the injunction.
After such proceeding in Mexico, a plaintiff can receive the above-mentioned benefits from Mexican jurisdiction, however, delays could occur at several stages of the procedure giving as a result a score of 8/10.
Dr. Manuel López