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Articles

July 15, 2015

A QUICK OVERVIEW OF THE PATENT INFRINGEMENT LANDSCAPE IN MEXICO

  • Introduction

Patent litigation in Mexico has experienced continuous increases and new challenges over the last decade. This situation has pushed the Mexican Institute of Industrial Property (IMPI) and the Mexican courts to address key issues. During this evolution, the case law respecting injunctions, infringement and damages has been evolving alongside the courts’  ever-growing knowledge of these issues.

In this article, we will focus only on the key changes that patent owners need to know and consider if they seek patent enforcement in Mexico.

  • Learning the basics: general evidentiary considerations that patent owners enforcing rights in Mexico should know

In Mexico, patent infringement is an administrative proceeding. IMPI, the same authority that is in charge of prosecuting an application, also is the first entity to hear infringement cases. These IMPI proceedings are governed by Mexican Law, which provides very specific evidentiary rules.

Since patent infringement is considered a summary proceeding, a plaintiff must submit all of its evidence with the complaint.  No evidence will be admitted after the complaint is filed unless it comes into existence after the complaint or the plaintiff states under oath that it was unknown to him beforehand.

Except for cases of infringement of patented processes as detailed in Article 34.1 of TRIPS, plaintiffs have the evidentiary burden to prove that an infringement occurred.

Mexican Law[1] states that testimony is not acceptable as evidence unless presented in writing in the form of a declaration.  Even in such a case, a testimonial declaration will have limited evidentiary value if not supported by or related to other documentary evidence. On the other hand, all documentation submitted in trial must be either in original form or in certified or notarized copies which are authenticated by apostille or otherwise legalized.  All documentation must also be translated into Spanish.

Expert opinions are acceptable as evidence and should be made in writing. If a plaintiff offers such evidence, the defendant will be provided with an opportunity to provide its own expert opinion and to attach questions.  If the plaintiff’s and defendant’s expert opinions do not agree, IMPI usually will appoint a third expert, who in most cases is selected from amongst its patent examiners.

By law, either of the parties can request that IMPI obtain information and evidence from third parties, whether private or public.  However, such information must be clearly identified in accordance with the constitutional mandate, since Mexican law does not provide for discovery as in the United States.

Also, it is important to verify whether a patented invention in Mexico was made public prior to the infringement action.  If an applicant seeks injunctive relief or damages arising from an infringement, it will need to show that it used the legends “Patent No. ____”, “Patented” or any other similar legend, on its products, their packaging materials or advertising.[2]

In this context, publication of an application or a granted patent in IMPI’s Official Gazette has not been considered by the courts as sufficient to establish fulfillment of the public notice requirement. However, a failure of the legend requirement can be corrected by publicizing the existence of patent protection. This is often accomplished by publishing the particulars of the patent in local newspapers.  These publications have been considered sufficient by the courts to fulfill the legend requirement of Mexican law.

  • Safeguarding rights: Precautionary measures in Mexico

One of the benefits of Mexican intellectual property law is that a plaintiff can obtain precautionary measures against an infringer either before filing the complaint or together with it.  Said precautionary measures include the seizure of infringing merchandise, molds, advertisements, raw materials or any other products and documents that refer to the patented invention, as well as the issuance of restrictive orders.

To be able to obtain such measures, IMPI requires at least some evidence that shows the defendant is infringing the patent.

It is also necessary to post a bond to protect the defendant against harm caused by the measures. The amount of the bond is determined by IMPI using the information provided in the complaint, including the price of the original products and other available information.

It is worth emphasizing that the precautionary measures can be accompanied by an inspection visit to the premises of the defendant.  As this visit is performed prior to serving the defendant with the precautionary measures, it is an excellent tool to obtain additional evidence of infringement.

The measures imposed by IMPI can be released if the defendant posts a counter-bond.  The amount of the counter-bond is the bond plus 40%.  There is no legal recourse available to prevent IMPI from releasing the measures once the defendant posts the counter-bond.  However, if the precautionary measures are released and the plaintiff prevails in the infringement action, the plaintiff receives the counter-bond and may further pursue a damages claim.

