Did you resigtered a domain name and you realised that the same name was registered by someone else? Let’s see how to proceed
Registering a domain name that matches with the trademark is an established course of action for the protection of a company’s IP assets.
In fact, a domain name has the same function as a trademark in the online world: the domain becomes the virtual image of the business.
Sometimes, however, the same domain name and trademark may have been registered by two different owners. The issue is particularly relevant in Brazil, where cybersquatting has been on the rise for several years. But it can also happen that a company registers a domain name identical to a previously registered mark in good faith. As the Brazilian IP law does not regulate domain names, the issue has been tackled by Brazilian Civil Courts, which are still making clarity in a particularly entangled area.
The Legal Panorama: Domain Names in Brazil
Art. 5 of the Brazilian Constitution grants protection to industrial inventions, trademarks and business names but also to other distinctive signs – a category which is likely to include domain names.
Brazil, like many countries, has a “first-to-file” domain name registration policy. FAPESP, the São Paulo Research Foundation, is the organization responsible for registering domain names in Brazil. FAPESP enacted guidelines that prevent some names from being registered: vulgar expressions; words representing predefined terms related to the Internet such as the name “Internet” itself; words reserved for government agencies; and names that can mislead third parties, such as famous marks that have not been applied for by their rightful owners. Apart from these cases, FAPESP doesn’t examine domain name applications and has no authority to intervene in case of domain names identical to existing trademarks.
On the other hand, art.1 of the Resolution 8/2008 of the CGI, the Brazilian Internet Steering Committee, also establishes that it is forbidden to register a domain name that is likely to mislead third parties or that violates someone’s rights.
In a number of cases where the misleading intention was particularly clear, Brazilian civil courts ruled in favour of the trademark owner, taking a strong stance against cybersquatting.
In other cases, even when the bad faith was not established, Courts ruled in favour of the trademark owner if the mark was notorious. In the case Ayrton Senna Promoções e Empreendimentos Ltda. v. Laboratório Infantil Meu Cantinho S/C Ltda., the defendant registered the domain name “www.ayrtonsenna.com.br” to create a fan club to celebrate the famous Brazilian F1 pilot, with no apparent intent to exploit it commercially. The plaintiff opposed the registration on the basis of its trademark registration of the brand Ayrton Senna and on the notoriety of the name “Ayrton Senna”. The court ruled in favour of the plaintiff as the trademark was well-known.
In a more recent case, the Brazilian Supreme Court established that this protection does not extend to generic brands. In this case, the cosmetic brand Paixão – that means passion – opposed the registration of the domain paixao.com.br, a dating website. In this case, the court held that Paixão was not regarded by customers nor officially recognized by the Brazilian PTO as a well-known trademark; the areas of activity of the two companies were different; the mark Paixão was not a distinctive sign, and other trademark registrations containing the word “paixão” already existed. For these reasons, the court ruled against the plaintiff, upholding the defendant’s domain name.
If you need a trademark attorney do not hesitate to contact us. At Moeller IP we have trademark attorneys with years of exèperience.
By Moeller IP Advisors
A recent report by the WIPO placed Mexico among the first 15 countries for the number of patents granted per year.
According to the last data available, in 2016, the Mexican Intellectual Property Office (IMPI) received 17413 applications and granted 8652 patents.
The average pendency time for a first office action is only 3 months, while a final decision is provided, on average, in 36 months.
The pendency time depends on the quality of the application which should be complete, clear and concise; and on the complexity of the claim, which may require longer evaluations.
In order to further increase the speed of the process, the IMPI has signed several Patent Prosecution Highway programs with foreign patent offices. Notably, since 2011, PPH has been signed with the USA, Japan, Spain, Korea, Singapore, China, Canada, Portugal, the European Patent Office, Austria and with the other members of the Pacific Alliance – Colombia, Chile and Peru.
Through a PPH, when an applicant receives a final ruling from a first patent office saying that at least one claim is allowed, the applicant may request a fast-track examination of the corresponding claims to the second patent office.
This can eliminate any unnecessary overlapping, avoiding that the same claim is analyzed twice.
