Patent Litigation 2023 Comparisons

In Mexico, inventions can be protected through patent rights, utility models, designs, layout designs (topographies) of integrated circuits and vegetal varieties. These intellectual property rights are based on statutory law. Specifically, they are included in the new Federal Law for Protection of Industrial Property (FLPIP).

A right arises for a granted patent/registration through the filing of a patent application with the Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial, or IMPI). The application must contain all the information regarding the inventor and, if the right has been assigned, the information of the assignee. It must also contain formal documents such as the assignment and the power of attorney document. The inventor or the applicant may file the application themselves or through an agent. In addition, it is possible to claim priority from a previous application filed in a different country that is a member of the Paris Convention for the Protection of Industrial Property, if the claim is made within the 12-month term provided for such effect. A certified copy of the priority application must be filed within three months from the filing date, and it must include its full Spanish translation.

The application may also be filed as a National Phase Patent Cooperation Treaty (PCT) Patent Application, for which Mexico is a 30-month term country. If the information regarding the inventors, applicants and priority applications is the same as the information found in the international application’s publication, the assignment and priority document are not required, as they are in Paris Convention applications. The application is studied by a formal examiner at IMPI, who will determine if there are any formal documents missing and if all documents are in good order. The application must contain the invention’s specification, claims and drawings, in Spanish. However, it is possible to file the application in a different language, in order to avoid missing the filing due date.

The examiner requests a Spanish translation during the formal examination. The application must be published in the Mexican Industrial Property Gazette as soon as possible following the expiration of a period of 18 months from the national filing date, provided that all formalities are deemed complete. After the publication has taken place, the application is studied as soon as possible by a technical examiner at IMPI and, if deemed necessary, an official action is issued, requesting clarification or changes to the application. Up to four official actions can be issued and, if the examiner determines that the application complies with all requirements, a notice of allowance is issued, granting a four-month term to pay the grant fees and five annuities, which include the year of grant and four additional years. If this is not done, the application is denied. Please note that the annuity payment is not required during the prosecution of the application.

The grant procedure currently takes four to five years from the filing date, depending on the number of official actions issued by the technical examination department of IMPI and the complexity of the invention.

In Mexico, either the inventor or the owner of the patent, if it has been assigned by the inventor, may personally initiate the grant proceedings, meaning that they sign the application form, or they may appoint an agent, who does not need to be a patent lawyer, but only needs to have an address in the Mexican territory.

The costs of a grant can vary widely since they depend on a series of factors, such as the complexity of the invention, the number of priorities, the number of claims or the number of official communications issued by IMPI. However, for an average application with 20 pages of 30 lines in English, two priorities and ten claims, the cost would be around USD8,000–9,000.

The term of a patent right is 20 years; that of a utility model is 15 years; that of an industrial design, five years (renewable each five years up to a maximum of 25 years), and that of layout designs (topographies) of integrated circuits, ten years from the filing or legal date, which is the national filing date for Paris Convention applications, or the international filing date for National Phase PCT applications. The FLPIP provides for a compensation procedure although, it is yet to be seen how such a procedure will actually develop.

Term Extensions

When, during the prosecution of a patent application, there was an unreasonable delay attributable to IMPI, a supplementary certificate can be sought for IMPI to adjust the term of the patent if it is established that the procedure for granting a patent exceeded five years from the Mexican filing date and the date on which the application was approved for grant.

Within the period of five years, no account shall be taken of the time engaged in resolving the examination of form, the actions or omissions of the applicant tending to delay the procedure or those which are beyond the control of IMPI, as well as the periods attributable to force majeure.

The application for a certificate must be made at the time of payment of the final fees for granting the patent and may be requested only once.

It should be noted that the supplementary certificate is unfair, as it arbitrarily provides for compensatory time to offset the time lost in the patent process, by allowing one day of compensation for every two days of delay. It is reasonable to ask what the logic behind the rule of one day of compensatory time for every two days of delay is. Would it not have been better if the formula allowed one day of compensatory time for one day of delay? In other words, if a statutory rule does not have a logical underlying rationale, it is likely that such a rule would be considered unconstitutional.

