Patents 2014

Mexico

Eugenio Pérez and José Luis Ramos-Zurita

Uhthoff, Gómez Vega & Uhthoff, SC

Contributing editor: Frank L. Bernstein

Patent enforcement proceedings

   Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Under Mexican Law, the legal enforcement of a patent always involves, as a first step, filing for an administrative  infringement claim before the Mexican Institute of Industrial  Property (IMPI). Further appeals to the resolution issued by IMPI can be filed before the Specialised Chamber  on Intellectual Property  Matters  of the Federal Court of Administrative and Taxing Affairs (SEPI-TFJFA) and, as a last recourse, federal amparo appeals before federal circuit courts.

As a  result  of a  firm and  definitive resolution  declaring an infringement, the successful plaintiff can file an action asking the recovery of damages and losses, although these claims are regular civil claims tried before regular civil courts.

Considering this, and although there are no ‘specialised courts’ concerning patent  infringements, these matters are examined and tried before authorities specialised in IP affairs.

2    Trial format and timing

What is the format of a patent infringement trial?

Although infringement claims are administrative procedures, never- theless, under Mexican Law they are carried out much like a typi- cal summary administrative trial, namely, the claim is filed by the plaintiff, along with the evidence supporting such a claim, and after the defendant is properly notified, the law grants a period of time to respond to the infringement along with the corresponding evidence.

It is worth pointing out that evidence is documental only, which means there are no cross-examinations or live testimonies and, in the same manner, expert witness opinions are rendered as documental reports only while the appraisal of such evidence is made by the expert IMPI officer, who is formally tasked to handle the specific case. When evidence refers to complex technical issues, it is exam- ined by a panel of technical experts within IMPI that serve as the authorities’ own expert witnesses.

Considering the above, a typical infringement case may last between 24 to 48 months, depending on the complexity and specific circumstances of the case and, of course, the resolution issued by IMPI can be further challenged via a nullity trial before TFJFA.

   Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The plaintiff is required to completely support the claims made in the infringement brief, which means producing evidence that dem- onstrates  any  conduct  claimed against  the  infringer  that,  under

Mexican Law, constitutes a patent infringement. Considering this, the plaintiff is obliged to prove every single aspect of the infringement claim with as much evidence as possible.

The only exception to this rule is established under article 192 bis 1 of the Mexican Industrial Property Law (MIPL), but this excep- tion only is also subject to the burden of proof considering the term

‘significant probability’ foreseen in this article and has to be credited via the evidence apportioned by the plaintiff.

It is worth mentioning that witness depositions and confessional statements are not allowed according to the Mexican Industrial Property Law.

4    Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

Patent holders, authorised licensees and its representatives are enti- tled to lodge an infringement claim against an alleged infringer. In this regard, the alleged infringer could argue, as part of the defence strategy, the lack of sufficient legal standing.

As IMPI is obliged to  examine  legal standing  to  admit infringement claim, the alleged infringer could file an extraordinary amparo federal appeal before a district court to combat the decision of IMPI to admit the infringement claim as a result of the recogni- tion of the legal standing of the plaintiff.

It should be mentioned that witness depositions and confessional statements are not allowed according to the Mexican Industrial Property Law.

   Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

Under Mexican Law there are no specific gradations  concerning inducement or contributory infringement as the plaintiff is entitled to credit any and all causes of the claimed infringement committed by the infringer, which in turn are limited to the conduct described by law only, specifically article 213 of MIPL, which does not foresee contributory matters or inducement as infringing conduct.

6    Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Contrary to the practice in the United States and in other jurisdic- tions, under Mexican Law and practice, each infringement claim should be directed to only one alleged infringer and as described in question 5, the conduct foreseen as infringements must be clearly and  exclusively established in article 213  of MIPL. Where there are several infringers, the patent holder is obliged to file separate infringement claims against each infringer.

