MEXICO Law and Practice Contributed by: Heidi Lindner and Humberto Vega, Arochi & Lindner
process used by the alleged infringer despite trying to do so. 1.7 Pre-Action Discovery/Disclosure In Mexico, there is no discovery procedure before initi ‑ ating the infringement proceeding. However, once the proceeding has begun, the IMPI may, at the plaintiff’s request, order the defendant, or any third party with relevant information, to submit documents, evidence or any information crucial to the case. This is done through a formal request and must be justified, clearly specifying the relevance of the information requested for the ongoing proceeding. Furthermore, in urgent cases or where an infringement is presumed, the IMPI has the power to issue inspec ‑ tion orders to verify the possible commission of acts that infringe the plaintiff’s patent rights. These inspec ‑ tions may include access to facilities, the review of documents, and the collection of samples or evidence that may later be used as a crucial foundation for an infringement resolution. It is important to note that although the IMPI may request this information, the requested party may oppose the delivery of specific documentation through the interposition of a means of defence, such as the Amparo trial, especially in the case of confidential or sensitive information, or if the information is consid ‑ ered directly self-incriminating. Regarding materials obtained in other jurisdictions, these may be admitted as part of the evidence in the proceeding provided that they comply with the formal requirements stipulated by Mexican law regarding the deadlines by which they must be offered, and in the case of public documents, that they are duly legalised or apostilled. 1.8 Search and Seizure Orders In Mexico, the affected owner has the right to request and obtain an inspection visit where the allegedly infringing merchandise can be provisionally seized. Inspection visits must be carried out by an official of the IMPI. During the visit, the official has the authority to collect samples, take photographs, and document any relevant evidence that supports the allegations of infringement.
It is crucial that the request for an inspection visit spe ‑ cifically details the location to be inspected and spe ‑ cific aspects of the infringement to be demonstrated. Additionally, the applicant must provide preliminary or prima facie evidence to substantiate the suspected infringement. Materials obtained in other jurisdictions may be admit ‑ ted as part of the evidence in the proceeding if they comply with the formal requirements stipulated by Mexican law regarding the deadlines by which they must be offered and, in the case of public documents, that they are properly legalised or apostilled. 1.9 Declaratory Relief In Mexico, there is no declaratory relief as in other jurisdictions. However, as a result of infringement or patent invalidation proceedings pending counter ‑ claim, the IMPI may issue resolutions in which the non-infringement of a patent is determined or its inval ‑ idation is declared. Thus, the issuance of these resolutions in Mexico is usually reactive and occurs in response to an infringe ‑ ment claim or a request for invalidation, and not as a proactive declaration by a court or the IMPI. This reflects a more limited approach to declaratory relief compared to other jurisdictions, where parties can actively seek these types of resolutions to clarify their legal position, without being involved in infringement or nullity litigation. 1.10 Doctrine of Equivalents In Mexico, there is no Doctrine of Equivalents. The scope of patents must be interpreted literally accord ‑ ing to the explicit content of their claims. Apparently, there is only one isolated, non-binding court prece ‑ dent regarding this type of claim interpretation. 1.11 Clearing the Way In Mexico, there is no obligation as such to “clear the way”. It is recommended that pharmaceutical compa ‑ nies carry out an FTO before starting the development of a new product with the purpose of identifying possi ‑ ble patent obstacles that could prevent or restrict the launch of the product. A detailed FTO helps assess the risk of infringement of existing patents and provides crucial information for strategic decision-making.
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