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Enforcement through the courts
What level of expertise can a patent owner expect from the courts?
A benefit of the Patent Office serving as the forum for infringement and nullity actions is that it can apply its practical knowledge when reaching decisions. Further, the Federal Court for Tax and Administrative Affairs (FCTAA) – the administrative court before which nullity claims against Patent Office decisions may be filed – has a specialised IP court.
That said, even the FCTAA is not as skilled in patent litigation as the Patent Office; therefore, it is essential to build cases as clearly as possible with regard to legal and technical facts in order to avoid misinterpretations by the courts.
Are cases decided by one judge, a panel of judges or a jury?
In the first instance, Patent Office officers and patent examiners decide patent cases in an administrative hearing. In further instances, a panel of judges hears patent cases at either the Federal Court for Tax and Administrative Affairs or the Federal Circuit Court, which hears all final appeals.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
What role can and do expert witnesses play in proceedings?
Where a case relies on substantive issues and technical determinations, expert witnesses play a vital role, as they can counter the opinions of Patent Office examiners, who typically act as experts for the Patent Office.
As the Patent Office is the authority in relation to patent evaluations, on appeal the courts tend to favour the Patent Office’s opinions; therefore, expert witnesses play a vital role, particularly in appeals against Patent Office decisions.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
Mexico has no doctrine of equivalents as such and no court precedent is used in a similar fashion. However, on a case-by-case basis, certain arguments based on statutory provisions and the actual drafting of the claims can be developed in order to minimise the effect of narrowly drafted claims.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
By statute, it is possible to obtain preliminary injunctions against an alleged infringer through an inspection if the inspection reveals obvious infringement. To impose such measures, the plaintiff must post a bond to cover potential damages incurred by the party against which the injunction measures are made. To lift an injunction, the alleged infringer can post a counter-bond. The counter-bond must be greater than the patent owner’s bond in order to cover potential damages incurred by the patent owner.
While Mexico’s injunction system is seen as weak because injunctions can be lifted via counter-bonds, patent owners can benefit greatly as, by statute, the minimum damages amount awarded for infringement is at least 40% of the sale price to the public, which is greater than the gross sale price.
How are issues around infringement and validity treated in your jurisdiction?
Infringement and validity actions are handled as separate administrative proceedings before the Patent Office, even though nullity and infringement actions are typically brought as a counteraction and are litigated or resolved at the same time. Damages stemming from infringement actions are rare, as parties typically settle before reaching the civil court stage in order to avoid the possibility of a damages award of at least 40% of the sale price to the public in addition to a fine.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
Although it is against the principles of the Paris Convention, the Patent Office and the courts tend not to contradict decisions made by skilled courts in other jurisdictions. However, although it is extremely difficult, it is not impossible to obtain an independent decision that contradicts decisions from foreign jurisdictions.
Damages and remedies
Can the successful party obtain costs from the losing party?
Damages can be claimed only after the Patent Office has issued a decision regarding the infringement and all chances for appeal have expired. Costs can be claimed as part of the damages. By statute, the minimum damage amount awarded for infringement is 40% of the sale price to the public.
What are the typical remedies granted to a successful plaintiff?
In infringement cases, the Patent Office will impose a fine (regardless of damages) based on the facts of the case. It can also impose other remedies, including orders to:
- stop commercialisation of the infringing goods and their manufacture or packaging;
- stop the use of the infringing goods; and
- suspend services or facilities.
These measures can be imposed provisionally during proceedings and as permanent or temporary injunctions.
The plaintiff can negotiate a settlement with the infringing party based on the minimum amount of damages established by statute (ie, at least 40% of the sale price to the public). However, if the infringer is unwilling to negotiate, the patent owner can initiate a damages suit before a civil court, in which case it must demonstrate actual damage caused and actual loss suffered, as these factors will serve as the basis for calculating damages.
In successful nullity actions, the defendant can claim damages, as it has been prevented from performing its non-infringing activities. Damages and remedies are evaluated on a case-by-case basis, as it can be difficult to determine actual damages and who should be held accountable.
How are damages awards calculated? Are punitive damages available?
By statute, damages are 40% of the sale price to the public. Therefore, unit sales and the sale price must be determined. Only direct damages or damages relating to the inability to perform tasks (prejudice) are available. Punitive damages are unavailable.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
Because injunctions can be lifted via counter-bonds, and are typically enforced where there is a clear presumption of infringement, whether an injunction is permanent will depend on the type of injunction and its economic effect, as well as the costs and benefit to the parties. That said, injunctions are usually become permanent once infringement is proved.
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
First-instance decisions take between one and a half years and two and a half years to obtain. It is not possible to expedite this process.
How much should a litigant plan to pay to take a case through to a first-instance decision?
Typically, a litigant should plan to pay between $25,000 and $40,000 for a first-instance decision, but this may increase to as much as $100,000, depending on factors such as the difficulty of obtaining proof of infringement and the need for expert opinions.
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