Intellectual and Industrial Property
Litigations in Mexico

1. Introduction

Litigation in Mexico regarding Intellectual and Industrial Property matters has increased significantly since 1994. This stems from the entrance of worldwide globalization into our country, since Mexico has executed several commercial agreements which include an Intellectual Property chapter, such as the North American Free Trade Agreement or a similar agreement executed with the European Union.

For such reason, the intellectual property system has been updated not only with respect to the law, but also regarding decentralized organisms, such as the Mexican Institute of Industrial Property, or the National Copyright Institute.

The changes in this field calls for a reliable protection of intellectual property. The main actions regarding these matters are indicated below in a general manner.

2. Administrative-law actions

A. Cancellation Actions (complaint)

Regarding Industrial Property rights such as patents, designs, utility models, and trademarks that may be cancelled according to the legal provisions.

The cancellation procedure is carried out with the Mexican Institute of Industrial Property. Once the Mexican Institute of Industrial Property receives, and admits the complaint, it summons the adversary party and grants it a one-month term to answer thereto. Once the above is carried out, the Mexican Institute of Industrial Property will render a decision in about 12 to 15 months.

This decision will be informed to both parties, and the injured party may request a modification to said decision through an "amparo" proceeding (a constitutional protection against the infringement of constitutional rights by public authorities). The judgment from the district judge presiding over the "amparo" proceedings will be informed within the next 6 to 8 months. This decision may also be appealed, but the final judgment on the case will be rendered within the next 4 or 5 months.

B. Actions due to infringements

Both, the Industrial Property Law and the Copyright Law, set forth the possibility to bring actions against infringements concerning industrial property rights. The actions are brought with the Mexican Institute of Industrial Property regarding Industrial Property rights. In general, the complainant requests for an inspection visit to recognize allegedly committed infringements (e.g., the place where the counterfeited merchandise is stored or where this merchandise is distributed).

Afterwards, the Mexican Institute of Industrial Property orders to search and seize the goods that infringe industrial property rights, and the infringer is brought as a party in the process, having 10 business days as time limit to answer the complaint.

The decision of the Mexican Institute of Industrial Property will be informed within a term from 12 to 15 months. The injured party may resort to the "amparo" proceedings to challenge this decision. In case the infringement is declared, the Mexican Institute of Industrial Property will impose a fine, and issue an order concerning the destination of the merchandise.

C. Suspension of free circulation of imported goods

This procedure involves the Mexican Institute of Industrial Property, and the Immigration Department ,and was introduced into our legal system in 1996, as one of the obligations imposed on Mexico by the North American Free Trade Agreement (NAFTA).

The owner of a trademark or of any other type of rights linked to industrial property matters may request the Mexican Institute of Industrial Property to submit to the Immigration Department an official communication to make it aware of imported goods that cannot freely circulate throughout our country.

The Mexican Institute of Industrial Property will seize the goods mentioned in said communication, and the infringer has a term of 10 days to answer the complaint.

3. Criminal Actions

With respect to Industrial Property Rights, the law on the topic classifies the following as crimes:

a) The relapse of conducts declared as infringements by the Mexican Institute of Industrial Property.

b) The fraudulent falsification of trademarks at commercial level (the storage, distribution, and sale of these products is an infringement, but not their manufacture).

c) The disclosure of the secret of a trademark.

The Federal Criminal Code classifies as crimes in intellectual property matters:

a) The unauthorized reproduction, and sale of free school textbooks

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b) The production of a number of copies over that authorized by the owner of the registered right.

c) The unauthorized commercial manufacture, reproduction, import, storage, transportation, distribution, and sale of videotapes, phonograms, and books protected by the Copyright Law.

d) The manufacture of any electronic means which purpose is to inactivate a program or computing system.

The action is brought with the pertinent authorities in this matter, and requires from both parties to offer the evidence necessary to continue with the procedure. Once the investigation is over, the authority will turn it over to the District Judge in Criminal Matters.

Once the case has been admitted, the Judge will order to arrest the allegedly liable person. It is not possible to provide an estimate for the Judge to render the judgment, since there exist several course of actions in the criminal field whereby the defendant may extend the process.

