Business Brief: Mexico 2014

Patents

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

Patent rights are secured by the filing of a patent application, in compliance with the Mexican Industrial Property Law. While filing and prosecuting a patent application is a task that can be done directly by either the inventor or the owner of the invention, due to legal technicalities, experience needed and knowledge of the law, it is highly advisable to request the assistance of patent professionals in order to increase the probabilities of success.

Mexico also offers protection for utility and design patents. Mexican law, judiciary precedents and administrative criteria are factors that have to be carefully weighted prior to the filing of a patent application. For example, pure software patents and business method patents are not granted in Mexico, therefore, a Mexican software developer would have to rely on copyright protection for his work and pursue patent rights in countries such as the US or Japan.

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

Our fees for filing a patent application in Mexico vary depending on the kind of priority that is being claimed, Patent Cooperation Treaty phase and number of claims, from $905 to $1,257. For reporting and filing a response against official actions, our fees are of $550, therefore, the costs for securing patent rights in Mexico are of approximately $2,500 to 3,500.

Where can you find information on existing patents in your jurisdiction?

The best tool for obtaining information regarding existing patents in Mexico is the database of the Mexican Institute of Industrial Property (IMPI). The system is user-friendly, simple and dynamic, although the lack of servers suited for heavy traffic sometimes make it slow and subject to crashes. The information can also be obtained from private patent databases, however, the continuous updates of the IMPI’s database make it the most reliable source of patent information.

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

International harmonisation and NAFTA membership has shaped the Mexican Industrial Property Law into a dynamic body. There are, however, a few details that should be taken into account, especially for the pharma and biotech industry, such as the lethargic protection of data exclusivity rights. It is hoped that the Trans-Pacific Partnership Agreement (TPP) will solve some pending issues and provide access to patent term restoration and adjustment.

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

The biggest jeopardy to patent owners is the duration of an infringement trial in Mexican courts, which in some cases may take more than ten years to reach an end. The length and associated costs often discourage patent owners from bringing suit against possible infringers, since the benefits of litigation are diminished for this reason.

The best option for curbing possible patent infringement is to implement a legal strategy, not simply litigation. A clear example would be a possible infringement in pharma cases; the first step would be to investigate and thoroughly research all the facts and gather all possible evidence; the second step would be to analyse whether patent litigation is the only available measure to bring against the possible infringer, since more often than not, regulatory and administrative aspects could also assist in curbing the infringement.

Likewise, a business approach should also be analysed, due to its time and money-saving nature; the third step would be to carefully utilise all the legal recourses available to the plaintiff, such as preemptive measures and legal instances.

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

Nothing of relevance has changed to the Mexican patent law. However, we expect important developments in a couple of years at the most, due to the inclusion of Mexico as a negotiating party of the TPP. The most significant changes may occur in the patent landscape, due to the addition of patent term restoration and adjustment, as well as data exclusivity protection for biotech drugs.

Trademarks

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

Trademark rights are secured by obtaining a certificate of registration, by the filing of a trademark application. The protection is harmonised in accordance to international treaties and will grant the owner with exclusive use for ten-year renewable periods.

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

For preparing and filing a trademark application, our fees are $398 plus $202 for government rights. Our fees for reporting and responding an official action range from $100 to $250, therefore, securing trademark protection in Mexico costs approximately $500 to $850.

What are the key threats to trademark owners, and what is the best strategy for dealing with infringement?

We have not detected key threats to trademark owners in Mexico, but trademark owners are not free of risk and should take measures against infringement similar to any other developed country.

To protect their investments, trademark owners should maintain outstanding legal management of their trademarks in order to avoid defensive nullity suits. Infringement is not curbed by litigation, so thedevelopment of a legal strategy to bring infringers to a halt should include trademark litigation, administrative and/or regulatory actions—if possible—and precise and strategic knowledge of preemptive measures and legal recourses.

What are the most common mistakes trademark owners make?

Failing to secure trademark rights in associated markets in a timely manner would be the biggest mistake our practice has faced. Other common mistakes include failure to record licence agreements before the corresponding authorities, as well as inadequate use of trademarks. However, a common trait among those mistakes is that the slip-up could be avoided by opportune communication with the company’s Mexican attorney.

Copyright

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

Effectively protecting works against infringement and dealing with the slow processes of Mexican courts are the greatest challenges. As in patents and trademarks, curbing infringement and obtaining proper damages relief is a rather slow and complex procedure. However, we are slowly experiencing improvements in the administration of justice and hope for better results.

How should people ensure they are protected against copyright infringement?

Even though the Berne Convention states that registration is not required to obtain copyright protection, Mexico’s legal system is highly formalistic and thus, a certificate of registration is the easiest way to proceed against infringers.

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

A swift and precise action against infringement in all of its forms is the best way to deal with infringement in Mexico. Pirates and counterfeiters run a business focused on quick profits; therefore, with fewer risks or threats, infringement will thrive. The best strategy is to strike at the first sign of infringement, halting its growth and sending a strong response against would-be infringers.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

The issue is huge and complex. Counterfeiting has been closely associated with the country’s economic woes and the steady decay of the value of wages. Counterfeiting is a growing problem which is draining profits from national and international enterprises and has not been curbed by the fact that an infringement complaint is no longer necessary for the authorities to prosecute counterfeiting.

Therefore, counterfeiting should be engaged on different arenas, not simply by means of infringement actions. Economic and business pressure on the government to improve wages and labour conditions, as well as education policies to guide new generations away from a culture of quick satisfaction and the acceptance of counterfeited goods, will slowly push the country in the right direction.

What industries are particularly at threat?

The pharmaceutical industry, textiles and clothing companies, software and video games developers and publishers, the music and movies industry and publishing houses are the most threatened industries, but a wide range of other industries are also at risk and they should take immediate steps against counterfeiting.

What are the best strategies for dealing with the problem?

Immediate action against counterfeiting and a close relationship with customs authorities are the best strategies for curbing counterfeiting. It should be noted that swift action is required to stop the distribution of counterfeited goods arriving in the country; legal counsel should be keenly aware of the procedure and the pre-emptive measures available to combat this threat.

General

Are there any legislative changes to the IP regime that would make life easier for businesses?

While legislative changes are not expected at this stage, the inclusion of Mexico as a negotiating party for the TPP would present a huge opportunity for stronger IP protection, especially in the field of patent law, ie, patent term restoration and adjustment and data exclusivity protection for cutting-edge biotechnology drugs.

José R. Trigueros is a partner at Leyva, Montenegro, Trigueros, Abogados SC. He can be contacted at: jtrigueros@lmt.mx