1 January 2011CopyrightMike Margáin, Jorge Mier y Concha and María Teresa Eljure

Business brief 2011: Mexico

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

You can obtain patent rights by applying for them at the Mexican Patent Office. You won’t obtain protection unless you file and obtain a patent. Protection in Mexico also includes designs, which we call design registrations, and also utility models, which are not present in every country. When it comes to international or national coverage, it depends on the kind of industry that you’re talking about.

There are certain technologies that are maybe only exploited in very few countries. If the company applying for a patent has no interest in foreign countries, it makes sense to only file locally. We have a client that deals with large trucks.

At first, it attempted to get protection in Europe, but these trucks are not designed for the roads in Europe. So the technology was useless—it couldn't sell anything in Europe. The trucks were used in the US, Canada and Mexico. That's where they tried to patent. Therefore, whether to go national or international depends on the kind of industry.

What are the costs for obtaining a patent, and what are the costs of defending it?

Without translation and with only one claim for a priority right, the cost for filing is around $1,500. For prosecution, including a couple of actions, the cost is around $2,800, plus a grant fee of around $1,000 more. On average, from filing to grant, it costs around $5,000, not including translations.

The cost of defending a patent depends on the industry. The fee for initiating an action in the first instance is around $5,000/$6,000. But it can go up, for example, in pharma or biotech cases because of expert testimonies. A basic straightforward case costs around $6,000 in the first instance.

Where can you find information on existing patents in your jurisdiction (i.e. online database, patent office request, etc.)?

Usually, you use the patent database of the Mexican Patent Office. It’s not as reliable as we would like it to be, but it’s a very good tool. It is updated regularly. It could be a lot better, but right now we’re ahead of where we were a couple of years ago, so basically it’s useful. There are also some commercial databases that carry information on Mexican patents.

Of course, if you have specific information or specific queries about a patent itself, you can always request the information in writing from the patent office. You may have to wait a few days, but you will get up-to-date information, because the patent office’s database is the most current one.

Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?

The law in Mexico is pretty straightforward—it has been simplified and it has been kept simple. There are no unusual obligations.

We are neighbours with the US so most of the mistakes that are made in prosecution are because of this proximity. Why? Because we don’t offer continuation or continuation in part.

US applicants or foreign applicants doing business in the US may try to get a continuation or a continuation in part for some kind of improvement, which in Mexico will not be allowed. This is because it will be blocked for novelty or maybe obviousness. When the invention is subject to improvements or changes while undergoing prosecution in Mexico, sometimes it cannot be filed.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

A key threat that we have identified in the past is that the Mexican Patent Office has granted patents for very basic technologies. By basic, I mean so basic that the technology has not been patented before, because it is commonly used in the industry or has been around for so long that no one has even tried to patent it.

Those that are able to secure patents for basic technologies go around suing people. Examiners have been taught to examine patents based on patent documents or related publications—they don’t go into the basics of the industry itself. A handful of these patents can cause a lot of problems.

In terms of a strategy, you must remember that there is no discovery in Mexico. When someone brings a complaint, all the evidence must be submitted with the complaint. There are no testimonies unless they are in writing. Not having discovery does create a heavy burden of proof for the plaintiff. The best strategy is to try to document it. If you document the suspected infringement then half of the case is won.

Have there been any changes to the patent law(s) in the last 12 months?

There have been some minor changes to the patent law. The last set of amendments was directed at the pharmaceutical industry, although it applies to the whole law. The most relevant amendment was the new opposition rules.

We don’t know what they will mean in practice, but they probably won’t be very useful to patent owners and those that want to oppose. The examiner has the right to answer the opposition or not, and the applicant has the right to answer or not. Nothing will happen if neither of them responds to the opposition.

Trademarks

How do you register or secure trademark rights, and what protection does it grant?

To get exclusive rights, trademark applications must be filed with the Mexican trademark office. To gain as much certainty as possible you should conduct a trademark search beforehand. You should try to classify the goods or services that are going to be covered by the application in a way that will avoid office actions regarding clarification. That should be taken into account in order to accelerate the process.

What are the costs for registering a trademark, and what are the costs of defending it?

The cost of preparing and filing a trademark is $450 and the trademark office charges around $280, whether or not it grants the registration.

The average cost of responding to office actions is $750, including fees.

What are the key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.), and what is the best strategy for dealing with infringement?

The best strategy for dealing with infringement is maintaining the trademark registration. That means using the registration, because normally trademark owners don’t use it or they have third parties using it without registering it themselves at the trademark office. The easiest way for third parties to cancel a registration is by filing a cancellation action based on non-use.

The burden of proof is on the defendant, so if the defendant has no evidence of use then there is no way they can maintain the registration. Use it, or if it’s not being used by the owner, have a licence agreement recorded with the trademark office in order for the owner of the registration to be benefit from the use made by a third party.

What are the most common mistakes trademark owners make?

They either don’t use their trademarks or they have third parties using them without recording it with the trademark office. Or they use the trademark differently from the way it’s registered and sometimes the differences are huge so the registration can be cancelled on the basis of nonuse. They don’t use the registered (®) symbol, so the trademark may become generic.

Have there been any changes to the trademarks law(s) in the last 12 months?

There was a major change that states that there is no need for powers of attorney when filing a trademark application, as long as the individual that signs on behalf of the client is always the same.

Copyright

What are the key challenges to copyright holders in your jurisdiction?

The biggest issue is the enforcement of copyright. There is a lot of piracy in Mexico. The public sector, the government and copyright holders are doing a lot in enforcement. DVDs and CDs are heavily pirated in Mexico, so arrests, raids and seizures are on the up as people try to deal with the problem.

How should people ensure they are protected against copyright infringement?

According the Berne Convention, there is no need for the registration—there are no formal requirements for protection of copyright. We strongly recommend having a registration. It doesn’t matter if it’s not a Mexican registration, as long as you have one.

What is the best way to deal with infringement, and what are the costs associated with it?

The best way to deal with it is to have zero tolerance—not to allow piracy or counterfeiting of any kind by answering all requests from the authorities and filing all of the complaints necessary to gather the evidence that the authorities need.

Have there been any changes to the copyright law(s) in the last 12 months?

Fines have been going up and there was an amendment to the industrial property law and the federal criminal code allowing the attorney general to act ex officio—there is no longer the need for a complaint from the copyright or trademark holder.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Mexicans buy a lot of counterfeit goods, even when they are fully aware that the goods are fake. Industries in Mexico lose almost $1 billion because of counterfeiting and the Mexican IRS also loses about $500 million tax revenue. Don’t forget that the money the government spends on dealing with counterfeiting is also a loss. It’s a big problem.

What industries are particularly at threat?

The software, entertainment, video games, clothing, accessories, pharmaceuticals, Cuban cigars, mobile phones and accessories, and automotive parts industries are all subject to counterfeiting.

What are the best strategies for dealing with the problem?

In the private sector, zero tolerance and co-ordinating at all times with the government. Many companies participate in the government’s awareness campaign. It is helpful to participate in training seminars, especially with Mexican customs. Customs has been doing a great job in the few years that it has been involved in anti-counterfeiting. It’s also good to remain in contact with customs, filing complaints even when you don’t need to.

Mike Margáin heads the intellectual property rights enforcement department, Jorge Mier y Concha heads the patent department and María Teresa Eljure heads the trademark department at Arochi, Marroquín & Lindner, S.C. They can be contacted at: communication@aml.com.mx

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