Invalidating a patent claim

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For many years, it has been interpreted that only literal infringement is recognised under the current IP Law.Infringement under the doctrine of equivalence is not expressly provided in the law; a broader interpretation of the patent law to explore the doctrine of equivalents.This is the first stage; at least two additional stages are available.The IMPI may obtain all the evidence deemed as necessary for the verification of facts that may constitute a violation of one or more of the rights protected by this Act or the administrative declaration procedures.When the owner concerned or the alleged infringer has submitted sufficient evidence to reasonably have access to support its claims and has specified evidence relevant to the substantiation of its claims that is under the control of the opposing party, the IMPI may order the presentation of such evidence before commencing proceedings and, where applicable, this authority should ensure the conditions for the protection of confidential information.All pieces of evidence should be filed or announced with the original infringement claim or with the invalidity action before the IMPI.Traditionally, Mexican Courts do not address the existence of patent infringement as, in accordance with the LIP, such cases must be filed and prosecuted with the IMPI.

(5) Simple legal standing, namely the mere business or commercial activity to challenge the validity of a patent, is under test before the Courts.

Government fees to commence a proceeding (patent infringement or invalidity) before the IMPI are around US.

The proceeding before the IMPI usually lasts two years.

Nevertheless, recently a Circuit Court in Mexico ruled on behalf of a pharmaceutical company, considering the peripheral interpretation method as a precedent, since it is not mandatory.

The Circuit Court considered that, according to the Mexican rules and regulations, the intention of the legislator to grant the claim a fundamental role in the definition of the subject matter of the patent is very clear, since this rule allows the State to protect the industrial property to a greater extent and to prevent actions affecting such exclusivity or that constitute unfair competition and, if applicable, eradicate this practice by means of the imposition of the corresponding sanctions.

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