Alejandro Luna F.

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Alejandro Luna F.

Alejandro Luna has been alternately dubbed “an extraordinary litigator, active at every level,” “responsive and insightful,” and “a knowledgeable IP practitioner offering creative and cost-effective advice” by his peers, according to IAM Patent 1000, while World Trademark Review’s WTR 1000 called him “a reliable ally for any party in a dispute”. Since joining OLIVARES in 1996 and being made partner in 2005, he has been instrumental to the firm’s IP Litigation, Regulatory, and Administrative Litigation practices. He co-chairs the Life Sciences & Pharmaceutical Law industry group and coordinates the Litigation Department.

As one of the few patent and regulatory litigation experts in the country, Mr. Luna has played a crucial role in updating Mexico’s intellectual property (IP) system. He participated in questioning the constitutionality of certain provisions of Mexico’s Industrial Property Law, the Federal Copyright Law, and the Health Law and its regulation. He sponsored an important proposal to modify the litigation and enforcement systems that made it easier to obtain monetary compensation for violations of IP rights.

Mr. Luna spearheaded a ten-year litigation strategy that incorporated regulation changes and lobbying and resulted in an important precedent for the patent linkage regulation and life terms of pipeline patents in Mexico. As a result of his involvement, Mr. Luna was selected as the delegate to represent the Asociación Mexicana de Industrias de Investigación Farmacéutica, AC (AMIIF), the industry association for R&D pharmaceutical companies that do business in Mexico, in negotiations concerning the Trans-Pacific Partnership (TPP) agreement, the free trade agreement between Mexico and the European Union, and the United States-Mexico-Canada Agreement (USMCA/ T-MEC), which replaced NAFTA.

Mr. Luna’s practice is not devoted exclusively to life sciences; he represents clients across a myriad of industries. He has successfully litigated pharmaceutical patents and pioneered administrative court actions to seek recognition of DPE rights (regulatory data protection submitted to the regulatory agency), which are not specifically recognized under Mexican law. His commitment to just and fair law extends to his overall promise of client satisfaction; he acts on behalf of his clients as an attorney and a lobbyist, pushing for changes to the law as necessary in order to best serve his clients.

Mr. Luna is also the author of several articles on patents, litigation, and regulatory issues in the pharmaceutical industries. He is professor at the Universidad Nacional Autónoma de México (UNAM) in the IP Master of Law and the Health Law program and currently is working on his doctoral thesis, titled “The Impact of International Treaties in the Mexican Patent Law, Pharmaceutical Patents and Related Enforcement”.

Representative cases
  • Luna appealed several refusals of authorizations for medicines containing “cannabis,” arguing that authorization should be granted for cannabis and other narcotics for medical use via the proper abuse-deterrent formulations. This served as a positive precedent prior to the Constitutional amendment to legalize the medical use of cannabis and other narcotics.
  • Luna has been deeply involved in building strategies to maximize IP rights for key clients in the pharmaceutical industry. He is a pioneer in the litigation of biologics and has successfully defended the exclusive rights of innovators by obliging regulators to suspend the approval of “biosimilars” when regulatory requirements have not been met.
  • After 8 years of litigation, Mr. Luna rescued one of Mexico’s leading fashion trademarks, which had been “kidnapped” by loopholes in the Mexican trademark law.
  • Luna participated as an expert on the interpretation of the Mexican patent law and patent utility requirements in a NAFTA arbitration examining the Canadian utility standard and doctrine of sound prediction. There are few opportunities for IP attorneys to participate in a Free Trade Agreement arbitration.
  • He has been considered the first patent linkage advisor and litigator in the country
Awards
  • Chambers Global – Mexico, Band 1
  • Chambers Latin America – IP, Band 1
  • Chambers Latin America – Life Sciences, Band 1
  • IAM Patent 1000 – Litigation, Gold
  • Latin Lawyer 250, Tier 1
  • Legal 500, Tier 1
  • MIP – IP Star
  • Who’s Who Legal, Tier 1
  • World’s Guide to the Leading Patent Law Practitioners, Tier 1
  • WTR 1000 – Silver – Enforcement & Litigation
Education
  • Franklin Pierce Law Center
    LLM, Intellectual Property Law, 2002
  • Universidad Panamericana
    Diploma on Amparo Law, 2000
  • Universidad Latinoamericana
    Juris Doctor, 1996
  • PhD Candidate (currently working on a doctoral thesis)
Affiliations
  • Asociación Mexicana de Industrias de Investigación Farmacéutica, AC (AMIIF)
  • Asociación Mexicana para la Protección de la Propiedad Intelectual (AMPPI)
  • Barra Mexicana de Abogados (BMA)
  • Biotechnology Industry Organization (BIO)
  • International Association for the Protection of Intellectual Property (AIPP
  • International Bar Association (IBA)
  • International Trademark Association (INTA)
Languages
  • English
  • Spanish