So far the most successful PPH seems to be the one signed with the US – as the pilot program which started in 2011 has been renewed in 2013. In 2016, 20% of applications before the IMPI were filed from non-residents, of which 36% were US applicants. The PPH signed with the EPO, the Japanese Patent Office and the Canadian Patent Office also proved to be particularly popular.
In order to benefit from a PPH, the applicant should make sure that the claims requested in the application, substantially correspond to the claims that had been granted by the office of first filing, that is, they are of the same or similar scope as the claims indicated as patentable/allowable in the office of first filing. It is not possible to benefit from the PPH if the second office has already started the substantial examination of the claim. The applicant should also provide a copy of all the official actions relevant to the patentability issued by the office of first filing.
Finally, the applicant should submit a claims correspondence table, which indicates how the claims in the second application sufficiently correspond to the claims determined to be patentable by the office of first filing. Design applications and utility models are excluded from the PPH.
PPH proved to be particularly useful for industries which are highly innovative and for which it is critical to obtain patent coverage in a short time frame, like mechatronics, biotech and pharmaceuticals.
Some matters, however, may not be deemed as worthy of protection by both offices. For instance, while the US Patent Office would grant patents to treatments, surgical or diagnostic methods, IMPI would not, as, under Mexican Industrial Property Law, those are not considered as inventions.Read More
By Moeller IP Advisors
It is very well known that the backlog is probably the main issue affecting the Brazilian patent system. A patent may take an average of 7-10 years for being granted – and although the Brazilian Patent Office, the INPI, has established a series of special programs or patent prosecution highways to speed up the process for some categories of patents or applicants, these solutions have only partially reduced the issue.
The Automatic Grant System
The Brazilian Government is expected to launch soon an emergency and very controversial measure to cut down on the country patents backlog. According to the plan, INPI will automatically grant around 231.000 patents by 2020, provided the applications do not concern pharmaceutical products.
What does “automatically” mean? The plan provides that all the unopposed applications filed before the rules become effective will be examined by the INPI through a simplified and accelerated examination procedure, not the traditional substantial procedure.
Although these measures seem extreme and even some INPI examiners threatened to go on strike in the wake of the new plan- the patents and international law committees of the Brazilian Intellectual Property Association established that the new rules are not in breach of articles 27 and 62 of the TRIPS Agreement.
The measure contains an “opt-out” clause that provides that the applicant may opt out from the automatic procedure within 90 days and request that the application be subject to the traditional, substantive procedure.
The exact details and the timing of implementation of the measure are unknown. Strategically, it may be a good idea to decide to opt-out if the application concerns a commercially very important patent. Indeed, there are chances that obtaining a patent without substantial examination will reduce the likelihood of obtaining preliminary injunctions by Courts.
On the other hand, applications concerning products with a short lifespan could fully benefit from a shorter, automatic granting procedure.
Competitors also have the possibility to file oppositions to the applications, that will be removed from the automatic grant system. These pre-grant submissions must be filed before the emergency measure comes into effect.
Strategically thinking, companies may decide to submit oppositions with the sole intent of removing a competitor’s applications from the automatic grant system.
The plan had been made available for public comments – that could have been submitted until the 31st of August 2017. It seems, however, that the INPI will disregard some of the proposals made by local associations that are likely to burden the process, like, for instance, giving the applicants the possibility of amending claims prior to the grant or requesting substantive examination after grant.
Therefore, it is to be expected that the INPI will not accept any amendments made after an application is filed and the applicants need to make sure that the original claims provide adequate coverage.
The new measure, although controversial, could really help reduce the backlog burden that has been plaguing the INPI. Under normal conditions, the Brazilian INPI would take 13 years to examine all the pending applications and even if the number of examiners was doubled, as many suggest, it would still take eight years to eliminate the backlog.
By Moeller IP Advisors
The concept of the Internet of Things (IoT) is becoming increasingly popular and expert are talking about a “fourth industrial revolution” when referring to the potentials that IoT technologies have to offer.
In simple terms, the Internet of Things consists of a network of physical devices which are connected to the internet or are using wireless technologies between each other. Heart monitoring implants, wearable gears that collect our sleep patterns, webcams that can be activated and monitored through a phone app, or even coffee makers that allow you to schedule brews with a click of the mouse are just ubiquitous and everyday examples of the IoT.