USMCA

According to the former North American Free Trade Agreement (NAFTA), now replaced by the United States-Mexico-Canada Agreement (USMCA), the owner of a patent could seek compensation for lost patent term time if IMPI took more than three years to grant the patent. The NAFTA treaty is enforced on all patent applications filed before 1 July 2020. In this regard, the authors’ firm has successfully obtained a favourable decision in which, according to NAFTA, the lost enforceable time of a patent filed before 1 July 2020 was compensated with three additional years. This new precedent has already been published in the Official Gazette dated 8 January 2021 as a relevant case entitled: “Patents. When there are delays attributable to the administrative authority in a patent’s approval, its validity may not be less than 17 years counted from the date of its granting.” The precedent was issued by the Supreme Court of Justice in the Bayer case and is in full force and effect for all patents filed before 1 July 2020.

Rights

The patent holder has the right to an injunction and may claim damages from third parties even if the illegitimate use of their patent was made before granting, provided that the application had already been published.

If the subject matter of the patent is a product, the patentee has the right to prevent others from making, using, selling, offering for sale or importing the patented product without their consent.

If the subject matter of the patent is a process, the patentee has the right to prevent others from using that process and from using, selling, offering for sale or importing a product obtained directly by that process, without their consent.

Obligations

The owner must use the patent in the Mexican territory, within three years of the grant date or four years from the filing date, whichever comes later, in order to avoid a third party requesting a compulsory licence before IMPI.

Public Information Listing Applicable Patents

Information and clinical data related to an IP right is classified information and therefore privileged and confidential; as a result, it is not accessible to third parties, including applicants for generics, according to international treaties such as Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights and Articles 20.48 to 20.51 of the USMCA (formerly NAFTA), and in accordance with domestic legislation. Namely, pursuant to:

• the Federal Commission against Sanitary Risks Guideline (COFEPRIS Guides for Data Exclusivity, published on 19 June 2012);
• Article 168 of the Federal Law for Protection of the Industrial Property; and
• Article 116 of the General Law of Transparency and Access to the Public Information.

No further means of protection are currently available under the FLPIP for patented inventions after their 20-year term has lapsed. If the patent application took more than five years to be granted, a litigation strategy could request compensation for the time lost because of the administrative delay, based on NAFTA/USMCA. No further protection after lapse is provided (ie, there is no clinical data protection, although same are currently treated as industrial and/or business secrets).

According to Mexican patent law, third-party observations can be made within two months of the patent application being published. The observations may or may not be taken into consideration for the examination of the patent, depending on the examiner’s criteria.

Against a refusal to grant a patent, two actions may be used. The first is a reconsideration appeal, which is filed before IMPI, and the second is an appeal filed before the federal courts.

The failure to pay annuities will result in the loss of the patent right. The maintenance fees are paid every five years after the grant of the patent and must be paid five years in advance. If the inventor is also the applicant, they may pay one annuity at a time. The first five annuities are paid together with the grant fee. The annuity payment must be done in the anniversary month that corresponds to the filing or legal date. There is a six-month grace period to pay the annuities. If the annuities are not paid during the regular term or the grace period, there will be an additional six-month term to file a reinstatement request.

The current costs of annuities are:

• a professional fee of USD250 every five years;
• an official fee for patent annuities from the first to the fifth year of USD80 each year;
• an official fee for patent annuities from the sixth to the tenth year of USD92 each year; and

• an official fee for patent annuities from the 11th to the 19th year of USD105 each year.

As mentioned, a post-grant proceeding include the following:

• a supplementary certificate – akin to the EU’s supplementary protection certificate – to adjust the term of the patent is established for cases in which the procedure for granting a patent exceeds five years from the filing date, where this is directly attributable to IMPI due to unreasonable delays;
• a licence agreement; and
• the payment of annuities to keep the patent in force.

Infringement actions and temporary restraining orders are available.

