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Enforcement through the courts
What level of expertise can a patent owner expect from the courts?
The IMPI, which is the authority empowered to issue administrative resolutions on patent infringement cases, is staffed by personnel with both the formal education and the technical qualifications needed to perform the tasks entrusted to it.
Moreover, in January 2009 a specialised IP division of the federal administrative courts began operations. This division has jurisdiction to review all cases based on the Industrial Property Law, the Federal Copyright Act, the Federal Law of Plant Varieties and other IP-related provisions. The creation of this division should help to improve the applicable criteria for IP cases, although the three magistrates comprising this tribunal have no technical backgrounds. The last appeal stage is formed by federal circuit magistrates; although they are highly knowledgeable on legal issues, they do not need to have IP or technical backgrounds.
In addition, there are a considerable number of associates and academic institutions – some of which are connected to the judiciary – which regularly organise seminars and lectures to promote, study and discuss IP issues directed to or along with judges and magistrates.
Are cases decided by one judge, a panel of judges or a jury?
The only way to enforce a patent is through administrative proceedings (ie, an infringement action) before the IMPI, which is not a court of law but rather a federal administrative entity.
The IMPI does not publish its judgments in patent infringement trials or any other proceedings until they are final and not subject to further appeal. However, some information relating to the decision remains confidential, especially if the parties request it.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury?
There are no jury trials in Mexico.
What role can and do expert witnesses play in proceedings?
Expert evidence is not required by law, but it is advisable in most cases to offer expert evidence, considering that the inventions and patents in question usually have characteristics that can be duly clarified only by an expert.
Expert evidence should be offered in the complaint, indicating the points on which the expert will deliver his or her opinion.
Does your jurisdiction apply a doctrine of equivalents and, if so, how?
For many years, the existing IP law has been interpreted to the effect that only literal infringement is recognised; infringement under the doctrine of equivalents is not expressly provided for by the law.
However, in a recent ruling on behalf of a pharmaceutical company, a circuit court considered the peripheral interpretation method as part of a non-binding precedent. The circuit court held that according to the relevant rules and regulations, it was clear that the legislature’s intention was to grant claims with a fundamental role in the definition of the patent’s subject matter. Further, these rules allow the state to protect industrial property to a greater extent and to prevent actions which affect the industrial property owner’s exclusivity rights or constitute unfair competition – and to eradicate such practices by imposing corresponding penalties where applicable.
Therefore, the degree to which an action is infringing will be determined on the basis of its identification within or equivalence to the scope of protection of the patented claims.
Although this ruling does not exactly implement the US doctrine of equivalents, it is a step in the right direction.
Is it possible to obtain preliminary injunctions? If so, under what circumstances?
The Industrial Property Law provides for provisional injunctions, whereby the IMPI can take certain important measures against infringers. To obtain an injunction, the plaintiff must:
- prove that it has a valid right to the patent in question;
- evidence a presumption of the violation of its patent rights; and
- post a bond to guarantee damages.
If the plaintiff asks the IMPI for a provisional injunction, a bond will be fixed as security against possible damages to the defendant. This injunction must be petitioned in writing and within 20 days of its execution the plaintiff must file a formal written claim of infringement. Failure to do so will cause the plaintiff to lose the bond in favour of the defendant. The defendant has the right to post a counter-bond – amounting to the bond posted by the plaintiff plus 40% – to stop the effects of the provisional injunction. The defendant may submit any allegations that it deems pertinent with respect to the provisional injunction within 10 days of the date of its execution.
As to the scope of injunctions, the IMPI may order the alleged infringer or third parties to discontinue acts constituting a violation of the law, and may also:
- order the recall or impede circulation of infringing merchandise;
- order the following to be withdrawn from circulation:
- articles that have been illegally manufactured or used;
- infringing articles, packaging, wrapping, stationery, advertising material, signs, posters and other similar articles; and
- utensils or instruments destined for or used in the manufacture, production or obtainment of any of the abovementioned articles;
- immediately prohibit the marketing or use of infringing products;
- order the attachment of the products;
- order the alleged infringer or third parties to cease all infringing acts; and
- order a suspension of service or the closure of the relevant establishment when the abovementioned measures are insufficient to prevent or avoid the violation of IP rights.