The potential of this technology is enormous for industrial and agricultural purposes as well, like smart supply chain management, smart buildings, smart cities, soil and livestock monitoring and pest control, just to name a few.
The IoT market in Brazil
The analyst firm Gartner predicted that by 2020 there will be over 26 billion connected devices in the world. Report from Goldman Sachs and Cisco seem to confirm this forecast – estimating around 20 billion of connected devices in 2020, going up to 100 billion by 2050.
McKinsey estimates that the global IoT market, considering also the indirect gains, could have an impact of $3.9 trillion to $11.1 trillion a year by 2025. For McKinsey, 38% of the value generated by IoT could be captured by emerging markets. Brazil could become one of the major players in the new industry: according to a research by Frost and Sullivan, Brazilian Industrial IoT market revenue will increase from $1.35 billion in 2016 to $3.29 billion by 2021, growing an average of 19.6% per year.
Cisco predicted that Brazilian IoT market value could reach $352 billion by 2022 – together with the indirect gains: $70 billion would come from the public sector and $282 billion from the private sector.
The Brazilian Bank for Economic and Social Development (BNDES) announced last year that around $153 million will be made available for funding IoT projects. Shortly after, the BNDES, together with the Ministry of Science, Technology, Innovation and Communication (MCTIC) and the Ministry of Planning, Budget and Management (MP) launched the national strategy “Internet of Things: An action plan for Brazil” detailing the policies for the deployment of the Internet of Things technologies in the country from 2018 to 2022.
Legal Implications of the IoT technologies in Brazil
The legal consequences of the IoT are as pervasive and unpredictable as the technology itself and are likely to be particularly relevant when it comes to intellectual property protection. Indeed, in order to successfully operate with other systems, the IoT devices will have to be able to work together: and given the complexity of a single device, the potential for infringing third parties patents is high. For instance, a factory monitoring control system that collects data from interconnected devices to improve industrial performance relies on a series of sensors developed by different companies. How to integrate third-party technology without infringing their utility patent?
Moreover, most of the IoT devices produce data – that is then recorded and analyzed. In particularly complex systems, where a device manufactured by a company connects to a device deployed by another company, it becomes unclear who owns that data. For example, who owns the data generated by a sensor implanted into a patient’s heart – that connects to a software which collects and elaborates that data, so that the patient’s doctor can read it and evaluate it? It’s not clear – and the law has not defined it yet – if the data belongs to the patient, or to the producer of the sensor or rather to the clinic that stores the data in its IT system.
In the coming years, Brazil will have the challenging task of encouraging investments in the IoT sector, while establishing an effective regulation, especially when it comes to protecting the Intellectual Property of all parties involved.
What’s the procedure for opposing a trademark registration in Argentina?
In this post we are going to clarify how to opposing a trademark registration in Argentina. Keep reading.
According to data from the Argentine Patent Office (INPI) in 2016, there were 71.020 trademark applications and 14.211 trademark oppositions, around 20% of all applications.
The Argentine Trademark Law 22362 establishes that every trademark application is followed by a formal examination carried out by the INPI. After the examination, the application is published in the Trademark Bulletin (Boletín de la Dirección Nacional de Marcas). After the publication, third parties have 30 days to oppose the trademark application if they think there may be a potential infringement of their intellectual property rights.
The Opposition Proceedings
Once an opposition is filed against a trademark application, the applicant is given a one-year term from the date he is officially notified of the opposition: within this term, the applicant has to obtain the withdrawal of the opposition through direct negotiations with the opponent, or file proceedings to the Argentine Federal Courts.
The difference with other legal systems is apparent: the INPI is neither allowed to decide on the merit of the opposition, nor can it provide advice to the parties. The opposition procedure takes place between the parties or can ultimately be referred to a Court, but it is never within the competence of the INPI.
Most of the oppositions are dealt and solved through amicable agreements – only a very little percentage reaches the trial stage. Agreements can follow informal, voluntary negotiations between the parties after which the applicant generally agrees to exclude some of the products or services from the trademark application. Within one year from the notification of the opposition, the applicant should provide the INPI with evidence that an agreement has been reached with the opponent. In this case, the INPI will review the agreement between the parties. The INPI has the power to reject the agreement in case the trademarks are similar and may create customer confusion.
