MEXICO Law and Practice Contributed by: Heidi Lindner and Humberto Vega, Arochi & Lindner
Period for Calculating Damages Damages begin to accumulate or be quantified from the moment the violation occurs. However, they are not enforceable until the resolution imposing com ‑ pensation is final. Regarding the payment of interest, Mexican law generally allows the imposition of interest on amounts owed as part of compensation for dam ‑ ages from the time it becomes payable. The calcula ‑ tion and interest rate depend on what is established in the corresponding court ruling and on the legally applicable rates in Mexico. Procedural Moment for Calculating Damages Damages can be considered in two contexts: • in an administrative proceeding at the IMPI, which begins after an infringement proceeding and once the technical resolution is enforceable; or • directly before the ordinary civil courts as part of the technical trial on patent infringement, without the need for a prior administrative declaration of infringement – in this case, within the same reso ‑ lution, the infringement will be declared and the admissibility of compensation for damages will be decided. Deadline for Payment of Compensation for Damages The specific time for payment of damages is not detailed in the LFPPI or in the applicable procedural laws. It is only specified that after both parties have been heard, the judge will grant a reasonable period for the defendant to comply with the payment of the respective compensation. In practice, this period does not usually exceed ten business days. Compensation to the Alleged Infringer for Wrongful Injunction If it is proven that the violation alleged by the patentee does not exist, the alleged infringer will have the right to claim compensation for the damages suffered as a result of the measures granted. Unlike compensation, if the infringement is proven, in this case, there are no indicators of legitimate value or pre-established meth ‑ ods to quantify the amount of compensation, making it necessary for the defendant not only to prove that they suffered economic damage, but also to dem ‑ onstrate the clear causal link between the economic
• Application – this approach is used when the amount the infringer has earned through the infringement can be established. Hypothetical licence price • Calculation – how much the infringer would have paid for a legitimate licence is estimated, consider ‑ ing the commercial value of the infringed right and the existing licence fees. • Application – this method is useful in cases where there is no direct loss of sales or profits, but where a right that would normally be licensed has been infringed. The patentee can freely choose the method that they consider most appropriate for calculating damages, depending on the circumstances of the case and the nature of the infringement. Special Situations for Calculating Damages Regarding the influence of pricing transfer, this may be relevant in situations where transactions between related entities (such as companies in the same group) could affect the calculation of lost profits or realised profits. In such cases, it must be evaluated whether pricing transfer has influenced profits or losses. If the patentee does not have a competing product on the market, the assessment of damages may be more complex. In these cases, the approach may lean towards calculating lost profits based on market projections, or using the hypothetical licence price method, since there are no comparable direct sales. In Mexico there are no specific guidelines for the quan ‑ tification of damages in the pharmaceutical, biophar ‑ maceutical, or medical device industries. Therefore, the quantification of compensation for patent infringe ‑ ment is based on the general principles of damages, following the guidelines and methods above. In this regard, there are no special compensations in this type of industry; Mexican legislation does not expressly contemplate the figure of punitive damages or special compensation, such as triple damages for intentional infringement. Compensation is based on reimbursement for the actual damage suffered.
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