7    Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Following the same line of thought, any activities taking place outside Mexican territory  should have a direct impact on any of the conduct foreseen by the Mexican law as an infringement, for example, a clear example of a cause of patent infringement would be to import a product that is either protected by a patent or is a result of the use of a procedure that is patented.

8    Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

Under Mexican law and practice, there are no ‘equivalents’ when dealing with a patent infringement, namely, the alleged infringing conduct must conform exactly to the claims contained in the patent title that is considered as being infringed.

   Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

MIPL establishes different mechanisms that are similar to what is called ‘discovery’ in other countries, as follows:

  • every person or entity is obliged to provide IMPI with the infor- mation and data that the agency requires in a written and duly notified manner, and failure to comply with this obligation con- stitutes an infringement in itself; and
  • in the course of infringement procedures, IMPI has the legal power to require the counterpart to provide any evidence that is directly under its control and is related to the case being exam- ined, under the penalty of being subject to any provisional measures ordered against such a party if it fails to comply with what it is required to produce or inform.

10  Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

A typical patent infringement lawsuit could last from 24 to 48 months in the first stage, plus another  24 to 48 months in the following stages (nullity claim appeal and amparo trial), but the time frame largely depends on the complexity of the matter and the number of parties involved in the process.

11  Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Again, it depends on the complexity of the matter, the fees charged by the counsel, the cost involved in obtaining evidence such as cer- tified copies and translation  fees (as all evidence must be submit- ted in Spanish), etc. Concerning government fees, those are around US$500, plus other costs such as certified copies that  can widely vary depending on the specific matter.

12  Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Any party can opt to file either an administrative reconsideration recourse, which is examined by the same authority that issued the administrative resolution, or a nullity petition that  is tried before SEPI-TFJFA. It is worth pointing out that the vast majority (95 per cent) of resolutions to reconsideration recourses confirm the first res- olution issued by IMPI; thus, in most cases it is preferable to directly file a nullity petition before TFJFA.

TFJFA resolutions  can be challenged via an  amparo federal appeal tried before federal circuit courts. The sentence pertaining to the amparo appeal is final and definitive.

13  Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business- related tort?

Under Mexican law, the owner of a patent is the rightful owner of a monopoly that is permitted directly by the Constitution, thus no argument  could  be  successfully produced  involving competition issues. In the same regard, unfair competition is usually construed as the actions performed with the aim of unlawfully profiting or taking advantage of any right (including a patent), prestige or good reputa- tion of an actor within the same relevant market, and considering that any legal enforcement action is an extension of the right holder to actually apply such a right, any action based on such grounds would not have merits to prosper.

14  Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

These are allowed by Mexican law but are only applicable when conflicting parties have a written agreement in that sense. In all other cases, both administrative and judicial authorities have the obliga- tion to resolve the disputes between parties as this is part  of the rights granted by the Mexican Constitution.

Scope and ownership of patents

15  Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Mexican legislation foresees the possibility of protecting any type of invention that is new, the result of an inventive step and suscep- tible of industrial application, with some exceptions that cannot be protected in the country (article 16 of MIPL) and also other matters that are not considered as inventions in Mexican legislation (article 19 of the MIPL). The list of exceptions and matters not considered an invention in Mexican legislation are as follows:

  • exceptions are essentially biological processes for obtaining, reproducing and propagating plants and animals, biological and genetic material as found in nature, animal breeds, the human body and the ling matter constituting it and plant varieties; and
  • not considered as an invention are theoretical or scientific prin- ciples, discoveries that consist in making known  or revealing something that  already existed in nature  even though  it was previously unknown  to man, schemes, plans, rules and meth- ods for carrying out mental processes, playing games or doing business and mathematical methods, computer programs, meth- ods of presenting information,  aesthetic creations and artistic or literary works, methods of surgical, therapeutic or diagnos- tic treatment applicable to the human body and to animals and the juxtaposition of known inventions or mixtures of known products, or alteration of the use, form, dimensions or materials thereof, except where, in reality, they are so combined or merged that they cannot function separately or where their characteris- tic qualities or functions have been so modified as to produce an industrial result or use not obvious to a person skilled in the art.