If the INPI deems the agreement valid, it will proceed with the next steps of the trademark registration.
It can also happen that amicable negotiations fail or are not pursued by the parties in the first place. In this case, the applicant can directly resort to Court proceedings. It is interesting to note, however, that in order to resort to any judicial action, the applicant must previously comply with a mandatory mediation proceeding. Mediation proceedings were introduced into the Argentine legal system in 1995 and are compulsory for most civil matters. The proceeding has to terminate within the term of one year from the notification of the opposition.
This mediation seems a useless step, provided that the parties had the chance to resort to negotiation before. In reality, this mandatory mediation seems to be effective: when the opponent is summoned to a mediation hearing, the applicant signals that he or she is serious about going to trial, and substantial efforts are made to settle the case in this phase.
If the opposition is not withdrawn within the one-year term and the applicant does not start Court proceedings within the same term, the application is considered abandoned.
If you need an trademark attorney contact us. At Moeller IP we have trademark attorneys with years of experience.Read More
By Moeller IP Advisors
Research and production costs for developing pharmaceuticals are extremely high, especially for biological drugs. Biopharmaceutical companies can expect to spend up to US$ 1.3 billion for developing and testing a single drug, and the costs are constantly increasing.
The expiration of the exclusive rights conferred by patents causes a further profit loss – which has been estimated around US$ 70 billion between 2010 and 2024.
Pharmaceutical companies have developed a way to extend the profitability of patented drugs: they test molecules whose patents are about to expire or have expired and develop biosimilar drugs at a much lower price than the original pharmaceutical.
Biosimilars share an identical protein sequence and common amino acid sequence with the originals and have similar characteristics, efficacy and safety. They can be developed and tested quickly at a fraction of the cost, they need around 6 to 9 years of clinical trials. In some cases, biosimilars can also be patented.
Argentina’s biopharmaceutical industry
In the 80’s, Argentina was a leading initiator in South America for biotechnological research. According to a report of the World Bank, Argentina’s investment in R&D of new pharmaceuticals is still among the highest in the region, although it is much lower than the average investment of other developed countries around the world.
Public funds to support the development of the biopharmaceutical research industry exist, but they are not significant and the median expenditure on R&D for each company is relatively low – around US$ 250,000 per year in 2012. In 2007, Argentina adopted a National Biotechnology Plan. The Plan, however, was never properly implemented.
Exports of pharmaceuticals reached US$ 850 million in 2014: among this, US$ 55 million came from APIs and biopharmaceutical products. The main developers of biopharmaceuticals in the country are Instituto Malbrán, Elea, Instituto Massone, Beta, and Biosidus.
In 2013, Laboratorio Elea produced Novex, a biosimilar of the oncologic drug Rituximab: so far, this has been the only biosimilar produced by an Argentine company, which has received marketing approval in the country.
Regulation of the sector
In Argentina, the authority responsible for approving new pharmaceuticals is the National Drugs, Food and Medical Technology Administration (ANMAT).
ANMAT has established several regulations concerning biosimilars. A pharmaceutical is considered biosimilar if it is derived from an original product, called comparator, with which it shares common features.
In particular, ANMAT Regulation 7075/11 establishes the requirements for the registration of biological pharmaceuticals, while the ANMAT Regulation 7729/11 sets the prerequisites for registering biological drugs whose composition and therapeutic use shares a common background with other biological drugs previously authorized by ANMAT.
Finally, ANMAT Regulation 3397/12 approves the specific requirements for the submission of applications for the authorization of biological drugs and monoclonal antibodies obtained by recombinant DNA methodologies.
Applicants that want to register biosimilars at the ANMAT must provide studies demonstrating that the biosimilar share common features with the comparator in terms of the identity, potency and purity of the product.
