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Recovery of Patent Damages and Foreseeable Delays in Mexico

Obtaining compensation for damages related to patent infringement may challenge the patience of the patent holder, because Mexican legal system does not provide a single process to determine the patent infringement and to order the compensation.

Causes of infringement and administrative sanctions (e.g. fines) are regulated by the Industrial Property Law (IPL), as well as, the minimum percentage that must be considered to determine the amount of compensation for damages.

However, the Mexican Institute of Industrial Property (MIIP) is only empowered to: render a decision of infringement and impose the administrative sanctions.

Whilst, belong to the judicial authority (a Judge) the faculties to: determine that the declared infringement is the cause of damages, set the amount of the corresponding compensation, and order payment.

Accordingly, the patent holder who is interested in obtaining compensation for damages must start with: 1) an administrative proceeding before MIIP to obtain an official decision declaring the infringement beyond the possibility of appeal, and thereafter, can pursue 2) a process before a civil Judge to obtain from him a decision establishing that damages have resulted from the declared infringement, setting the amount for compensation of damages and the order to pay thereof.

Pursuing two processes is itself a cause of delay. Additionally, the patent holder and the defendant have available legal courses of actions (such as: appeals, amparo, etc.) useful to oppose against or to defend themselves from and/or for trying to avoid final decisions that are unfavorable to their respective interests. These courses of action, although useful, can also be causes of additional delay because if initiated, whether by patent holder or by defendant, must be concluded so as to allow the process to continue.

Hence, it may involve several years to finish infringement proceedings with an unappealable decision from MIIP. This decision is a prerequisite to begin the process before Judge for claiming damages derived from infringement. And, further years may be needed to obtain a final decision from judicial process, because as stated, both the patent holder and the defendant also have in the civil process available legal courses of action that frequently cause delay.

Due to the complexity of this legal system, it is convenient to inform patent holders about the intricacies and delay that the processes to obtain compensation for patent damages can involve.

Carmen Sánchez-Puelles