Mexico

The Mexican patent market has been on the upswing in recent years. While the pharmaceutical sector continues to see a flurry of activity, the mechanical and electrical fields have also experienced conspicuous growth. A dearth of local inventions means that the vast majority of filings still come from abroad; however, there has lately been a perceptible uptick in appreciation for IP assets among domestic entities. Although contentious work remains relatively limited, litigation has also become more prevalent of late. Patent rights in the country – and the IP system as a whole – were set to be significantly affected by the detailed and somewhat controversial IP chapter of the Trans-Pacific Partnership Agreement. However, the United States’ withdrawal from the agreement at the beginning of 2017 has effectively put an abrupt halt to these plans.

Firms: prosecution

Highly recommended
98
Olivares
Uhthoff Gómez Vega & Uhthoff SC
Recommended
H
Arochi & Lindner SC
AVA
IBERBRAND SC
Panamericana De Patentes & Marcas SC

Firms: litigation

1
Arochi & Lindner SC
Olivares
2
Calderón & De La Sierra
Müggenburg, Gorches y Peñalosa SC
Uhthoff Gómez Vega & Uhthoff SC
3
AVA
Hogan Lovells BSTL SC
Arochi & Lindner SC
“Consistently at the top of the ranking tables and a huge presence”, Arochi & Lindner is a potent force in the patent world, especially when it comes to litigation. Between its talented lawyers and densely packed in-house unit of technical experts, there is little that it cannot do. Life sciences and biotechnology are strongholds, and the set frequently works on the cusp of innovation: last year it made the headlines for its management of the first certificates of deposit of biological organisms in Mexico. “Its three key partners – Roberto Arochi, Hedwig Lindner and Jorge Mier y Concha – are all outstanding professionals.” Managing partner Arochi draws on over three decades of know-how across the full IP spectrum. Lindner takes charge of the patent litigation department: “If you get into a fight with her, it will be an eye-opening experience. Although extremely tough and comprehensive, she is also fair and a pleasure to deal with. She simply does wonderful work.” IP law professor Mier y Concha rounds off the trio. Head of the patent and copyright departments, he is “a fantastic attorney and one of the best in the country. He is completely familiar with all aspects of the law”.
AVA
IAM Patent 1000 newcomer AVA has made serious headway in the IP market in the seven years since its inception. In the past 12 months, it handled over 2,000 ongoing files and an array of portfolios on behalf of industry-leading multinationals, innovative start-ups and renowned universities. Although proficient in every major technological sector, its plant breeders’ rights practice is particularly robust. Further, a recent strategic alliance with a Spanish IP outfit has granted it a gateway into Europe and expanded its global reach. Tomás Arankowsky coordinates the firm’s patent efforts. Experienced in all phases of patent law and equipped with an expansive perspective of the legal landscape, he makes for a highly reliable portfolio manager. The commercially minded Agustin Velázquez is a deft enforcer of rights; he is also a first port of call for the transfer of critical IP assets. Chair of the firm’s Guadalajara office, Elías Ríos devises winning strategies that resonate with patent holders: “He is a brilliant litigator who appreciates the client’s commercial issues. He understands the law and how to apply it, and is dedicated to his craft.” “One of the finest Mexican law firms generally, Basham, Ringe y Correa has a very mature and extremely strong IP practice.” “It knows the market, is committed to its clients and always acts with quality in mind.” Its litigation services come “highly recommended”, but it is also “among the most well-known outfits for prosecution”. The firm is “a top competitor in this field” and “all of its IP partners are deserving of praise”. First among equals is Martin Michaus – “experienced, knowledgeable and a well-respected professional”. “One of Mexico’s best IP practitioners, he doesn’t have a weak spot in terms of his understanding.” Becerril, Coca & Becerril is “the main player here when it comes to prosecution” and “one of the largest patent filers in the country”. Although it handles a prodigious volume of work, the efficient ensemble consistently pairs quantity with quality. A seamless blend of corporate and IP know-how ensures that assets are exploited to their maximum value and client goals are fully realised. Chemical engineer Héctor Elias Chagoya directs the patent and technology group with poise. The “tough patent attorney” is “excellent at juggling transactions. He also knows a lot about the pharmaceutical sector” – as does regulatory expert Juan Carlos Amaro. Hailed for his contentious abilities, Amaro can often be found safeguarding the interests of drug manufacturers in mission-critical patent disputes.
Calderón & De La Sierra
Fortune 500 companies flock to the doors of Calderón & De La Sierra for its versatile capabilities, including the sophisticated management of complex patent portfolios and impressive track record in landmark suits. The latter is a special claim to fame: the firm is “among the most well-known IP litigation shops in the country”. Its hardworking team of astute lawyers and engineers is a particular hit with global pharmaceutical and high-technology entities. “They ensure the proper paperwork is in place, provide strategy regarding enforcement against potential infringers and prosecute patents in a timely manner. The overall service is flawless.” Last year, it acquired significant firepower in the form of esteemed veteran Cesar Ramos, previously managing partner of Olivares’ patent group. His profound wisdom has been put to good use and he now spearheads the team’s non-contentious efforts. Having joined in 2015, Alberto Huerta Bleck is another string to the bow of the enforcement practice: “He understands the nature of patent work and how to attend to arguments to overcome any claims against your rights.” He assists managing partner Carlos Perez De La Sierra in running the renowned litigation department. A professor of patent law, Perez De La Sierra is “a terrific lawyer who excels at litigation and transactional work and has done a superb job of aggregating talent at his firm”.

