Seminar on Specialized Intellectual Property Rights Courts “The Economic Impact of IPR Enforcement” January 2012 Alejandro Luna F. 1
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: [email protected] www. [email protected]
Value Added Services in all aspects of Intellectual Property
¡MUCHAS GRACIAS!