If the product or service is in trade, the merchants or service providers will be required to refrain from selling the product or rendering the service as of the date of notification of the resolution.
The same obligation is imposed on producers, manufacturers, importers and distributors, which will be responsible for immediately recalling the products that are found in trade.
How are issues around infringement and validity treated in your jurisdiction?
A defendant in a patent infringement action can file an invalidity action against a patent as a counterclaim when filing the response to the infringement action. An independent invalidity action can be filed, but if it is not filed along with the brief of response to the infringement action, it will be decided separately from the infringement; when the invalidity action is filed as a counterclaim, the IMPI is legally bound. Both the infringement claim and the counterclaim should be resolved simultaneously to preclude the possibility of contradictory decisions.
Will courts consider decisions in cases involving similar issues from other jurisdictions?
Cases involving similar issues from other jurisdictions may be used as guidelines by the IMPI, but they are not binding.
Damages and remedies
Can the successful party obtain costs from the losing party?
The Industrial Property Law contemplates claims for damages and lost profits in civil law actions. Damages and lost profits accrue from the date on which the existence of infringement can be proved. Although claims for damages involve lengthy proceedings in addition to the administrative infringement action, the wording of the law intends to provide fair compensation to the affected party.
The Industrial Property Law establishes that the damages award to the plaintiff in infringement cases cannot be less than 40% of the public sale price of each infringing product or service. However, to be allowed to claim damages, the affected rights holder must have a final decision declaring that its rights were violated.
However, the Supreme Court is currently hearing a case that may substantially affect the ability to claim damages in Mexico. In particular, the Supreme Court is reviewing whether the 40% rule stipulated in the Industrial Property Law constitutes an automatic punitive damage derived from the violation of an IP right, or whether the plaintiff must file evidence of actual damages.
What are the typical remedies granted to a successful plaintiff?
The typical remedy is a fine of up to $800,000 and a definitive injunction to stop the infringing activity. Criminal actions for patent infringement are available only for re-offence cases. In accordance with the Industrial Property Law, re-offence is found where a party infringes a patent after a final and unappealable decision of the IMPI confirming infringement. Re-offence is considered a felony that can be pursued ex officio or ex parte through the Federal District Attorney Office. This felony can be punished with up to six years of imprisonment and a fine.
Remedies are available to the plaintiff through civil actions. Civil actions are filed once an administrative action has been resolved and is not subject to further appeal. As a matter of principle, and in accordance with the Civil Procedural Law, the types of monetary relief that can be obtained from the courts are actual losses and lost profits.
How are damages awards calculated? Are punitive damages available?
Monetary damages are at least 40% of the commercial value of the infringing products. This minimum standard provision is known as the ‘40% rule’. Few patent cases have reached this stage and, as mentioned above, the matter is subject to be studied by the Supreme Court.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
Preliminary injunctions are confirmed and become permanent injunctions only once the infringement action has been resolved (if they are not lifted before by a counter-bond).
In accordance with the Industrial Property Law, the IMPI will place the bond or counter-bond at the disposal of the party that prevailed in the litigation when its decision becomes final (ie, not subject to further appeal).
Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?
The initial stage of a patent infringement action before the IMPI usually takes two years. Once the IMPI issues a decision, the following two stages of appeal before the courts usually take at least three further years.
It is not possible to expedite the process other than hastening and lobby efforts.
How much should a litigant plan to pay to take a case through to a first-instance decision?
Government fees to commence proceedings (patent infringement or invalidity) before the IMPI are minimal – around $73.
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