Unfortunately, requests for detaining patent-infringing merchandise at the borders are not yet very effective.  At several ports or entries, customs authorities still do not have the technical expertise or tools to determine if certain merchandise infringes a patent.

  • Understanding the scope: causes of patent infringement in Mexico

According to Mexican intellectual property law, the scope of patent rights is determined solely by the claims, whereas the specification and drawings or, when applicable, the deposit of biological material, only serve to interpret the claims.  This provision has served caused IMPI to restrict questions of patent infringement solely to the so-called “literal infringement.”  In several cases, however, we have observed plaintiffs trying to expand the scope of claims to incorporate their equivalents. Nevertheless, as of now, there is no official decision from any court affirming this practice.

Mexican law expressly lists actions that may be brought by patent holders. The relevant sections are reproduced below:

“Article 213 - The following shall constitute administrative infringements:

[…]

XI. Manufacturing or developing goods protected by a patent or by a utility model or industrial design registration, without the consent of the owner thereof or without the appropriate license;

XII. Offering for sale or bringing into circulation goods protected by a patent or by a utility model or industrial design registration, in the knowledge that they have been manufactured or developed without the consent of the owner of the patent or registration or without the appropriate license;

XIII. Using patented processes without the consent of the owner of the patent or without the appropriate license;

XIV. Offering for sale or bringing into circulation goods that are the result of the use of patented processes, in the knowledge that they have been used without the consent of the owner of the patent or of the person who holds an exploitation license…”

In our experience, for a plaintiff to succeed on the merits, it must submit evidence that clearly identifies a literal infringement of a claim of the patent in question by the allegedly infringing product, i.e. the claims of a patent must ‘read on’ the product to establish an act of literal infringement. This means that each and every element recited in a claim must have identical correspondence in the allegedly infringing device or process. Lacking even a single element from the product/process makes it literally not infringing of the claim. In addition, there is no contributory, induced or indirect infringement, even if a component is a material part of a patented invention or is knowingly made or adapted such that the final product infringes, e.g. replacement parts.

In this regard, to be liable a defendant must manufacture or offer for sale patented products or must use a patented process.  The sole manufacture, offering for sale or bringing into circulation of a component part of a patented invention is not patent infringement in Mexico. Also, the manufacturing, using, selling, offering for sale or importing of a chemical compound or a drug that is already part of the public domain, if  the chemical compound or a drug is just one element (and not the protected subject matter) of a patented invention, is not patent infringement in Mexico.

As noted in sections XII and XIV above, if a defendant merely sells products that reproduce a patented invention, the plaintiff must also show that the defendant had knowledge that the plaintiff’s rights were being infringed.  In recent decisions, the courts have determined that this knowledge has to be direct and not derived from a general publication that states that a patent exists.  As a result, we suggest sending the defendant a cease and desist letter prior to bringing any action.  Unfortunately, the letter cancels out the “surprise factor” of the request for preliminary measures.

Once IMPI issues its decision, the decision can be appealed either through revision by IMPI and/or a nullity trial at the Specialized Court on IP matters. A final appeal is available before a Collegiate Court on Administrative matters.

Once a defendant is found liable for patent infringement, it will be subject to a fine payable to the government in an amount up to 20,000 days of minimum wage in Mexico.[3]

Finally, neither IMPI nor any other agency can determine or impose damages. The plaintiff can only seek damages directly from a civil court once the case ends and the infringement is declared final.

  • Conclusion

In this article, we have addressed the main evidentiary considerations, general legal rules and resources that a patentee must know when safeguarding rights in Mexico.  The article also highlights how the new changes and challenges over the last decade have guided to IMPI and the Mexican Courts to a continuous evolution in their understanding on the scope of a patent, and have slowly established in Mexico, that patent infringement is direct and literal.

 

[1] Article 192 of the Mexican Industrial Property Law.

[2] Article 229 of the Mexican Industrial Property Law.

[3] At a rate of MXP$16 pesos per US dollar, this amount is approximately US$87,625 dollars.

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