16  Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

Invention made by an employee

If an employee is hired to perform research or work focused on improving proceedings on behalf of an employer, the property of the inventions created during his or her job pertain to the employer. In this case inventions have to be created using the employer’s recourses and during working hours.

If an invention is created by an employee who is not expressly hired to do research and development for the employer and the invention is created using the employer’s resources, then the inven- tion  will pertain  to the employee, but  the employer will have a preferential right to acquire the right to acquire the property of the invention or the right to use it in the same terms as the employee could offer to a third party.

Invention made by an independent contractor

The property of the invention will pertain to the inventor, except if, in the agreement entered with the contractor, there is an express provision to determine that the property of the invention will pertain to the party that entrusted the invention development.

Multiple inventors

The property of the invention will be split into equal shares among the inventors, except if, through agreement, they agree to distribute the property among them in a different form.

Joint venture

The parties in the joint venture agreement will have to determine what will happen with the ownership of patents developed during the term of the business relationship.

Defences

17  Patent invalidity

How and on what grounds can the validity of a patent be challenged?

Is there a special court or administrative tribunal in which to do this?

Under Mexican law the only cancellation or invalidation grounds other than the ones foreseen in articles 78 and 79 of MIPL, which are the same as those that deal with the lack of any of the essential requisites to grant a patent (novelty, inventive step and industrial application). Concerning the procedural requisites to validly file a cancellation or invalidation action, the applicant must prove that he or she has a direct and legitimate interest to challenge the valid- ity of the patent. Thus, there is no provision to file anonymously or without crediting a valid legal interest. In addition to the above, IMPI can begin an invalidation process ex officio if there are evident and notorious causes that merit it (a public utility cause, etc), but this is extremely rare and in our experience has not happened within recent memory.

Similar to other procedures, a typical patent cancellation or invalidation lawsuit could last from 18 to 36 months in the first stage, plus another 24 to 48 months in the following stages (nullity claim appeal and amparo federal appeal), but the time frame chiefly depends on the complexity of the matter and the number of parties involved in the process (see question 1). Invalidity claims are tried, just as infringements, before IMPI. Further appeals to the resolu- tion issued by IMPI can be filed before the Specialised Chamber on Intellectual Property Matters of the Federal Court of Administrative and Taxing Affairs (SEPI-TFJFA)  and, as a last recourse, federal amparo appeals before the federal circuit courts.

18  Absolute novelty requirement

Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?

It  is a  compulsory  requirement  for  obtaining  a  valid patent  in Mexico to comply with absolute novelty for any kind of invention or design. However, Mexican legislation foresees an exception of novelty through a prior disclosure of the invention if and when the same is made by the inventor or his or her successor in title within a term of one year prior to the filing date of the patent application or of the recognised priority. In order that this novelty exception can be applied in Mexico, it is necessary that, when filing the patent case, all evidentiary documentation  be submitted in the Mexican filing petition papers.

Additionally, it is important  to consider that publications of a pending or granted patent issued by a foreign patent office cannot be considered as an exception to the novelty requirement and, there- fore, the same will affect or destroy the novelty of an invention.

19  Obviousness or inventiveness test

What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?

Mexican legislation considers that the meaning of ‘inventive step’ is the result of the creative process that is not obviously deductible from the state of the art by a person skilled in the relevant art. In other words, the legal standard in Mexico for determining if a patent is protectable in view of any prior art is novelty, obviousness (result of an inventive activity) and capability of industrial application.

20  Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

Under Mexican Law there are no ‘unenforceability’ causes, as the equivalent concepts are what are called ‘exceptions and defences’, which are examined as an integral part of a defence filed against an infringement claim.

21  Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?

Mexican law provides for prior user defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent. The defence covers all types of inventions. The defence is limited to uses carried out solely by the prior user and, of course, it is a matter of proving the fact.

Remedies

22  Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature?