The applicant should also provide clinical trials, studies (‘in vivo’) and reports on the relationships between possible adverse effects and molecular characteristics of the biosimilar.Read More
By Moeller IP Advisors
Gene therapy is a pioneering medical technique which consists in introducing genes or other genetic materials into a patient’s cells for therapeutic purposes. Genes are inserted to correct or replace abnormal or mutated genes into the patient’s body. Gene therapy has been developed to cure hereditary genetic conditions but late discoveries seem to give partial evidence that this technique could also have a promising role in treating acquired conditions like cancer.
However, since gene therapy is an extremely innovative technique, in its early stages, the legal framework has to effectively keep up with it, especially in developing countries like Mexico.
Patentability Issues in Mexico for Gene Therapy Treatments
It is clear that protecting the creation of gene therapy techniques can become pivotal for allowing the development of these treatments. Is gene therapy currently protected under Mexican Intellectual Property Laws?
Most of the time, gene therapy involves a surgical procedure for inserting the genetic materials into the patient’s body. This is particularly critical: indeed, it is well-known that Mexican Industrial Property law, in line with many other IP laws in South America, does not allow the patentability of medical methods.
Article 19 of the section 7 of the Ley de propiedad industrial establishes that “surgical, therapeutic and diagnostic treatment methods for the treatment of the human body and those related to animals” are not to be considered inventions.
This is particularly important. While gene therapies do not only involve innovative procedures, but also tangible components like modified cells or other materials, it is undeniable that the surgical method assumes a central role. Until the patentability is denied to the method, the whole therapy cannot be effectively protected by IP law in Mexico.
Legal Issues related to Health Safety of Gene Therapy Techniques in Mexico
Another criticality arises when the necessary health safety assessment comes into play. Indeed, although gene therapies can be considered as extremely promising techniques, they are still in most cases carried out under experimental conditions. To date, gene therapy has failed to prove its effectiveness in the totality of examined cases and its safety for use is also under scrutiny.
Moreover, the legal criteria for evaluating the safety and effectiveness of this new technique are still not properly defined in Mexico. Indeed, the Mexican General Health Law establishes that healthcare providers must be licensed and authorised by Cofepris, the Federal Commission for the Prevention of Health Risks, before they start experimental medical procedures.
But specific safety guidelines that the Cofepris can follow for granting approval to gene therapies currently do not exist.
The most immediate consequences of such an unclear legal framework is that, on the one hand, pharmaceutical and research companies are not encouraged to settle and invest in Mexico; on the other hand, the unclarity in the legal regime has created a panorama of clinics and providers that perform experimental treatments with little or no evaluation of the health risks by the competent authorities. Given its proximity to the US, Mexico could benefit from a flux of investments, companies, and, last but not least, patients – motivated by the relatively lower costs of the infrastructure and the personnel. However, the normative gap needs to be filled as soon as possible.Read More
By Moeller IP Advisors
Domain Names and Trademark
Do you want to know what to do if someone register a domain name using a small variation of your trademark? Keep reading.
In the mid-1990s and early 2000s, Brazil was overwhelmed by what commentators described as a real “avalanche” of cybersquatting cases: thousands of domain names were registered using a small variation of a trademark name, in order to mislead consumers and divert traffic away from the legitimate websites. The relative facility with which second-level domain names could be registered in Brazil and the abundance of second-level domain names choices increased the phenomenon. In the latest years, the Brazilian legal system has evolved in order to acknowledge cybersquatting as a serious legal infringement and anti-competitive conduct, and has equipped itself with a series of instruments aimed at protecting trademark owners’ rights.
If you need a trademark attorney contact us. At Moeller IP we have trademark attorneys with years of experience.
Registration of ‘.br’ domains: priority to trademark owners
Since 1995 Registro.br, is the entity which is responsible for registering .br domain names in Brazil acting as the official registrar.
Registro.br cannot prevent the registration of a domain name which is identical or similar to a preexisting trademark, except in case of a well-known trademark. However, in case of frozen domains, Registro.br set up a procedure that recognizes trademark holders a priority in registration. Every few months, a list of frozen domain names is published; companies interested in one or more of the frozen domains may apply for registration within a period of approximately 15 days. If more than one subject applies for the same domain name, registration will be granted to the trademark owner, that has to prove their legitimate interest through a certificate issued by the PTO.
