Recent changes in the law, particularly the Law for the Development of Industrial Property which was enacted in 1991 and modified in 1994 as the Law of Industrial Property, have improved the status of industrial property in Mexico, as well as the ability of patentees to enforce their patents. Although it is possible to enforce patents through a complaint filed with a civil court, this action is regarded as less than ideal by some lawyers, mainly due to judicial lack of expertise in matters of industrial property. Infringement actions are usually brought before the Mexican Institute of Industrial Property (IMPI) rather than to courts, which become involved only after the Patent Office has determined that an infringement exists and that the patent is valid. If such requirements are met then the patentee may bring an action before the courts to obtain criminal penalties or a civil remedy against the infringer. Further, IMPI has the right to impose sanctions on an infringer in an administrative action depending on the seriousness of the infringement and the sanctions requested.
In Mexico patent infringement is an administrative infringement with civil consequences. If repeated it becomes a criminal offence. In administrative actions suits are filed before the IMPI in order to obtain an administrative declaration of infringement. Once such a declaration is issued the patentee can go to the civil courts to claim damages and other rights. Criminal actions are commenced by filing a complaint with the Federal Prosecutor. If no determination of infringement yet exists, the prosecutor will request the IMPI to issue it. The IMPI also has the right to issue provisional and final orders that infringement should cease.
Any further remedy of a civil or criminal nature is a matter for the courts that have jurisdiction over the infringer. Decisions of the IMPI are subject to judicial review by an amparo suit before the district courts, whose decision may be appealed in a revision appeal to the circuit courts. The circuit courts decision is final.
In order to obtain evidence of infringement an inspection order can be issued. If "irrefutable proof" of infringement is found during an inspection the infringing goods and other materials relating to the infringement may be seized. In this case a bond is posted to cover possible damages to the defendant if he or she is found innocent of infringement.
According to Article 24 of the Law of Industrial Property once the patent has been granted the patentee may demand an award of damages for exploitation of the patented invention back to the date of its publication from the courts.
The main purpose of an administrative patent infringement action is to obtain an order to stop the infringer from using the patented invention and to impose sanctions on the infringer. Any relapse is subject to imprisonment for two to six years.
Generally, an infringement action in Mexico takes about three years. However, if an amparo is filed it may take up to 18 months longer.
For further information on this topic please contact Patricia Becerril or Abel Morales-Martir at Becerril, Coca & Becerril SC by telephone (+525 55 254 0400) or by fax (+525 55 254 5152) or by e-mail ([email protected] or [email protected]).
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