At a glance: patent enforcement proceedings in Mexico

Patent enforcement proceedings

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?

Mexico is a civil law country, without discovery, and has a unique, unified system wherein both infringement and invalidity actions are filed before the same government agency (which is dependent on the authority of the president) that grants patents: the Mexican Institute of Industrial Property (IMPI). Decisions issued by IMPI (concerning both infringement and validity actions) can be challenged before a federal specialised court – in other words, the Specialised Chamber for Intellectual Property matters of the Federal Court of Administrative Affairs (SEPI-TFJA). Moreover, sentences rendered by SEPI-TFJFA can be challenged by means of a constitutional appeal (an amparo trial) before a Federal Collegiate Circuit Court, where the magistrates examine if the sentence was issued within constitutional parameters. In some very rare cases, when a transcendental constitutional rights issue is left undecided or the direct interpretation of a constitutional principle is at stake, an amparo revision recourse can be filed so that the Mexican Supreme Court is able to review that constitutional case.

What is the format of a patent infringement trial?

Mexico has no jury trial for patent litigation and every case is decided by bench trial, first as an administrative procedure (before IMPI) that is carried out in a very similar manner to a trial before a court (federal procedure law describes them as ‘trial-like procedures’). Further appeals are handled by a federal court (Federal Court of Administrative Affairs or the circuit court, or both). Because patent matters are IP issues, they are only handled by federal courts, the exception being the civil claims concerning the recovery of damages of losses that can be tried by local (state) courts in each of the 32 Mexican states after a firm and definitive ruling has been given by federal authorities.

In Mexico, most proceedings are conducted in writing, and in patent litigation most evidence is documentary, with some written affidavits, and no deposition or cross-examination is permitted. Expert witness opinions are routinely used but are limited to written form.

In the first instance, the administrative procedure for patent infringement usually takes between 18 to 36 months, depending on the complexity of the case.

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

Mexican law only provides for infringement and invalidity (nullification) claims, and not for unenforceability claims. Accordingly, the burden of proof is on the plaintiff almost exclusively (with just one exception concerning process patents that are new). The plaintiff has the obligation to prove each and every part of the claimed infringing conduct, by means of documents, expert witness opinions, etc.

The only exception to this rule is established under article 192-bis 1 of the Mexican Industrial Property Law (MIPL), but subject to the caveat that the plaintiff has to prove the ‘significant probability’ required by this article.

It is worth mentioning that witness depositions and confessional statements are not allowed, according to the MIPL.

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?

Any patent owner or their recorded licensee is legally entitled to file an infringement claim before the Mexican Institute of Industrial Property (IMPI), which is legally empowered to issue a provisional or preliminary administrative order (similar to a preliminary injunction) intended to immobilise and secure infringing products at the place where those infringing articles are located (including customs offices in case of imported items).

As the IMPI is obliged to examine legal standing to admit the 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 recognition 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.

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 is only direct infringement as there are no provisions on contributory infringement, inducement, etc. If several parties are infringing, each of them has to be sued independently by the plaintiff according to the actual direct infringement cause provided in the different sections of article 213 of Mexican Industrial Property Law.

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 jurisdictions, under Mexican law and practice, each infringement claim should be directed to only one alleged infringer and the conduct foreseen as infringements must be clearly and exclusively established in article 213 of the Mexican Industrial Property Law (MIPL). Where there are several infringers, the patent holder is obliged to file separate infringement claims against each infringer.

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

In order to support a claim of patent infringement, any activities taking place outside Mexican territory are required to have a direct and clear impact on any of the conduct defined by Mexican law as infringement, for example, a clear example 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.

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 patent infringement. The alleged infringing conduct must conform exactly to the claims contained in the patent title that is considered as being infringed.

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

Mexican law establishes different mechanisms that could be deemed as having a similar function to what is called ‘discovery’ in other countries, such as:

• every person or entity is obliged to provide IMPI with the information and data that the agency requires in a written and duly notified manner, and failure to comply with this obligation constitutes 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 examined, under the penalty of being subject to any provisional measures ordered against that party if it fails to comply with what it is required to produce or inform.

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.

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

It depends on the complexity of the matter, including factors such as the fees charged by the counsel, the cost involved in obtaining evidence such as certified copies and translation fees (as all evidence must be submitted in Spanish). Concerning government fees, those are around US$500, plus other costs such as certified copies that can vary widely depending on the specific matter. Contingency fees are not expressly forbidden or foreseen in Mexican courts, thus they are permitted only as a private arrangement between plaintiff and attorney in which the responsibility of payment lies with the plaintiff (or the person or entity who hired the attorney and entered into the agreement), as the courts could not validate or repeal a private agreement that is not related to the patent infringement per se.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

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 the Specialised Chamber for Intellectual Property matters of the Federal Court of Administrative Affairs. It is worth pointing out that the vast majority (95 per cent) of resolutions to reconsideration recourses confirm the first resolution issued by IMPI; thus, in most cases it is preferable to directly file a nullity petition before the Federal Court of Administrative Affairs (TFJA).

TFJA 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.

Unless extraordinary circumstances arise (such as new facts occurring after the original infringement procedure ended), new evidence is not allowed, as all evidence should have been filed with the infringement claim.

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. Therefore, no argument could be successfully produced involving competition issues. In the same regard, unfair competition is usually construed as actions performed with the aim of unlawfully profiting or taking advantage of any right (including a patent), prestige or good reputation of an actor within the same relevant market. However, any legal action to enforce a patent is an extension of the patent owner’s right under the patent, and any challenge to the enforcement of the patent based on competition violation, unfair competition or a business-related tort would not prosper.

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 providing for alternative dispute resolution. In all other cases, both administrative and judicial authorities have the obligation to resolve the disputes between parties as this is part of the rights recognised by the Mexican Constitution ensuring the effective access to justice.

Law stated date

Give the date on which the information above is accurate.

24 March 2020.