In 2010, the Brazilian Network Information Center – NIC.br, established an Administrative Dispute Resolution Proceeding for .br domain names, also known as SACI-Adm. According to the SACI-Adm, in case of supposed infringement, the trademark owner has the option to refer to an arbitration panel. Claims must regard domain names which are identical or similar to trademark previously applied for or registered before the Brazilian PTO; famous trademarks even if not applied for or registered in Brazil; or trade names, civil names, family names, pseudonyms or well-known nicknames, over which the claimant has a prior right. The procedure lasts for 90 days with the possibility of extensions – which cannot total more than 12 months. The claimant should also demonstrate that the registrant does not have a legitimate interest in the domain name or that it was registered in bad faith.
The procedure constitutes a real improvement as it allows a quicker and cheaper dispute resolution if compared to the traditional civil proceedings.
Finally, the Courts also showed to be particularly receptive to the issues of the trademark owners. In the Eurotent case, in 2002, the 17th Court of Appeals of Rio de Janeiro State Court established that both trade names and trademarks should be protected against domain names capable of misleading consumers or creating confusion and ordered to cancel the registration of the disputed domain name, assigning its rights to the trademark owner. In 2007, the Sixth Court of Appeals of the State Court of Rio Grande do Sul granted a preliminary injunction to prevent the use of a domain name that could have been confused with a previously registered trademark. Several other decisions have subsequently confirmed this case law, supporting an orientation that favours trademark owners.
By Moeller IP
Brazil, in line with other South American countries, like Mexico or Argentina, does not consider new plant varieties eligible for patent protection. Cultivars can be protected through the Brazilian Plant Variety Protection Law enacted in 1997, Law 9456/1997, and that has incorporated the provisions of the 1978 UPOV Convention.
The PVP law grants the breeder a substantial set of rights: the breeder has the exclusive right to produce and commercialize the plant variety in Brazil and third parties need to obtain a previous authorization from the owner in order to do that. The protection starts from the date of the Provisional Certificate of Protection and lasts for 15 years for all the vegetal species except for grapevines, fruit trees, and ornamental trees, including their rootstock, in which case it lasts for 18 years.
Patentability of New Plant Varieties
Article 10 incise IX and article 18 incise III and single paragraph of the Brazilian IP law, Law 9279/96, expressly deny patentability to new plant varieties. In particular, article 10 caput and incise IX state that “all or part of natural living beings and biological materials found in nature (…) including the genome or germoplasm of any natural living being, and the natural biological processes are not considered inventions “, so they are not patentable. To reinforce this idea, article 18 caput, incise III and single paragraph states that “all or part of living beings” are non-patentable, except: “transgenic microorganisms that satisfy the three requirements of patentability … and which are not mere discoveries.”
In the single paragraph, transgenic microorganisms are defined as “organisms, except for all or part of plants or animals, that express, by means of direct human intervention in their genetic composition, a characteristic normally not attainable by the species under natural conditions.”
Moreover, according to the criteria set by INPI Brazil in the Resolution No. 144/2015, are to be considered microorganism all the bacteria, archaea, fungi, unicellular algae that are not classified in the kingdom Plantae or the Protozoa.
Combined protection through patents and PVP law
Therefore, microorganisms which have been genetically modified and are used for transforming or improving a plant variety could be entitled to protection through patents, provided they present the requisites of novelty, inventive step and industrial applicability. However, the protection by patent doesn’t include the plant itself, which, being not patentable, will still be protected through the PVP law.
In this sense, the breeder would have a different set of legal tools to protect its interests: a patent to protect the transgenic microorganism, the process of plant modification using or not a microorganism and the traditional PVP law to protect the genetically modified cultivar obtained.
This would not amount to a case of a double protection and therefore it would be perfectly legal under the UPOV – as the object of protection is not exactly the same: the microorganism in the former case, the plant in the latter.
Plant varieties and inventions, which are the basis for the granting of intellectual property rights, are in this sense ontologically different: plant varieties result from the improvement work of breeders while the invention can be, for instance, a controlled process of gene insertion into the plant which makes the plant resistant to a pesticide or to a parasite.
In other words, coexistence between plant variety protection and patent protection is possible and it is advisable to fully protect breeders’ interests and investments.
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.