Challenges of freedom to operate analyses in Mexico
Freedom-to-operate (FTO) analyses are a useful tool for companies to ensure they do not violate third party intellectual property by initiating commercial exploitation of products, processes or services; it is particularly useful when this study is carried out at product development stage to prevent expensive legal costs in the future.
Of course, the actual analysis requires the identification of patents that may be potentially infringed, which is where we find the first challenges to FTO analyses in Mexico.
Identification of patents that may be infringed is more difficult in Mexico than in jurisdictions such as the US and Europe. Patents filed in such jurisdictions are easily available online through several databases (national, regional and international, both paid and free) that provide user-friendly searching and analysis interfaces.
However, the reliability of international or regional databases covering Mexican patent filings is still poor and for this reason, there is always an element of risk of missing out on some key Mexican patents.
Moreover, it is important to consider that in the recent past the number of Mexican independent inventors filing patent applications locally has increased, especially in the mechanical and materials technology fields, and as these patents are not part of an international family of patents they cannot be detected by international databases.
Therefore, for the correct identification of all Mexican patents that may be infringed by a product, further verification in national databases is necessary.
The Mexican Institute of Industrial Property (IMPI) offers Internet access only to bibliographic patent databases. Unfortunately all the databases are in Spanish and they often present technical problems that sometimes lead to temporary unavailability of the databases online. In addition to these obstacles for foreign companies and firms, maintenance data are not always available online.
Accordingly, when performing an FTO analysis, in order to confirm whether a patent that may be infringed is in force, it is necessary to check the maintenance fees that have been paid at the IMPI locally. Sometimes, this direct checking is also necessary to obtain the granted claims of a Mexican patent in order to perform the analysis.
“Experimental use exemption is expressly provided by statute under Mexican law, which makes it very clear that research and development activities are permitted under Mexican patent law.”
Furthermore, very often it is impossible to find the equivalents to foreign documents through priority information. Often patent holders have lost rights to priority claiming prior to the first publication worldwide and do not claim priority for the filing in Mexico, or have lost the opportunity to get full patent coverage but file patents in Mexico covering further developments that might be related to a product of interest. Accordingly, thorough local searching in Mexico is extremely important for the purposes of FTO analysis.
Another main challenge to consider when performing an FTO analysis in Mexico is the patent litigation environment. The scarcity of patent litigation cases in Mexico compared to other jurisdictions has resulted in a lack of binding court precedents in several key areas of patent litigation.
This means there are not yet general criteria for understanding the written law for key concepts such as contributory infringement, inherency as a defence to patent litigation, prosecution history effects in claims, infringement by equivalents (‘doctrine of equivalents’) and claim construction methods.
From another point of view, Mexico has long had other clear provisions by statute in the law that are advantageous in connection to FTO analyses, such as prior user rights, ie, a patent is unenforceable against any person that began exploiting an invention prior to the filing (or priority) date of the patent, even if such use was not public.
Likewise, experimental use exemption is expressly provided by statute under Mexican law, which makes it very clear that research and development activities are permitted under Mexican patent law.
Considering the challenges and advantages of the Mexican patent system, in our opinion Mexican law has all the necessary tools to reach clear conclusions on the risk of commercialising a determined product in the light of IP rights.
However, it is extremely important to reach conclusions on a case-by-case basis and be careful about different possible interpretations, given the lack of court precedents. This requires a deep understanding of both the Mexican patent practice and general law interpretation rules.