Having originated as a patent boutique, Dumont Bergman Bider “has a long, established reputation on the patent market”. “It is a strong contender in this field and it deals with a plethora of cases on behalf of many important clients.” Although skilled across the gamut of technical disciplines, it is most celebrated for its life sciences expertise. It wields half a century’s experience in the pharmaceutical domain and today represents industry-leading names such as Boehringer Ingelheim, which recently benefited from the firm’s sage counsel in overcoming a number of complex objections and obstacles at the Mexican Institute of Industrial Property (IMPI). “Its team of professionals is excellent. The substantive work is always managed to a very high standard and the level of service is also outstanding: it is really responsive and proactive, and it exceeds expectations.” Managing partner Laura Collada and technical department head Victor Garrido are key contacts.

Hogan Lovells BSTL SC
Hogan Lovells BSTL fuses vast international resources with an intricate understanding of the local patent scene. Committed, cost effective and personable, it possesses experience in virtually all industries, from mining and pharmaceuticals to consumer products and telecommunications. Its “solid IP practice” is also flexible to the needs of patent owners across the boundary of contentious and non-contentious work. Recently, it has been dispensing perspicuous and discerning advice to the likes of Pfizer in an assortment of infringement actions. Pfizer’s key contacts are Bernardo Herrerías Franco and Alfredo Pineda Nieto. The former does a superb job of directing the IP squad and has a knack for crafting long-term defensive strategies; the latter is a talented all-rounder and a dexterous courtroom sharpshooter.
IBERBRAND SC
The relatively young IBERBRAND has made significant year-on-year gains, thanks to a diligent crew of engineers and attorneys and an unstinting emphasis on quality. Its competitive rates and regional capabilities are further incentives for patent owners of all stripes looking to maintain and develop their portfolios. Patent director Marcelo Blanco is the star of the show. “His patent prosecution advice is timely and he has deep knowledge of the Patent Cooperation Treaty. He also offers good communication channels, which is important for managing key deadlines. Both he and his team are resourceful and they always provide the necessary solutions.”
Müggenburg, Gorches y Peñalosa SC
The “hardworking, business-oriented and ethical” squad at full-service outfit Müggenburg, Gorches y Peñalosa renders a first-class service and is a magnet for praise. “The firm is heavily involved in all types of litigation and it has certainly been doing very well in the patent field as of late. It has a great team of attorneys in place.” A number of high-stakes pharmaceutical patent suits have been keeping the gears turning lately: “Its work is very cost efficient given the complexity of matters it handles and the specialisations required to tackle these problems." “You have to be really careful when you go up against its team in the courtroom,” avers one peer. Name partners Esteban Gorches Guerrero and Jean Yves Peñalosa Sol La Lande “are both well recognised for their patent enforcement capabilities and are deeply familiar with sophisticated issues, especially those concerning pharmaceutical patents. Their service is excellent: they are very clear and direct in their explanations and are always available. It is remarkable that despite being a part of one of Mexico’s most important patent litigation shops, their work style is so personal”. A specialist at the intersection of IP and regulatory health law, Luis Enrique Donnadieu Macías is another much-admired practitioner. “He is diligent, flexible, responsive, skilled and experienced. He and his firm always provide advice with a distinct focus on the business needs of the client.”
Olivares
Having filed over 14,000 patents in the last decade, the “outstanding” Olivares operates at the apex of the patent market. Armed with PhDs in all key technical areas, it is famed for its pinpoint, cutting-edge advice and ability to overcome even the trickiest of obstacles. As a prime example, it recently became the first Mexican law firm to acquire patent protection for a computer-related invention by convincing IMPI that the invention in question should not be considered a computer program in itself. Helping to shape legislation and regulations and partaking in precedent-setting cases is all in a day’s work for this ensemble. “Remarkable litigator” Alejandro Luna Fandiño plays an instrumental role in both of these tasks. “Well-affiliated in and knowledgeable about the life sciences sector”, he has recently been representing global pharmaceutical titans in landmark Supreme Court cases involving the revised patent linkage regulations and the scope and parameters of the Roche-Bolar exception. Luna Fandiño co-chairs the litigation department with Daniel Sanchez, who provides additional enforcement support in court and administrative proceedings. Sanchez excels in regulatory matters and has a flair for the life sciences and technology spheres. Sergio Olivares takes the reins when it comes to prosecution, but he also chairs the management committee and much of the firm’s innovation and upward trajectory can be credited to him. Gustavo Alcocer is a leading light for all manner of patent monetisation and exploitation. With 11 years of in-house experience, the savvy negotiator is in sync with clients and their diverse commercial needs.
Panamericana De Patentes & Marcas SC
A combination of time-tested values and a global, forward-looking outlook make Panamericana De Patentes & Marcas a compelling option for rights holders of all shapes and sizes. “It is a great firm and possesses a robust patent team with a highly focused approach and an impressive roster of clients.” “Its advice in all areas of intellectual property is excellent and its professionals are completely proficient in English. Worthy of special mention is its patent prosecution expertise in the oil and software fields.” Those seeking assistance would do well to keep José Manuel Hernández Bruno in mind.
Uhthoff Gómez Vega & Uhthoff SC
There is no doubting Uhthoff Gómez Vega & Uhthoff’s “standout” reputation in the patent market. “Among the best firms in Mexico generally and incredibly well recognised”, “it immediately jumps to mind for patent work”. “It does a ton of patent prosecution and does it well”, and is also “one of the biggest players in litigation” – “it is strong on all fronts”. Javier Uhthoff-Orive is a widely acclaimed professional in this field: “He is a really trustworthy and knowledgeable individual, who has spent a long and impressive career working on patent matters.” IAM Patent 1000 debutant Eugenio Pérez also carries much clout; the “brilliant” industrial engineer “has operated in this field for over 20 years and is extremely experienced”.

