Protection of rights: what you need to know
The conference of the Inter-American Association of Intellectual Property (ASIPI) will be held in Mexico later this year (November 30 to December 3) as the association celebrates its 50th anniversary. Here is the local knowledge you need when doing business in Mexico.
Obtaining patent rights
Patent rights are secured by the filing of a patent application, in compliance with the Mexican Industrial Property Law (MIPL). 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 weighed up prior to the filing of a patent application. For example, pure software patents and business method patents are not granted in Mexico. A Mexican software developer would have to rely on copyright protection for his work and pursue patent rights in other jurisdictions such as the US or Japan.
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. For reporting and filing a response against official actions, our fees are $550 and, therefore, the costs for securing patent rights in Mexico are approximately of $2,500 to $3,500.
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, but continuous updates of the IMPI’s database make it the most reliable source of patent information.
International harmonisation and NAFTA membership have shaped the MIPL 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.
The biggest risk for patent owners is the duration of an infringement trial in Mexican courts, which in some cases may take more than ten years to reach its conclusion. The length and associated costs often discourage patent owners from bringing suit against possible infringers as the benefits of litigation are diminished for this reason.
The best option for curbing possible patent infringement is to implement a full-fledged 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 as, more often than not, regulatory and administrative litigation 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 pre-emptive measures and legal instances.
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
Trademark rights are secured by obtaining a certificate of registration, by the filing of a trademark application. The protection is harmonised in accordance with international treaties and will grant the owner exclusive use for ten-year renewable periods. Securing trademark protection in Mexico costs approximately $500 to $850.
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 those in any other developed country.
"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 protect their investments, trademark owners should maintain outstanding legal management of their trademarks in order to avoid defensive nullity suits. Infringement is not curbed merely by litigation, so the development 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 pre-emptive measures and legal recourses, such as uploading a trademark registration to the Mexican Customs Authority´s database.
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 local counsel.
Copyright
Effectively protecting works against infringement and dealing with the slow processes of Mexican courts are the greatest challenges for copyright holders. As in patents and trademarks, curbing infringement and obtaining proper damages relief is a rather slow and complex procedure. However, we are now experiencing improvements in the administration of justice and hope for better results soon.
Even though the Berne Convention states that registration is not required to obtain copyright protection, Mexico’s legal system is highly formalistic and, thus, obtaining a certificate of registration is the first step to tailor a legal strategy to prevent infringement.
Swift and precise action against infringement in all its forms is the best way to deal with infringers in Mexico. Pirates and counterfeiters run a business focused on quick profits. With fewer protective procedures and the pre-emptive measures available to combat this threat, 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
Counterfeiting is a huge and complex issue and has been closely associated with the country’s economic woes and the steady decline 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.
The pharmaceutical industry, textiles and clothing companies, software and video game 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.
Immediate action against counterfeiters 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.
While legislative changes are not expected at this stage, the inclusion of Mexico as a negotiating party for the TPP presents 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 Trigueros is a partner at Leyva, Montenegro, Trigueros, Abogados SC. He can be contacted at: jtrigueros@lmt.mx