As previously explained, in order to arrive at a civil claim intended to recover damages and losses, the patent owner must first file an administrative infringement claim that will produce an infringement procedure where no damages or losses are examined (in a patent infringement matter the plaintiff is not able to request damages relief because the law only foresees this procedure as a means to determine only if there was an infringement or not, leaving damages and losses out of the matter being tried).

Once the infringement procedure  is finished and, ideally, the patent owner has obtained  a firm and definitive resolution of infringement (ie, a resolution obtained  after exhausting all of the available appeals and recourses, including an amparo federal appeal trial), then the patent owner is entitled to file a completely new and separate procedure before a civil court where only the recovery of damages and losses is the subject being tried.

This is due to  provisions set forth  in the last paragraph  of article 6 bis of the Commerce Code, which roughly translated fore- sees that ‘civil actions that are the provoked by unfair competition acts (patent infringements are considered unfair competition acts) can only be initiated when there is a firm ruling in the adminis- trative matter, when this is applicable’, this provision having been confirmed and reinforced by multiple jurisprudencies issued by the Mexican Supreme Court and this has resulted in the particular dif- ficulties of the Mexican legal system.

It is important to point out that statutory damages and loss of profits, would not be less than 40 per cent of the public selling price of each infringing product from the first date of non-authorised use of the patent, according to article 221-bis of the Mexican Industrial Property Law.

In a typical patent  infringement matter,  it may take between seven and 10 years to obtain a definitive infringement resolution, depending on the complexity of the specific case-matter, and once such a definitive infringement resolution is issued, the patent owner could have a suitable basis for filing an action to recover damages and losses. Consequently, not many companies or individuals have the will or the budget to be involved in such lengthy and costly liti- gation procedures, which results in being one of the main reasons causing the absence of cases being tried before higher federal courts concerning this particular subject.

23  Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?

Any patent  owner  or  recorded  licensee is legally entitled  to  file diverse  actions  in  order  to  stop  the  manufacturing,   distribu- tion, transportation, importation  and sale of an alleged infringing product, by requesting IMPI to issue a provisional or preliminary administrative order (similar to a preliminary injunction) intended to immobilise and secure infringing products at the place where such infringing articles are located (including customs offices in the case of imported items).

Conduct considered as patent infringements are established in article 213 of MIPL; for instance, section XII of the said provision establishes that ‘offering for sale or bringing into circulation goods protected by a patent or by a utility model or industrial design reg- istration, in the knowledge that they have been manufactured or developed without the consent of the owner of the patent or regis- tration or without the appropriate licence’ is an infringement.

Further, provisional measures are set forth in article 199-bis of MIPL, which include the power of securing (seizing) and immobilis- ing offending products.

In this sense, according to article 199-bis 1 of the MIPL, in order to determine the implementation of provisional orders, IMPI will require the petitioner to:

  • demonstrate the corresponding ownership of rights and any of the following conditions:
  • the existence of a violation of its trademark rights;
  • that the violation of rights is imminent;
  • the existence of the possibility of irreparable damage being suffered; and
  • the existence of a well-founded concern that evidence may be destroyed, concealed, lost or altered;
  • post a bond intended to guarantee the possible damages that may be caused by the seizure; and
  • provide the necessary information for the identification of the infringing goods.

Likewise, the defendant could request the release of the provisional measures by posting a counter-bond.

The party requesting the provisional measures is liable for the payment of damages caused to the person against whom they have been carried out when the final decision declares that there was no violation nor threat of violation to the complainant’s rights or when the provisional measures were requested and the complaint or the trade mark infringement action was not filed before the competent authority or IMPI, regarding the merits of the case, within a period of 20 days counted as from the execution of the measure, according to article 199-bis 3 of the MIPL.

24  Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?

Part of the provisional measures (similar to the injunctions of other jurisdictions) described above, include the temporary detention of merchandises that  are to be imported  at customs offices, and  in order to exert this measures a patent owner must follow the same procedure described above, with the difference that such measures are to be exerted in a determined customs office.

