MEXICO Law and Practice Contributed by: Eduardo Kleinberg, Adolfo Athié, Claudio Ulloa and Juan Carlos Hernández, Basham, Ringe y Correa S.C.
ulate ownership allocation and remuneration internally through institutional IP policies or agreements, while ensuring that inventors are properly credited. Patent assignments and licences, in order to be effec- tive against third parties, must be recorded before the IMPI. For recordal purposes, the agreement must identify the parties, the patent or application involved, and the scope of rights granted or transferred. The agreement must be duly executed and accompanied by payment of the corresponding official fees. Until recordation is completed, the assignment or licence is not enforceable against third parties. 1.5 Patent Infringement and Defences Mexican law provides that the scope of protection conferred by a patent is determined by the granted claims. Accordingly, infringement is assessed primar- ily on a literal basis. Mexican law does not expressly recognise the doctrine of equivalents, and therefore protection is generally limited to the literal wording and technical scope of the claims as granted. Patent infringement grounds are contained in Article 386 of the FLPIP, which sets out specific infringing acts. The most common include, among others, man- ufacturing, selling, using, offering for sale, or importing a patented product or a product obtained through a patented process without authorisation. Defences are determined on a case-by-case basis; however, Mexican law expressly provides that the rights conferred by a patent shall not have effect against the following. • Use of a patented invention (including manufacture and importation) for exclusively scientific or tech- nological research purposes of an experimental, testing, or educational nature, provided that such activities are conducted in a private or academic context and without commercial purposes. • Bolar-type exception: use, manufacture, sale, or importation of a product protected by a valid and enforceable patent, exclusively for the purpose of generating tests, data, information, or experimental production necessary to obtain sanitary or regula- tory approvals for medicinal products intended
for human health, provided that such activities are strictly limited to that regulatory purpose. • Exhaustion of rights: no infringement occurs in relation to the use, sale, or acquisition of a patent- ed product after it has been lawfully placed on the market by the patent holder or with its consent. • Prior use. • Temporary presence: when the patented invention forms part of vehicles, vessels, aircraft, or other means of transport belonging to another country, provided that such means of transport are tempo- rarily or transitively present in national territory. • Use of living matter after lawful market entry. 1.6 Patent Enforcement and Remedies IMPI is the authority with jurisdiction to resolve patent disputes in Mexico, including actions related to pat- ent invalidation and infringement. Decisions issued by IMPI may be challenged through a nullity action, which is adjudicated as a new proceeding before the Federal Court for Administrative Affairs (FCAA). The decision of the FCAA may, in turn, be challenged through an amparo proceeding before the Federal Circuit Courts (FCC). IMPI is the only authority legally empowered to declare the invalidity of a patent. However, the FCAA or the FCC may order IMPI to issue a corresponding invali- dation or infringement decision when resolving chal- lenges brought before them. Mexico is not bound by decisions issued by foreign courts or authorities with respect to patent validity or infringement. In practice, obtaining a final and unappealable deci- sion in patent litigation may take approximately four to six years, depending on the complexity of the case and the number of appeals pursued. Since 2020, it has been possible for patent holders to seek damages directly before civil courts, without first completing an administrative infringement pro- ceeding before IMPI. Nevertheless, if a counterclaim challenging the validity of the patent is raised, such counterclaim falls exclusively within IMPI’s jurisdic- tion. In those circumstances, the civil court must stay the proceedings until the validity of the patent has been confirmed by IMPI.
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