Damages

A rights-holder may claim damages through two different procedures: directly before the judiciary (either federal or state), by means of a civil or commercial action and without the need to obtain a definite infringement ruling to make the claim, or through IMPI, through a motion.

If a counterclaim for the annulment of the respective patent, registration or publication is filed, the court shall suspend the procedure until the respective judgment is entered.

To warrant the damages before the judiciary or IMPI, it is necessary to demonstrate wrongful conduct, the harm caused and a direct causal relationship between the two.

Criminal Actions

Criminal action is also an option when there are trade marks or trade secrets. Repeated administrative infringements of the Law are no longer a crime; a definition of trade mark forgery and a test to demonstrate such crime have been included. Crimes related to industrial secrets have been modified.

There are two potential remedies available to third parties. They may:

• file a counterclaim requesting the cancellation of the intellectual property rights; and/or
• post a counterbond to neutralise the injunction filed against the defendant.

In some specific cases, a compulsory licence could be an option.

Jurisdiction in intellectual property matters is as follows:

• first instance at IMPI;
• second instance at IMPI and/or the federal courts (the Specialised Intellectual Property Chamber);
• third instance at the Circuit Court of Appeals; and
• exceptionally, a fourth instance before the Supreme Court of Justice (SCJ) in case of an unconstitutional provision of the FLPIP.

The first instance of dispute resolution is IMPI and the second is a court specialised in intellectual property matters called the Specialised Intellectual Property Chamber. The third instance is a constitutional court which is not specialised in the field of intellectual property.

When a lawsuit is filed, it must be accompanied by a power of attorney, the payment of government fees, intellectual property rights and evidence. The owner and/or its licensee is able to file the lawsuit as long as the licence agreement is recorded with IMPI, unless the parties have agreed otherwise. In the latter case, only the patent holder can bring the legal action.

The documents can be signed by the company’s representative directly. Even in legal proceedings before the courts, writs can be signed by the company’s representative; however, if the company does wish to be represented by somebody else in court, that person must be a lawyer whose licence is duly recorded at the court.

The infringement of an IP right gives the right to request an injunction. The injunction will be granted by IMPI if the plaintiff proves:

• the existence of an intellectual property right;
• the infringement of the intellectual property right;
• the posting of a bond; and
• the public existence of an intellectual property right (“recordal”).

The opponent may post a counterbond to release the seizure of products. However, if the defendant loses the case, the plaintiff may collect the counterbond.

The periods that limit the exercise of legal actions against the infringer of a patent are those in which the patent continues to be a published patent application without having yet been granted. As long as it is a patent application, rights cannot be exercised. If granted, it will, however, become retroactively effective on the date on which the infringement was verified while there was already a published patent application (Article 56, FLPIP).

The foregoing implies that a patent application is not the same as a granted patent and, therefore, the delay in granting a patent directly affects the duration of the patent and legal actions that may be brought against third parties.

It should be noted that according to the new FLPIP, damages can be requested before a civil court directly, without first obtaining the declaration of an infringement by IMPI, which can save time; however, in the event of a counterclaim for invalidation, the damages proceeding will be suspended until the counterclaim is resolved, which can take up to four years. Therefore, the potential time-saving benefit disappears by suspending the procedure instead of solving everything in one procedure.

The FLPIP establishes a legal mechanism for the parties to request that IMPI gather information and data that is owned by third parties. If the request is related to the merits of the case, IMPI can request information or data to resolve the case. The plaintiff and/or defendant are able to request the support of third parties that have evidence proving the facts of their action or exception. IMPI may order third parties to produce said evidence, subject, if necessary, to conditions that guarantee the protection of confidential information. The evidence issued by third parties must be requested with the filing of the legal action or in the response.

The preparation of a lawsuit requires an account of facts that put the case into context. Each statement must be proved, except when it is made under oath. Negative facts are not subject to proof; only positive facts or negative facts with positive effects are subject to proof. Once the lawsuit, or the response to it, is filed, allegations follow. At that point details may be added to the case. The procedures for tangible and intangible (eg, intellectual property, privacy and data protection) claims are different. Tangible cases (eg, property rights) are resolved before civil courts and intangible matters are resolved before administrative courts.

