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Patents 2020: A Practical Cross-Border Insight Into Patent Law

Author:Mr Daniel Sánchez, Alejandro Luna and Sergio Olivares, Jr.

1 Patent Enforcement

1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what would influence a claimant's choice?

In Mexico, the problem of selecting the competent Judge or choosing jurisdiction is minimal. Indeed, the only venue to enforce a patent is through administrative proceedings (infringement action) before the Mexican Patent Office (IMPI), which is not a Court of Law, but a federal administrative entity. IP enforcement is federal law; no state law is available. However, the decisions of this agency on patent infringement cases can be appealed by any one of the intervening parties, thus bringing the matter up before a single specialised IP Court. The decision issued by a specialised IP court could be appealed before 20 Federal Circuit Courts at Mexico City; however, the case is turned randomly by a computer system. By territorial jurisdiction, IP matters are mainly decided at Mexico City.

1.2 Can the parties be required to undertake mediation before commencing court proceedings? Is mediation or arbitration a commonly used alternative to court proceedings?

There is a provision in the supplementary provisions to the Mexican Industrial Property Law (MIPL) establishing that prior to the issuance of the decision in the administrative proceeding at the first stage, when acting as a Judge in solving disputes, the IMPI has the prerogative to invite the parties to reach an amicable settlement. However, this option is poorly explored by the IMPI and the parties. Mediation and arbitration are not common in patent litigation, perhaps due to the lack of culture of mediation and arbitration in Mexico, especially in administrative proceedings. We need to recall that patent litigation in Mexico (enforcement and validity) is decided under the umbrella of federal and administrative laws, and the appeal Courts reviewing the decisions by the IMPI are also Administrative Courts. In addition, parties may expect some difficulties in enforcing an arbitration award on the invalidation of patents, as it has not been tested if the IMPI would obey a private arbitration award and eventually proceed to cancel a patent based on an arbitration ruling. In this regard, we consider that there is no reason for the IMPI to refuse to observe an arbitration award related to the cancellation of a patent, but the degree of uncertainty has probably discouraged the use of alternative dispute solutions in Mexico for patent disputes.

1.3 Who is permitted to represent parties to a patent dispute in court?

At the first stage before the IMPI, there is no legal requirement to represent individuals or companies in patent disputes, other than the formalities of the corresponding Power of Attorney, but there is no registration at the Bar or certifications required to represent a party in patent litigation at the first stage of the administrative proceedings before the IMPI, namely: infringement and invalidity actions. However, at the further two appeal stages, the nullity trial before the Federal Court for Tax and Administrative Affairs (FCTAA) and the Amparo suit before the Circuit Courts, the lawyers representing the parties are required to be attorneys at law, qualified at a federally licensed law school.

1.4 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?

The IMPI may obtain all the evidence deemed as necessary for the verification of...

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