25  Attorneys’ fees

Under what conditions can a successful litigant recover costs and attorneys’ fees?

Administrative procedures are limited to declaring the existence or not of an infringement matter, plus the imposition of fines as one of the penalties for the infringement, but such procedures do not cover the possibility of including attorneys’ fees, as the only way to request the recovery of such fees is to include them as part of a damages and losses claim.

26  Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate?

Mexican law does not make a distinction concerning deliberate or wilful infringers, as the resolution declaring the infringement only determines if there is an actual infringement. The intent, deliberate or willing condition of the infringement may only be examined in the arguments produced by the authority to support any penalty (mainly fines) imposed on the infringer.

27  Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

It is important to point out that patent infringements are considered to be ‘ongoing and continued’ actions, thus all provisions are drafted in the present time. Considering this, it should be noted that there is no specific time limit (statute of limitations) concerning the infringe- ment of a patent but there is a general statute of limitations of two years after the infringement has taken place or the owner was aware of the infringement, subject to evidence that can support that this general time limit has not been exceeded.

28  Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?

Marking products is an obligation on the patent holder, which consists in notifying the general public that the product is under protection of a granted patent, since the articles quoted above establish the obligation to comply with this requirement in order to enforce preventive measures (such as seizure of products) and, eventually, be able to start a procedure to claim damages.

On the other hand, in order to provide notice to the public there are two options:

  • to mark the product with the patent number or to state there is a pending application related to the product and providing the application number; and
  • to inform the public in a recognised newspaper that a product is under protection of a patent or has a potential right in the case of a pending patent application.

It is important to point out that specific wording is not required to effect proper notice and that it is only needed to specify that the product is under the protection of a patent and provide the patent number or mention that the product has a potential right and pro- vide the patent application number.

Finally, it should be noted that false patent marking is an infringement foreseen in article 213 section II of MIPL.

Licensing

29  Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The only restriction in matters of the patent licence agreement estab- lished in the MIPL refers to the term of the licence. A patent licence cannot be granted by the patent owner for a term longer than the term of the concerned patents.

Except for the above, the parties can freely agree about all other terms and conditions that  will govern the patent  licence and the business relationship between licensor and licensee.

30  Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

If, without  exiting justified reasons, an invention is not in use in Mexico after three years from the granting date of the patent protecting the invention or four years from the filing date of the cor- responding patent application, a third party with legitimate interest in exploiting the invention and having sufficient technical and economical capabilities will have the right to initiate a proceeding before IMPI for obtaining a compulsory licence to enable it to use the invention in Mexico.

A compulsory licence is not granted automatically by IMPI by just showing the lack of use of the invention. It is necessary to initiate a formal proceeding before IMPI in which the patent owner will have the right to defend its interests.

Once IMPI has served copy of the compulsory licence request to the patent owner, it will have the right to initiate the use of the patent in Mexico during the year from the date of reception of the request. In the event the use of the patent is not initiated during the mentioned one-year term, IMPI will summon the concerned parties to a hearing in which it will determine whether the compulsory licence should be granted and, in such a case, the amount of royalties to be paid to the patent owner for the use of the invention in Mexico.

If, within a term of two years of the granting of a compulsory licence, IMPI determines that the use of the invention by the licensee that has obtained the compulsory licence or by the patent owner does not remedy the lack of use in Mexico, it may declare the cancel- lation of the patent.

Patent  office proceedings

31  Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

Concerning  the  prosecution  process  of  a  patent  application  in

Mexico, the application is divided into five stages, which are:

  • the filing of the patent application;
  • the development of the substantial or formal examination by the patent office (this stage normally occurs between the three and six months from the Mexican filing date);
  • the publication of the patent application (the publication of a patent application should occur 18 months from the Mexican filing date or from its recognised priority (in PCT cases the pub- lication usually occurs once the formal examination has already finished, since the 18 months should be counted as from the international filing date);
  • the development of the technical or in-depth examination (this stage normally starts  between  two-and-a-half  to  three  years from the Mexican filing date); and
  • the final resolution on the acceptance or refusal on the granting of the patent (this last stage normally occurs between three and four years).

