A D M I N I S T R AT I V E A D J U D I C AT I O N O F I P C A S E S

Jorge Amigo Castañeda Vice Chairman, International Intellectual Property Institute Former Director General, Instituto Mexicano de la Propiedad Industrial

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I The Creation of an Intellectual Property Enforcement Authority

1. In order to implement the results of international trade negotiations launched by Mexico that resulted in the NAFTA, WTO and other FTA’s with Latin-American countries, In 1993, Mexico passed its Law on Industrial Property. These structural reforms included and update to the Mexican legal regime to strengthen enforcement mechanisms to protect innovation and the creation of an independent body denominated Mexican Institute of Industrial Property or IMPI for its acronym in Spanish.

2. IMPI was created by Presidential Decree on December 10th, 1993, as a decentralized entity independent from Mexico’s Federal Administration, with its own budget and legal autonomy.

3. IMPI was entrusted with the task of managing the Industrial Property System in Mexico and enforcement of industrial property rights (patents, trademarks, industrial designs, etc) but also responsible of enforcement of commercial infringement of copyrights).

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Staff Employed at IMPI

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100

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500

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1,000

1993 1994 2010

222

398

925

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Regional Offices

Northern Regional Office

Western Regional Office

Southeastern Regional Office

“Bajío” Regional Office

Center Regional Office

NUEVO LEON

COAHUILA

CHIHUAHUA

TAMAULIPAS

DURANGO

COLIMA

JALISCO

NAYARIT

SINALOA

SONORA

BAJA CALIFORNIA

BAJA CALIF. SUR

CAMPECHE

CHIAPAS

TABASCO

QUINTANA ROO

YUCATAN

OAXACA

PUEBLA

MORELOS

GUERRERO

VERACRUZ

TLAXCALA

HIDALGO

GUANAJUATO

SAN LUIS POTOSI

QUERETARO

MICHOACAN

ZACATECAS

AGUASCALIENTES

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Patent Applications by Country

IMP

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Trademark Applications by Country

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Enforcement: Administrative Declaration Applications

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Enforcement: Resolved Proceedings Related to Administrative Declarations

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Competitiveness Level vs. GDP Per Capita: Selected Patent Offices

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N WIPO – IMPI Cooperation Agreement 1. Introduced: March 2007 2. Goal: To strengthen cooperation in intellectual property (IP) education and human resource

development 3. Specifics: The agreement between WIPO and IMPI is designed to foster the development of IP

capacity in Mexico and the Latin American region. Initiatives launched under the agreement focus on developing the expertise necessary to respond to the emerging demand for refined and focused study of IP education, training and research. Under the terms of the agreement, WIPO provides assistance in the development of IP curricula, teaching and course materials in Mexico and throughout the region.

CADOPAT 1. Introduced: 2007

2. Goal: To create a support system for the management of patent applications for Central America

and the Dominican Republic.

3. Specifics: IMPI created an online system in order to manage the project a. Initial Participants: Costa Rica, El Salvador, Guatemala, Honduras, Nicaragua, Panama and

the Dominican Republic. b. Current Participants: ARIPO, Belize, Cuba, Colombia c. Acts in partnership with WIPO, EPO and OEPM d. IMPI has processed 316 applications from the beneficiary offices from the beginning of the

agreement until June 2010

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N OAS-IMPI Cooperation Agreement 1. Signed: June 16, 2010

2. Goal: To establish a framework of regional IP cooperation, promoting dialogue on public policy and

stimulating programs and activities that contribute to the fulfillment of the objectives of both institutions.

3. Specifics: This agreement contributes to the establishment of regional cooperation initiatives while strengthening IMPI’s position as an office offering cooperation in the region.

BSA-IMPI Cooperation Agreement

1. Signed: April 12, 2002

2. Goal: To combat software piracy nationwide

3. Specifics: IMPI self-initiated actions against suspected software pirates and participated in press relations and similar activities in relation to BSA’s Zero Tolerance Campaign against software piracy

4. IMPI has been the first IP office worldwide audited by BSA as fully compliant with legal use of software and licensing management.

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IMPI’s Enforcement Authority 1. IMPI has the power to enforce industrial property rights and copyrights related to trade matters

2. IMPI is responsible for both granting patents and trademarks as well as resolving, at the first

instance, challenges filed by practitioners

3. An alleged infringer could face administrative sanctions resulting in fines of up to approximately 44,000 US dollars. This administrative procedure also grants IMPI the authority to implement provisional measures as defined in article 1716 of NAFTA to prevent further damages by the alleged infringer to the rights-holder. These measures can be:

a. The seizure of the alleged infringing goods b. Order to suspend the manufacturing of such goods c. Order to suspend the retail and surrender the goods d. Order to Customs Authority to withhold the alleged infringing merchandise and consign it

to an authorized warehouse.

Unique Administrative Procedures on Infringement 1. In order to commence an infringement action, the rights holder is requested to post a bond for

an amount determined by IMPI.

2. In turn, Mexico is the only country worldwide that allows for the alleged infringer to post a counter bond for the release of the goods

3. The purpose of the bond and counter bond is to cover any further claims for civil damages.

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Milestone Cases

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Appeal procedure before administrative tribunal 1. After a final determination by IMPI regarding intellectual property rights infringements, the

losing party can file an appeal before the Federal Court for Tax and Administrative Affairs (FCTAA) or before a district court.

2. In order for the rights holder to have the ability to submit a civil claim to be economically compensated, it is mandatory to obtain a final determination issued by IMPI declaring the infringement of intellectual property rights.