It is important to note that crimes concerning Industrial Property are not considered as serious, and the respondent may be either released or released on bail.

An imprisonment penalty may comprise up to six years, and a fine for the person who commits any of the offenses previously mentioned. Thus, the Judge may reduce the imprisonment penalty with a fine or social work.

4. Civil Actions

A process can be brought with the Federal Judge in Civil Matters regarding Industrial Property rights in connection with cancellation of registrations. By reason of the remedies indicated in the Federal Code of Civil Procedure, it is difficult to estimate the period of time that the Judge takes to render his judgment, since the adverse party may extend the procedure.

5. Actions to Protect Plant Varieties

Both, a cancellation and an infringement action, have been provided by law concerning these type of rights. These actions are carried out with the Ministry of Agriculture, but until now none has been brought; for such reason, we cannot illustrate this procedure much further. However, we maintain excellent relations with the persons in charge of these matters in said governmental agency, with whom we would collaborate to establish a precedent in this matter.

This document is intended only to give a general idea of the most relevant aspects of the Intellectual and Industrial Property matters in the Mexican Legal System.

6. Litigation of Patents

Generally, litigation of patents involves such complex technical aspects that they cannot be known for certain during the regular procedure concerning a patent. Many of the matters involved in a litigation are also a combination of questions of facts and laws, where it is generally very difficult to separate law from facts as an unavoidable reality.

However, Mexican legislation related to Industrial Property is based on the presumption that the person who has the skill is the person who finds the answer. All these considerations dictate that the testimony of an expert is virtually essential in the unyielding contribution to understand the evidence, and settle the main matters of the litigation.

Types of experts in patent litigation

a). Technical experts

It is evident that technical experts are virtually essential in a patent litigation. However, sometimes their role is obscure because technical experts carry out several duties that concern a litigation, which include: a) to initiate the essential investigations to correctly conduct the litigation through all the proceedings; b) to develop evidence or inspections concerning the product or process subject-matter of litigation; c) to provide an objective analysis and diagnosis from the point of view of the state-of-the-art, and technology of the client in relation to the infringement of the product or process subject-matter of litigation; d) to teach lawyers or non-technical personnel, as appropriate, the underlying technology subject-matter of the litigation; and e) to be able to negotiate with the infringer party to achieve agreements supported by the evidence of the infringement.

b). Legal experts

In patents' complaints, a legal expert is generally related to a specialist in the legislation concerning patents, because said legal expert has extensive experience, and knowledge on the processes and administrative procedures to render an analysis on the history detailed in the background, and the development of the process until the patent registration is granted. The role of a legal expert depends highly on the initial outline of the action. However, sometimes he/she is required to have experience on rules, regulations, or practices unrelated to patents, and even to have knowledge of the legislation on other fields not related to industrial property matters.

c). Experts

In some patent litigations the parties request that the substantiation of evidence be made in either an illustrative or evidentiary manner, such as simulation models, reverse engineering of any product or process, or through the chemical, biochemical, or physical-chemical analysis of a product, etc. Said experts must evidence their experience with certified documentation, so that any expert analysis to which the evidence must be submitted are completely supported, and guaranteed by said documents.

d). Experts on redress of damages

The stage of damages in the litigation of patents involves an authenticated instrument whereby the amount of the damages is attested with certitude, and if the estimation of the losses found is appropriate. Generally, three main categories of experts must be contemplated to evaluate the damages:
a) accounting experts.

e). Experts on industry economics.

Also, the testimony of technical experts frequently provides information directly related to elements involved in damages, such as non-infringement substitutes, since such non-infringement elements create, or may create, a reinforcement that sometimes is very powerful over the testimony of experts in redress of damages.

Notwithstanding the provisions concerning civil and commerce matters, the Industrial Property Law in force sets forth a percentage quantification regarding the claim of damages payment in the case of patent administrative infringements.

The foregoing notwithstanding, such procedures regarding the redress of damages may not be brought but until a final administrative judgment is rendered by the Mexican Institute of Industrial Property, and until such judgment becomes res judicata, this is to say, that it may not be challenged through any legal process.