AIPPI
International Association for the
Protection of Intellectual Property
Buenos Aires
10 – 15 October
“Contributory patent infringement in Mexico”
Daniel Sánchez y Béjar
Overview
Civil law originates in Roman law influenced by French law (Napoleonic
Code).
Written formal proceedings.
Intellectual Property is regulated by administrative Laws, and enforced
before administrative and judicial authorities.
Administrative and judicial authorities should observe the wording of the
appropriate statutory law.
Jurisprudence for interpretation and/or application of the statutory law.
Jurisprudence is formed by five equal, uninterrupted and unanimous
precedents of courts at the same level.
Overview
Only Supreme Court’s jurisprudence is mandatory for all the judicial and
administrative authorities. Jurisprudence of the Circuit Courts and others
Courts are binding only to lower courts.
Patent Litigation before the Mexican Institute of Industrial Property (IMPI).
Enforcement of Patents in Mexico
Direct Infringement:
Import
Make
Use
Offer to sale
Sale
Enforcement of Patents in Mexico
- The patented Invention
- Literal Infringement:
- The accused device must meet all the limitations of the patent
claim.
- Doctrine of equivalences. Not tested.
- Patent owner has the burden of the proof for patented
products.
- In some cases, burden of proof can be shifted to defendant
when enforcing a patented process.
Enforcement of Patents in Mexico
- Without authorization or right.
- License
- Exhaustion of rights
- Experimental / Non commercial use
- In the Mexican Republic.
- Patented products used in a vehicle in transit.
Enforcement of Patents in Mexico
- During the term of the patent.
- 20 years as of the filing date
- Damages are available only for infringement occurred after
the publication of the application.
- Infringements occurred during the term of the patent can not
be pursued after patent term.
Enforcement of Patents in Mexico
- Contributory infringement.
- Not provided in the IPL
- Definition under 35 U.S.C. § 271 (C).
"… (c) Whoever offers to sell or sells within the United States or imports
into the United States a component of a patented machine,
manufacture, combination, or composition, or a material or apparatus
for use in practicing a patented process, constituting a material part of
the invention, knowing the same to be especially made or especially
adapted for use in an infringement of such patent, and not a staple
article or commodity of commerce suitable for substantial noninfringing
use, shall be liable as a contributory infringer…”
Enforcement of Patents in Mexico
- Neither this conduct nor a related definition thereof is provided in
the IPL.
- General cause for unfair competition Article 213, Section I. Industrial
Property Law:
“Article 213. The following are administrative infringements:
I. Commission of any act contrary to good practices and custom
in the industry, commerce or services, which implies unfair
competition and is related to matters regulated in this Law…”
Enforcement of Patents in Mexico
- “Nula poena sine lege”
- Only activities prohibited by the Law can be punished.
- General cause for unfair competition
Vs
- “Nula poena sine lege”
(Not tested)
- Precedents in enforcing this cause of action against activities not
provided by the IPL.
Remedies and actions
A. Preliminary and permanent injunctions.
- Before filing an infringement action, or
- at any time during the litigation.
Requirements:
- File a written petition.
- Prima facie proof of infringement.
- Show marking.
- Post a bond.
Remedies and actions
B. Types of injunctions available.
- Seizure of infringing product.
- Orders to stop commercialization.
- Border measures.
- Orders to withdraw from circulation:
-
-
Infringing products.
-
Articles, packing, wrappings, stationery, advertising material
-
Ads, signs, posters, stationery
-
Utensil or instruments destined for or used in the manufacture,
production or obtention of the infringing product.
Injunctions to third parties.
Prosecution of a patent infringement
1. Filing a written claim containing all the arguments of
infringement along with all the evidence to prove it.
2. Defendant has 10 working days to respond in writing the claim
along with the all proofs to support its defenses.
3. If expert witness testimonies are offered by the parties, IMPI
grants a discretional time to be rendered.
4. Official file is send to the Patent Division of IMPI for the
Infringement technical analysis.
5. Parties have a common period of 10 working days to submit
allegations (closing arguments)
6. Resolution.
Punishment:
I.
Fine up to 20,000 days of minimum wage ($70,000 USD,
approximately)
II.
Additional fine, 500 days of minimum wage
III.
Temporary closure (never applied)
IV.
Definitive closure (never applied)
V.
Administrative arrest (never applied)
FORMULA FOR 40% OF
DAMAGES (PATIENCE)
Appealing Process
Circuit Court
Revision
Nullity Trial
FCTAA
Specialized Court
IMPI
Indirect Amparo
(Appeal-District Court)
Time line
7 to 14 years
I
II
IV
III
Publication of Application 18 months
Patent granted
Prosecution
3 to 6 years
Possible
infringement
actvity
Infringement Action filed
before IMPI
3 to 5 years
Circuit Court
Revision
1 to 2
years
1 year
Appeal
before
FCTAA
2 to 3 years
1st
Court
2 to 4
years
2nd
Court
1 to 2
years
Damages / Civil Judge
MUCHAS GRACIAS
Daniel Sánchez y Béjar
Attorneys at Law-Engineers
Intellectual Property,
Corporate and Commercial Law
Tel. (+52 55) 5322 30 00
Fax (+52 55) 5322 30 01
Email: dsb@olivares.com.mx
www.olivares.com.mx