Border measures against importation of medical patents
In 2012, the Mexican Institute of Industrial Property (IMPI) initiated the first border measures remedy against the importation of an active ingredient, due to the alleged administrative infringement of a patent. Although that was not the first border measures action imposed by IMPI based on patents, it was the first occasion that IMPI granted border measures based on a medical patent.
The action was very relevant for the enforcement of patent rights, because as previously mentioned there have not been any similar case before. The Mexican Industrial Property Law establishes the exclusive right to prohibit certain activities by a patent owner including prohibiting any other person importing the patented product. With this provision and Mexican Customs Law, this action was successfully executed by IMPI, with the cooperation of Mexican Customs and the use of a handheld near-infrared spectroscopy material analyser, which provided exact information of the inspected raw material and is standard equipment at the borders.
It is important to mention that Mexican Customs does not have authority to inspect or to seize godos based on IP rights on their own. However Customs can coordinate the seizure of alleged infringing products with the administrative or judicial authority duly empowered by law.
Now, when a patent owner decides to proceed against a non-authorised importer of a medical product in Mexico, it is possible to initiate a border measures injunction before IMPI, and to stop the alleged infringing goods.
The fight against counterfeit medicines in Mexico has increased in different aspects, including protection in Mexican Customs. In this regard Mexican Customs and IMPI are discussing the possibility that the Customs database of registered trade marks will be extended to include patents. We expect that these actions will have a positive impact not only in favour of the IP right holders’ interests, but also in the health security of society.
Source Managing Intellectual Property Magazine, Jul/Aug 2013