MEXICO Law and Practice Contributed by: Heidi Lindner and Humberto Vega, Arochi & Lindner
In the case of nullity actions through counterclaim, the evidence offered by the owner is generally necessary to defend the validity of the patent. The owner may need to provide evidence to demonstrate the validity of the patent, which may include, but is not limited to, technical data, evidence of novelty, and an inventive step. 1.15 Defences and Exceptions to Patent Infringement According to the LFPPI, an alleged infringer can argue different types of exceptions and defences. Among them are the following: • experimental use – the patent was used for the purposes of carrying out purely scientific or techni ‑ cal experiments, trials, or teaching activities in the private or academic sphere and for non-commer ‑ cial purposes; • “Bolar Exemption” – the patent was used with the sole objective of generating evidence, information or experimental production necessary to obtain a marketing authorisation (MA) for a medication; • exhaustion of the right – the use of the patented invention happened after it had been lawfully intro ‑ duced into commerce in Mexico or abroad; • prior use – the person accused of infringing the patent was already independently using or manu ‑ facturing the invention in good faith before the patent application was filed; and • nullity or invalidity – the patent that is the basis of the action is null or invalid (in this case, the IMPI will refrain from issuing a resolution until the nullity proceeding of the patent that is the basis of the action is resolved). 1.16 Stays and Relevance of Parallel Proceedings In Mexico, the issuance of a final resolution in infringe ‑ ment proceedings can be suspended at the request of the defendant. This suspension is applicable in cases where the validity of the patent that is the basis of the infringement proceeding is being analysed in other proceedings initiated within Mexican territory, whether by the defendant or by a third party. It is important to highlight that proceedings carried out abroad do not have a direct or binding impact on the decisions of the IMPI or the Mexican courts, but they can be guiding
judgments. As such, infringement or nullity proceed ‑ ings cannot be suspended in Mexico due to pending resolutions in foreign jurisdictions. Regarding the requirements and considerations rel ‑ evant to the granting of a stay, the defendant must file a formal request arguing the relevance and direct influence of the parallel Mexican proceeding on the determination of the validity or infringement of the patent in question. The decision to suspend the pro ‑ ceeding rests with the IMPI or the judge responsible for resolving the merits of the issue raised. In terms of process and time, the duration of the sus ‑ pension generally aligns with the estimated timeframe for the resolution of the linked parallel proceeding. 1.17 Patent Amendment In Mexico, it is possible for the owner of a patent to amend their patent at any time, as long as the amend ‑ ment’s objective is to correct an error that does not modify the scope of the invention, or only seeks to limit the scope of its claims. However, in terms of the LFPPI, any request to amend a patent will be rejected if there is a proceeding pending resolution regarding the validity of the patent. In other words, if litigation has been initiated questioning the validity of the pat ‑ ent, the owner will not be able to make any modifica ‑ tion until said proceeding is resolved. 1.18 Court Arbiter In Mexico, the IMPI has traditionally been the authority in charge of resolving first-instance cases related to patent disputes, including pharmaceutical and life sci ‑ ences cases. However, with the issuance of the new LFPPI in 2020, a significant change was introduced, under which ordinary judges in civil matters are also authorised to resolve patent infringement proceedings in the first instance, within a damage claim. Given that this provision is relatively recent, there is currently neither enough information nor enough prec ‑ edents to identify significant differences in practice between the cases resolved by the IMPI and those brought before ordinary judges. Therefore, it remains to be seen how this change in jurisdictions will affect the resolution of cases in pharmaceuticals and life sci ‑ ences, and in patent litigation in general.
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