Once the legal action has been filed, the defendant will have a one-month term within which to respond to the legal action, which may include a counterclaim requesting the nullity or expiration of the plaintiff’s IP right. Subsequently, IMPI will grant a three-day term for the objection of evidence, and ten days for final pleadings. It should be noted that these terms of three and ten days are not regulated by the FLPIP, but by the Federal Law of Administrative Procedure and the Federal Code of Civil Procedure, which IMPI applies in a supplementary manner.

Collective actions are not allowed for intellectual property matters.

The right conferred by a patent does not have effect against:

• any third party who is engaged in the private or academic sphere and not for purposes of profit;
• a third party that uses, manufactures, offers for sale or imports a product with a valid patent, exclusively to generate tests, information and experimental production necessary to obtain medical permits (“registrations”);
• any person who markets, acquires or uses a patented product or a product obtained through a patented process after that product has been lawfully introduced into commerce;
• any person who has used the patented process, manufactured the patented product or initiated preparations necessary to carry out said use or manufacture prior to the date of filing of the patent application or an application for acknowledged priority;
• employment of the corresponding invention in transport vehicles of other countries, or forming a part thereof, when such vehicles are in transit in national territory;
• any third party who, with regard to patents relating to living matter, uses the patented product as an initial source of variation or propagation for the obtainment of other products, unless said use is in a reiterated manner; or
• any third party who, in respect of patents relating to products consisting of live matter, uses, places in circulation or markets the patented product for purposes other than multiplication or propagation, and after the product has been lawfully introduced into commerce by the patent holder or by a licence of the latter.

In accordance with the FLPIP, an infringement action may be initiated ex officio or ex parte. In the latter case, any party with legal standing and a founded claim may file the infringement action.

Therefore, an infringement action may only be filed by the owner of the intellectual property right, or any other person who may be authorised to carry out actions to protect it on the owner’s behalf (including a licensee authorised to do so), or initiated by IMPI.

However, the law also allows for any third party to inform IMPI of circumstances that may constitute patent infringement, and such allegations may be considered by IMPI in its decision to initiate a proceeding.

The FLPIP does not differentiate between direct and indirect patent infringement.

The infringement procedure must be started once the patent has been granted. However, if there was an infringement prior to the granting of the patent, pursuant to the new FLPIP, a retroactive claim can be made for the use of the patent without the proper authorisation, which could have a defect of unconstitutionality due to retroactive application.

Patent Owner Prerogatives

In accordance with the FLPIP, the scope of protection of a patent is limited to its claims – ie, only the subject matter of the granted patent. The owner holds exclusive rights to exploit its patent’s claims, or to authorise third parties to exploit them. These exclusive rights carry the prerogatives of preventing unauthorised parties from exploiting a patented process or invention, as follows:

• if the subject matter is a product, the owner may prevent third parties from making, using, offering for sale, selling, distributing or importing the patented product; and
• if the subject matter is a process, the owner may prevent third parties from using the patented process or from making, using, offering for sale, selling or importing the resulting product of a patented process. 

The owner’s prerogatives are further detailed by the FLPIP as the following specific forms of patent infringement:

• the unauthorised manufacturing of products covered by a patent;
• offering for sale or selling products covered by a patent, knowing that they were manufactured without authorisation by the patent holder;
• using patented processes, without the authorisation of the patent owner; and
• offering for sale products resulting from the use of patented processes, knowing that they were used without the patent owner’s consent.

In addition to these specific patent infringement hypotheses, the FLPIP sets forth a broader premise for infringement, consisting of any acts that go against traditions and customs in industry and commerce that involve unfair competition and are linked to industrial property rights.

In deciding a patent infringement action, IMPI will analyse the circumstances brought before it and must then determine whether any of the above hypotheses is met. To do this, IMPI will evaluate whether the whole patent or any of its independent claims is identifiable in the activity that has been brought to IMPI’s attention.