An estimate of the involved fees from the filing date until the grant- ing of a patent application in Mexico is about US$6,000, including filing, prosecution and granting of the same, and will depend on several aspects such as the size of the specification text, number of official actions, etc.

32  Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The patent  office has a procedure to expedite patent  prosecution of pending patent applications and this is a programme involving other foreign patent offices, known as ‘Patent Prosecution Highway’ (PPH). At this time, the Mexican patent  office has signed up to PPH’s programme with the Chinese patent office, the Japanese pat- ent office, the Korean patent office, the Spanish patent office and the United States patent office. These PPH programmes have proved to be a success in pending Mexican patent applications since the pros- ecution time has been reduced considerably up to around one month when a request is made at the Mexican patent office.

33  Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The specification text  of a patent  application  that  is being filed before the patent office must include a detailed description of the invention, which must be sufficiently clear and complete to be fully understood and, where appropriate, to serve as a guide for a person with average skill in the art to make it. It also must mention the best method known to the applicant for carrying out the invention when this is not clear from the description thereof. It is also necessary to include, when necessary, a set of drawings for the better understand- ing of the description, sequence listings in the case of genetic mate- rial, a copy of the deposit of biological material (microorganisms, cells, fungi, plants, etc), a set of claims that must be clear and concise and may not exceed the contents of the description and an abstract of the invention, which shall serve solely for the publication thereof and as an element of technical information.

34  Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

In reference to prior art disclosure obligations, it should be noted that Mexican legislation does not foresee a duty of the inventor to disclose prior art affecting his or her invention to the patent office as in other countries, such as the United States.

35  Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

Mexican legislation does not accept the filing of additional or new matter different from that originally sought in the specification text of a pending patent application, either by submitting a new set of claims in the corresponding patent application or by filing a divi- sional patent application with a new set of claims. In this respect, it is important to consider that the only amendments that can be done in a pending Mexican patent application or when filing a divisional case, will refer to a set of claims that does not include new matter as, otherwise, such matter will be objected by the patent office.

However, if the set of claims to be submitted in either a pend- ing patent application or when filing a divisional case only include matter that was originally claimed and described in the specification text of the former patent application, such a set of claims will be acceptable.

36  Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Yes, it is possible to do so before SEPI-TFJFA (see questions 1, 2, 12 and 17).

37  Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Article 52-bis of MIPL provides a mechanism for third parties sub- mitting information before the patent office in order to make the examiner aware of relevant prior art or subject matter that may not be within patentability requirements. The information is solely per- mitted to be entered into the examination process and the examiner will have the final decision on the matter.

38  Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

There is no provision in Mexican law to resolve such a dispute, as the only procedures available are post concession, as discussed previously.

39  Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

There is no provision in Mexican Patent Law for re-examining or for actually revoking a patent. The patent office only provides a pro- cedure for conducting a cancellation action against a patent. Such action must be requested by a third party with legal interest.

A court may not amend the patent claims during a lawsuit; how- ever, partial nullity is contemplated in Mexican law and, therefore, where partial nullity of a patent is determined, the nullified claims will be omitted from the patent.

40  Patent duration

How is the duration of patent protection determined?

The validity or patent duration of a patent of invention in Mexico is 20 years counted as from the Mexican filing date if and when the annuity payment (maintenance fees) are effected in proper time. In PCT cases, the 20 years will be counted from the PCT’s international filing date.

 

Eugenio Pérez  

eugenioperez@uhthoff.com.mx

José Luis Ramos-Zurita

jlramos@uhthoff.com.mx

Hamburgo 260 Tel: +52 55 5533 5060

Col Juárez           Fax: +52 55 5208 8387

Mexico City 06600          mailbox@uhthoff.com.mx

Mexico