Seminar on Specialized Intellectual Property Rights Courts

“The Economic Impact of IPR Enforcement”

January 2012 Alejandro Luna F.

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I.- MEXICO IN NUMBERS. II.- OVERVIEW OF MEXICAN TRADEMARK AND PATENT LAW. III.- HOT TOPICS ON IP LITIGATION AND THE SPECIALIZED COURT (SEPI). IV.- CHALLENGES. V.- AREAS OF OPORTUNITY

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We are 112,336,538 Mexicans and counting… 2,628,885 of new born per year.

27 % from 15 to 29 years. 8 % older than 60.

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Population Growth

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Trademark Applications by Nationality Main Countries 1993/January-September 2011

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Patent Applications by Nationality Main Countries 1993/ January-September 2011

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Administrative Declaration Applications 2001 January/September 2011

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Resolved Proceedings Related to Administrative Declarations

2001- 2011January/March

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MEXICAN LEGAL SYSTEM

Civil law originates in Roman law influenced by French law (Napoleonic Code). Written formal proceedings. Administrative and judicial authorities should observe the wording of the appropriate statutory law. Jurisprudence for interpretation and/or application of the statutory law. Jurisprudence is formed by five equal, uninterrupted and unanimous precedents of courts at the same level. Only Supreme Court jurisprudence is mandatory for all judicial and administrative Courts. IP Litigation before the Mexican Institute of Industrial Property (IMPI).

OVERVIEW OF THE MEXICAN LEGAL SYSTEM.

All visible signs Non-traditional trademarks banned Tridimensional Trademarks Secondary Meaning No Likelihood of confusion Matter of Law Notorious and Famous Trademarks. Two levels of protection. Prescription issue Nice Clasifications Yes Registration and Use First to file Opposition System No Letters of Consent ? Cancellation actions Various / time Duration and maintenance 10 years License Recordation and discretional three letters rule for pharmaceuticals.

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PATENT PROSECUTION REMARKS

• One year grace period for filing of application after disclosure. • Procedure for divisional applications:

– A divisional application can be filed voluntarily at any time before payment of final fees for the issuance of the letters patent. – If there is a restriction requirement from IMPI, we commonly recommend the filing of the divisional application within the 2 month response period. – If this 2 month period is not observed, common criteria has been to deny further divisional applications.

• No opposition system*.

•Linkage system for pharmaceutical patents.

• 4 to 6 years from application to granting. PPH Patent Prosecution Highway.

Exhaustation of IP Rights

Compulsory licenses non-explotation and causes of emergencies

Parallel imports.

Antitrust

Folklore

Time-Limits

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• 1991 the current IP law is enacted. • 1994 amendments to the IP law. (Preliminary injunctions). • 1993 the Mexican Institute of Intellectual Property is

created. • 1994 NAFTA entered in force. • 1995 TRIPS entered in force. • 1997 and 1999 reforms to the Copyright Law • 2001 amendments to the Federal Law for Administrative

Proceedings provided original jurisdiction to the Federal Court for Tax and Administrative Affairs (FCTA) to review the decisions issued by IMPI.

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• 2002 it is published the Decree on the Promulgation of the WIPO Performances and Phonograms Treaty

• 2009 the FCTA conformed the IP Specialized Bench (SEPI). • 2010 and 2011 discussions for adopt the Anti-Counterfiting

Trade Agreement (ACTA). • 2011 Online proceedings before the SEPI. • 2012 Gratuitous Application of Justice in the copyright

arena.

Criminal

IP Administrative Actions

Administrative Actions

Civil Actions

ARENA ACTIONS AUTHORITY

Falsification Counterfeiting Recidivist Health Risk / Harm

Infringement Actions Border Measures Unfair Competition Comparative Advertising

Negative impact to Consumers Violation to the Official Regulations (NOMS) Misleading Advertising

Regulatory Issues Safety and Efficacy

Public Bids

Contracts Damages 40% Rule

District Attorney

IMPI and Customs

Consumers Bureau CONAR

COFEPRIS

Internal Affairs

Civil Courts 14

IP Specialized Court (SEPI) 2nd. Stage

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I II III IV

7 to 14 years

Publication of Application 18 months

Patent application

Prosecution

3 to 6 years

Possible infringement

actvity

Revision

1 to 2 years

Appeal

before TFJFA-SEPI

12 to 15 months

Circuit Court 8 months

Damages / Civil Judge

Infringement Action filed before IMPI

3 to 5 years

1st Court

2 to 4 years

2nd Court

1 to 2 years

Amparo / Appeal

1 year

Patent granted

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IMPI

Revision Nullity Trial FCTAA/SEPI

Specialized Court

Circuit Court

Indirect Amparo (District Court)

Circuit Court

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• Establish the criteria for registrability of tridimensional trademarks. • Provide the factors to define descriptiveness in trademark arena. • Letters of consent for similar trademarks. IP law protects the IP owners

not the consumers. • Standards for patent infringement. • Factors to analyze novelty and obviousness. • Guidelines for the admission and conduct of the technical and scientific

evidence. Proof of experts. De Novo? • Decide disputes over the amount of bonds and counter bonds. • Pipeline-Patent correction cases. • Recognition of Data Package Exclusivity • Enforcement of the linkage regulation. Nullity of marketing authorizations

on violation of valid patents in the pharmaceutical field. • Self-aplicability of the international treaties.

RECENT POSITIVE DEVELOPMENTS • Reforms to the Trademark Law to facilitate trademark prosecution. • Increasing penalties for falsification of medicines. • Ex officio criminal actions against distributors and manufacturers of counterfeit

products. • Amendments to the Federal Consumer Law for increasing sanctions for

misleading advertising (miracle products)

AREAS OF OPORTUNITY • Higher coordination between Regulatory, Criminal, Customs and IP authorities. • Project of list of trademark rights and owners and its representatives in Mexico

to be observed by Customs Officers. • Better patent linkage system to avoid the infringement of pharmaceutical patents

and recognition of data package exclusivity.

• New enforcement system. Additional and/or alternative civil actions.

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IMPI

Revision Nullity Trial FCTAA/SEPI

Specialized Court

Circuit Court

Indirect Amparo (District Court)

Circuit Court

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Alejandro Luna Olivares & Cia.

Attorneys – Engineers Intellectual Property, Corporate

And Commercial Law Tel: 5322 3000 Fax: 5322 3001

E-mail: alf@olivares.com.mx www. olivlaw@olivares.com.mx

Value Added Services in all aspects of Intellectual Property

¡MUCHAS GRACIAS!