Equivalents

The general rule that applies in the field of intellectual property is the strict application of the rule – ie, the literal application of the content of the legal precept. For example, the doctrine of equivalents is not expressly regulated in Mexican legislation and, therefore, theoretically an action based on that doctrine could not be successful. However, Section 33 of Article 386 of the FLPIP opens the possibility of seeking other grounds for infringement (constituting a generic “catch-all” ground) contained in other legal provisions, which could be an action other than those mentioned in Article 386 of the FLPIP. In respect of the doctrine of equivalents, there was a legal decision, in 2016, that could be applied to legal actions involving the same, regardless of the fact that the statutory provisions do not include such provisions.

Defences might focus on the following.

• A third party that carries out purely experimental scientific or technological research, testing or teaching activities, in the private or academic spheres and for non-commercial purposes, and for this, manufactures, imports or uses the patented invention.
• A third party that uses, manufactures, offers for sale or imports a product with a valid patent, exclusively to generate test results, information and experimental production necessary to obtain a sanitary permit of medicines for human health.
• Any person who commercialises, acquires or uses the patented invention, after the invention has been lawfully introduced into commerce in Mexico.
• Any person who has initiated the use or manufacture of the invention, the necessary preparations to carry out its use or manufacture, or uses or manufactures the patented invention, prior to the filing date of the patent application or, where appropriate, the date of recognised priority.
• The use of the invention in transport vehicles registered in other countries, when they are in transit in Mexican national territory.
• A third party who, in the case of patents related to living matter, uses the patented invention as an initial source of variation or propagation to obtain other products, unless said use is made repeatedly.
• A third party who, in the case of patents related to products consisting of living matter, uses, puts into circulation or commercialises the patented invention, for purposes other than multiplication or propagation, after it has been lawfully introduced in commerce by the owner of the patent, or a person who has been granted a licence.

Defendants will also usually seek to counterclaim the invalidation of the patent that has allegedly been infringed, through claims of lack of novelty, non-patentable subject matter or any other argument that may lead to the revocation/cancellation of the patent, and/or neutralise a potential injunction by posting a counter-bond with which the precautionary measure is suspended, releasing the seized merchandise or allowing the manufacture of products to continue.

When one of the parties in a trial appoints an expert to render their own expert opinion as evidence, the other party may also offer expert evidence on the point to be resolved. If the counterpart is IMPI, their opinion has the importance of an expert; however, when there is a contradiction in the expert opinions, the judge can appoint a third expert to have a final opinion to resolve the disagreement, if any.

Parties may offer expert opinions as evidence; in which case they must provide IMPI with the name and qualifications of their designated expert. In turn, the opposing party may designate their own expert, and IMPI will designate a third expert. Each expert must clarify their position before IMPI in order to participate in the proceedings.

Each expert submits a report based on questionnaires submitted by the parties (as opposed to live examination and cross-examination in other jurisdictions). The reports are then added to the evidence to be judged by the appointed officials.

The claims are interpreted on the basis of the specification, the technical terms and the working examples. The technical terms must be clear and provide for a (relevant in the context) antecedent. The claims must be fully supported in the specification, which must be sufficiently detailed to allow third parties to avoid additional undue experimentation when the invention is in the public domain. The claims are always interpreted literally and narrowly, in the sense of the wording of the claims and in view of the specification.

The claims of a patent can be limited through voluntary limitation.

Under the Mexican legal system, it is possible to file an amicus brief in court; however, said opinion is not binding on the judge.

Revocation/cancellation actions are available and may be initiated ex officio or ex parte. Any third party or a federal public prosecutor (where there are federal interests involved) may bring an action before IMPI.

A patent shall be revoked/cancelled if:

• the patent was granted in violation of specifications and requirements regarding patentability;
• the patent was granted in violation of the Mexican industrial property law in force when the patent was granted;
• the application was abandoned during prosecution; or
• the patent was granted by mistake or inadvertently, or was granted in favour of someone who has no right to have it.

