Mexican Courts determined that working in the pharmaceutical industry is not enough to demonstrate legal standing to claim the invalidity of a pharmaceutical patent.
January 27, 2022
As a procedural requirement to file a patent invalidity claim before the Mexican Institute of Industrial Property (IMPI), it is a requirement that the plaintiff demonstrates having legal standing to initiate said action.
For many years, some plaintiffs argued that the exhibition of the articles of incorporation, in which it was stated that their industrial and commercial activity was related to the pharmaceutical industry, was sufficient to satisfy the requirement of legal standing, arguing that this was enough to prove an incompatible right with the titleholder of the patent in the pharmaceutical field of technology.
Our firm insisted before the Courts that the industrial and commercial activity of a pharmaceutical company did not evidence the existence of actual damage or a direct interest against the existence of a specific product or technology protected by a patent in the pharmaceutical field to be considered as legal standing in terms of the applicable rules under the Mexican IP Law.
A Mexican Circuit Court confirmed the arguments that we have asserted for years, ruling that the plaintiff, in a patent invalidity action, should have demonstrated before IMPI a direct impact, either a patent right, an opposite right, or an expectation of right in connection with the attacked patent. The court also considered unsuitable to state that all individuals or companies devoted to the pharmaceutical industry could claim the invalidity of a patent without demonstrating real and direct harm derived from the attacked patent.
Although IMPI recently modified its criteria when analyzing the defense of lack of legal standing in invalidity actions of pharmaceutical patents, this precedent under discussion herein, although not binding but highly persuasive, will be useful to avoid frivolous attacks of patents not only in the pharma field.
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Alejandro Luna F.
Alejandro Luna joined 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.
Armando Arenas joined OLIVARES in 2000 and became a partner in January 2017. He has experience working on a range of IP matters, including consulting and litigation on trademark, patent, unfair competition, trade dress protection, and misleading advertising cases before the Mexican Institute of Industrial Property (IMPI), Federal Court of Tax and Administrative Affairs (FCTA), Federal Circuit Courts (FCC) and the Supreme Court of Justice (SCJ) Regulatory Affairs and Public Acquisitions.