Available Enforcement Actions in Case of Patent Infringement in Mexico
An intellectual property right is not complete unless its enforcement can be easily and timely executed. This is pivotal for ensuring the right ecosystem for doing business, attracting foreign companies and investors – especially in innovative and risky areas like the pharmaceutical and biotech sectors. What are the legal remedies available to a company in case of infringement of its IP rights in Mexico?
The most immediate way in case of patent infringement is resorting to the IMPI, the Mexican Institute for Intellectual Property. The parties can file an administrative infringement claim in front of the IMPI: although the process is purely administrative, it resembles de facto a judicial trial. The plaintiff is required to file a formal claim along with evidence of the infringement. The defendant is notified and given a term to respond to the allegation. The evidence is documentary only, as are the reports of expert witnesses. Typically, a lawsuit in front of the IMPI can last between 24 and 48 months in the first stage.
Reaching extrajudicial settlements is another option; however, alternative dispute resolutions are only possible if the parties have signed a written agreement. In all other cases, administrative and judicial authorities are given competence over IP disputes.
As a result of a firm and definitive resolution declaring an infringement, the successful plaintiff can file an action requesting the recovery of damages and losses, although these claims are regular civil claims tried before regular civil courts.
The parties can appeal the decision rendered by IMPI either by filing either an administrative reconsideration recourse in front of the IMPI itself, or a nullity petition tried before the Specialized Chamber on Intellectual Property Matters of the Federal Court of Administrative Affairs (SEPI-TFJA). Filing a nullity petition is usually advisable, as in 95% of cases, the IMPI tend to reconfirm the decision given in the first instance. The usual time frame for the conclusion of a nullity trial is 24-48 months.
SEPI-TFJA decision can then be challenged via an amparo federal trial before the federal circuit courts. The decision taken within the amparo appeal is final, unless substantive constitutional/international treaties violations could be invoked, in which case the Supreme Court may hear a further and last appeal.
Once obtained a definitive resolution, the successful plaintiff can file an action requesting the recovery of damages and losses: these claims need to be filed in front of civil courts.
The right holder also has the option to ask IMPI to issue a provisional administrative order – similar to a judicial preliminary injunction – to stop the allegedly infringing party from manufacturing, distributing or selling the product. The IMPI has the power to seize the infringing products. The plaintiff has to demonstrate their right, the existence of irreparable damage if the products are not seized, the existence of a reasonable concern that the evidence may be destroyed or altered. Moreover, the plaintiff is required to deposit a guarantee for covering the damages caused by the seizure.
In case of patents covering pharmaceutical products, the right owner can pursue another way in addition to the traditional administrative action before the IMPI. It has become common, indeed, to request the annulment of the infringer company’s sanitary registration while pursuing the IMPI route, in the hope that the infringer will accept a quicker and less expensive extrajudicial settlement.