When the revocation/cancellation only affects one or some of the claims, or a part of a claim, the revocation/cancellation will be declared solely for the affected claim or claims. Thus, the revocation/cancellation will be declared in the form of a limitation concerning the revoked/cancelled claims.

Generally, applicants are only allowed to make amendments before the patent is granted. However, claims may be limited at any time, including during revocation/cancellation proceedings. This could happen if the owner of the patent subject to revocation/cancellation voluntarily limits the claims.

It is possible for revocation/cancellation actions and infringement actions to be decided together. This may happen when, for example, an infringement action is counterclaimed with a revocation/cancellation action seeking to invalidate the patent that is claimed to have been infringed. To successfully link the two actions, the counter-claimant will argue the revocation/cancellation of the patent as an exemption against the infringement action (forcing IMPI to analyse the revocation/cancellation action before going forth to the substantive analysis in the infringement action).

From the first instance at IMPI to the final one before a circuit court and/or the Supreme Court of Justice a legal proceeding might take from four to six years.

The evidence and pleadings are filed in writing, except when the case is filed before a district court. In this case there is a trial hearing.

Fact witnesses and expert evidence can be filed before IMPI but in this instance a list of witnesses must be filed in a document; however, at second instance before a federal court, the evidence of witnesses and experts can be offered through a questionnaire to be answered by them.

There is no cross-examination at the first instance before IMPI but only before federal and district courts.

There are remedies before civil courts pursuant to the new FLPIP. Infringement actions can now be filed before a civil court to seek the declaration of infringement and damages in just one decision; however, if the defendant requests the cancellation of the patent, the legal proceeding shall be suspended until IMPI resolves the cancellation proceeding, which neutralises the benefit of resolving the infringement and damages in just one decision. In this regard, the lawmakers have produced, in the new law, a legal absurdity that does not generate any advantage.

The most important special procedural provisions for intellectual property rights proceedings are as follows.

• intellectual property rights proceedings are heard by a specialised branch of IMPI;
• intellectual property rights proceedings in Mexico may be initiated ex officio;
• it is not possible to offer testimonials (regarding the actions of other individuals or entities) or confessions (regarding one’s own actions) as evidence in intellectual property rights proceedings in Mexico;
• expert opinions are presented in writing, answering the questions submitted by the parties, and not in direct examination or cross-examination, as is the case in other jurisdictions;
• Mexican law makes no distinction between cancellation, revocation or invalidity actions, so a single action may contain claims attributable to revocation and invalidity actions; and
• there is a specific proceeding to request the supplementary certificate (see 1.4 Term of Each Intellectual Property Right).

A case is determined by officials appointed by IMPI in the first instance. Such officials have a legal background and are supported by people with a technical and scientific background and knowledge. The parties have no say about who will be the decision-maker.

At the second instance, there is a federal court specialising in intellectual property, through which parties are able to challenge IMPI’s decisions. Also, parties are able to challenge a federal court’s decision before a constitutional court named the Circuit Court of Appeals through an Amparo action; however, there is no specialised circuit court in IP.

Exceptionally, cases can be resolved in the Supreme Court of Justice when the unconstitutionality of a provision of the law is challenged, or when a case raises a question regarding the interpretation of the Mexican Constitution.

The parties may reach an agreement at any time before a final and conclusive decision is made. IMPI may also suggest and/or assist the parties in finding an amicable solution to a contentious matter through a conciliation procedure as provided for in the FLPIP.

In an absolute contradiction of their intentions, Mexican lawmakers, on the one hand, wished to obtain, in a single resolution, the declaration of infringement and the payment of damages, which is very good; however, in an incredibly absurd way, it has allowed said procedure before a civil judge to be suspended by means of a counterclaim for the invalidity of the patent before IMPI, which neutralises any benefit of promptness and procedural logic. This is one of the most absurd and unconstitutional aspects of the new FLPIP.