Individuals: transactions

Gustavo A Alcocer - Olivares
Roberto Arochi - Arochi & Lindner SC
Héctor Elias Chagoya - Becerril, Coca & Becerril SC
Jean Yves Peñalosa Sol La Lande - Müggenburg, Gorches y Peñalosa SC
Carlos Perez De La Sierra - Calderón & De La Sierra
Kiyoshi Tsuru Alberú - TMI Abogados SC

Individuals: prosecution

Eric Alávez - Herrero & Asociados
Tomás Arankowsky - AVA
Rafael Beltrán Rivera Beltrán - Fortuny & Beltrán Rivera
Marcelo Blanco - IBERBRAND SC
Rafael Heres - Legarreta y Asociados SC
Jorge Mier y Concha - Arochi & Lindner SC
Sergio L Olivares Jr - Olivares
Eugenio Pérez - Uhthoff Gómez Vega & Uhthoff SC
Cesar Ramos - Calderón & De La Sierra
Javier Uhthoff-Orive - Uhthoff Gómez Vega & Uhthoff SC

Individuals: litigation

Hedwig Lindner - Arochi & Lindner SC
Alejandro Luna Fandiño - Olivares
Martin Michaus - Basham, Ringe y Correa SC
Carlos Perez De La Sierra - Calderón & De La Sierra
Esteban Gorches Guerrero - Müggenburg, Gorches y Peñalosa SC
Alberto Huerta Bleck - Calderón & De La Sierra
Jean Yves Peñalosa Sol La Lande - Müggenburg, Gorches y Peñalosa SC
Juan Carlos Amaro - Becerril, Coca & Becerril SC
Roberto Arochi - Arochi & Lindner SC
Luis Enrique Donnadieu Macías - Müggenburg, Gorches y Peñalosa SC
Bernardo Herrerías Franco - Hogan Lovells BSTL SC
Martin Pereyra - Axkati Legal
Alfredo Pineda Nieto - Hogan Lovells BSTL SC
Elías Ríos - AVA
Daniel Sanchez - Olivares
Guillermo Javier Solórzano - SOLCARGO
Agustin Velázquez GL - AVA
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Issue 85