MEXICO Law and Practice Contributed by: Heidi Lindner and Humberto Vega, Arochi & Lindner
infringement case, if the defendant counterclaims the invalidation of the patent, the processes are carried out separately. However, the final decision of both proceedings is given in a single resolution. Where the invalidation of the patent is declared, the infringement proceeding will be declared without merits, and only if the nullity of the patent is denied will the IMPI or the judge study the merits of the case regarding the infringement. Mexico does not have an opposition proceeding as such. The LFPPI allows the submission of third-party observations within two months of publication of the patent application. However, once the patent has been granted, it is only through the filing of a nullity action by a third party with legal standing that it can subsequently be invalidated. 1.5 Timing for Main Proceedings on Infringement/Validity Regarding the deadlines to file an action, it is essential to consider the following timeframes. • Infringements – five years counted from the moment that the infringing conduct ceases. If the infringement continues over time, the action can be filed at any time. • Nullities – there is no deadline. The action may be filed as long as the applicant has legal standing. Notifications to the alleged infringer or the patentee in the case of nullities are delivered personally. There is no deadline in the law for notifications to be made; however, if the domicile of the party to be notified is within Mexico City or the metropolitan area, in prac ‑ tice, notification is carried out on average within one month. If the domicile of the alleged infringer, or the patentee in the case of nullities, is in another state, the notification may take from two to six months. In infringement and nullity proceedings, the average time to issue a resolution in the first instance is three years (before the IMPI). In the intermediate steps, before the resolution is issued, the deadlines are as follows:
• once the defendant is served, they will have ten business days to respond in the case of infringe ‑ ment actions and one month in the case of nullity actions; • once a response has been made to the claim, the alleged infringer, or defendant in a nullity proceed ‑ ing, will have three days to provide a statement regarding the response; • the scheduling of evidence presentation will depend on the workload of the IMPI, which may set dates ranging from two months to a year; • once the parties have submitted their evidence and rendered their expert opinions, the IMPI sends the file to its patent division so that a technical opinion can be issued (there is no deadline for issuing a technical opinion, which takes one or two years due to the IMPI’s workload); • once the technical opinion has been issued, the IMPI gives the parties ten days to submit their final arguments; and • once the allegations have been submitted, the IMPI has three months to issue a resolution (however, this deadline is generally not respected, with the issuance of the resolution usually being delayed for up to a year). 1.6 Requirements to Bring Infringement Action The main requirement for filing an infringement action is that the patent has been granted. In this sense, the earliest that an infringement action can be initiated is the day after the patent is granted. Although an infringement action can only be filed once the patent has been granted, the patentee has the right to claim damages for infringing activities that occurred after the publication of the application. In the case of process patents, it is possible to reverse the burden of proof as long as one of the following requirements is met: • the product obtained by the patented process is new; or • there is a significant probability that the product was manufactured using the patented process, and the patentee has failed to establish the actual
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