A proceeding may be stayed when its procedural matters or substance are subject to the resolution of a different proceeding. For example, if the legal standing of the plaintiff in a specific infringement action depends on a patent, and the patent is subject to the resolution of a revocation/cancellation proceeding, the infringement action will be stayed until the revocation/cancellation action has been solved.

A patent holder may claim damages through two different procedures: (i) directly before the judiciary (either federal or state), by means of a civil or commercial action and without the need to obtain a definite infringement ruling to make the claim; or (ii) through a motion before IMPI.

If a counterclaim for the annulment of the respective patent, registration or publication is filed, the court shall suspend the procedure until the respective judgment is entered.

To warrant the damages before the judiciary or IMPI, it is necessary to demonstrate wrongful conduct, harm as well as a direct causational relationship between the two.

If the plaintiff does not prove the damages in the lawsuit, the defendant may request the payment of legal expenses incurred by the matter being taken to trial without good cause.

The remedies are the same for all technical intellectual property rights. Usually, remedies apply to damages proceedings. In the administrative courts, IMPI is able to impose sanctions and fines.

The injunction is enforceable by posting a bond. If the injunction is appealed before a district court, the judge will request the appellant post a bond to suspend the injunction, which may be neutralised by posting a counter-bond. The counter-bond will allow the owner of the patent to enforce the injunction even when it is challenged by the infringer.

If the patent is valid and infringed by the defendant, IMPI will impose a fine on the defendant and order the infringement to be suspended, unless the defendant appeals and requests the suspension of IMPI’s decision before a federal court. In this case, the defendant must post a bond to suspend the execution of the payment of the infringement and may continue using the patent until a final decision is issued by a federal or circuit court.

Appeals challenging IMPI’s decisions are regulated in a generic form in another law that applies to a variety of subjects, including intellectual property.

The appeal is limited to the arguments made by the appellant. Therefore, if they do not challenge a specific issue or illegality identified in the decision, IMPI and/or the relevant federal court – depending on the type of challenge – are not bound to resolve it. As a result, the facts, articles or interpretations of articles not contested by the appellant are interpreted as having been consented to.

The estimated cost for filing a cancellation or infringement action, or for responding to either, is approximately USD10,500. Preparing and sending a cease and desist letter costs USD500. The estimated costs for preparing and filing pleadings are USD3,500.

Government fees are paid only at the first instance before IMPI; no government fees apply for the rest of the litigation until the final instance.

The plaintiff may claim compensation in civil proceedings for damages and legal expenses. If the legal procedure is not raised in civil proceedings, neither of the parties can claim payment of legal expenses, and each party will pay their own expenses without the possibility of reimbursement.

It is not common but, if the parties agree, alternative dispute resolution may be implemented through a mediator or arbitrator.

An assignment of an intellectual property right must be recorded at IMPI, by filing the assignment document, duly signed by both parties, bearing original signatures or a copy duly certified and authenticated with the Hague Convention apostille, or by a Mexican Consulate. If an authorised agent makes a request for the recording of the assignment, that request must include the corresponding power of attorney document.

The recording of the assignment is requested in writing by the agent authorised by either of the parties, including the respective power of attorney document to confirm the authorisation. IMPI reviews the documents and issues either an acceptance or an official requirement, if anything is missing, within three to four weeks of the date the request is filed. The official action informing that the recording of the assignment has taken place indicates the recording date and the name of the new owner of the intellectual property.

The licensing of an intellectual property right must be recorded at IMPI, by filing the licence document, duly signed by both parties, bearing original signatures or a copy duly certified and authenticated with the Hague Convention apostille, or by a Mexican Consulate. If an authorised agent makes a request for the recording of the assignment, that request must include the corresponding power of attorney document.

The authorised agent of either of the parties requests the recording of the licence in writing, including the respective power of attorney document to confirm the authorisation. IMPI reviews the documents and issues an acceptance or an official requirement, if anything is missing, within three to four weeks of the date the request is filed. The official action announcing that the recording of the licence has taken place indicates the recording date and the name of the licensee of the intellectual property.