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.