Business brief 2012: Mexico

Patents

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

Patent rights in Mexico are secured by the filing of a patent application in strict 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, the technicality and knowledge of the law often requires 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 prior to the filing of a patent application. For example, pure software patents and business method patents are not granted in Mexico, so 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 and defending a patent?

The fees for filing a patent application in Mexico vary, depending on the kind of priority that is being claimed, Patent Cooperation Treaty (PCT) phase and number of claims, from US $1,050 to $1,557. For reporting and filing a response against official actions, the fees are US $750; the costs for securing patent rights in Mexico are therefore approximately US $3,500 to $4,500.

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

The first resource to explore while searching for information regarding existing patents in Mexico is the database of the Mexican Institute of Industrial Property. The database is simple and dynamic but the lack of servers suited for heavy traffic make it slow and subject to occasional crashes. The information can also be obtained from private patent databases, but the continuous updates of the Institute’s database make it the most reliable source of patent information. Written requests are slowly becoming a thing of the past.

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

International harmonisation and membership of the North American Free Trade Agreement between the US, Canada, and Mexico (NAFTA) has shaped the Mexican Industrial Property Law into a dynamic body, but there are a few details that should be taken into account, especially for the pharma and biotech industries, such as the lethargic protection of data exclusivity rights.

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 10 years. The length and associated costs often discourage patent owners from bringing suit against possible infringers, since the benefits of litigation are diminished as a result.

The best strategy to curb possible patent infringement is to implement a legal strategy, not blunt 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 the 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 moneysaving nature; the third step would be to utilise all the legal recourses available to the plaintiff, such as pre-emptive measures and legal instances.

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

Nothing of relevance has changed in Mexican patent law. We expect important developments in a couple of years at the most. The most significant changes may occur in the pharma and biotech industries, since patents for formulation or second medical use could be included within linkage regulations, as well as a more stringent data exclusivity protection.

Trademarks

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

Trademark rights are secured only by obtaining a registration certificate, by means of a trademark application. The protection is harmonised in accordance with international treaties and will grant the owner with exclusive use for 10-year renewable periods.

What are the costs of registering and defending a trademark?

For preparing and filing a trademark application, the fees are US $398 plus US $202 for government rights. Our fees for reporting and responding an official action range from US $100 to $250, so securing trademark protection in Mexico costs approximately US $950 to $1,150.

What is the best strategy for dealing with trademark infringement?

Trademark owners are not risk-free, and should take measures against infringement similar to those in 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 the development of a legal strategy to bring infringers to a halt should include trademark litigation, administrative and/or regulatory actions and precise and strategic knowledge of pre-emptive measures and legal recourses.

What are the most common mistakes trademark owners make?

Failure to secure trademark rights in a timely manner in associated markets 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 their trademark.

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 in 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.

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 changes have been slow this year and the political attention will mostly be focused on elections, several high level discussions are being held with the aim of dramatically improving data exclusivity protection and other aspects which—if approved—would greatly enhance the protection of pharmaceutical patents and cutting-edge biotechnology drugs.