Mexico

The past year has seen a raft of game-changing developments on the Mexican legal landscape, with plenty to keep IP practitioners on their toes. Perhaps most momentous of all was the September 2018 signing of the United States-Mexico-Canada Agreement (USMCA), which is set to supersede the North American Free Trade Agreement and currently awaiting ratification by all three countries. Under the USMCA, patent owners will enjoy longer terms of protection and will be entitled to term adjustments in the event of registration delays. In addition, biologics – which were previously not explicitly covered by Mexican law – will now benefit from a 10-year protection term. The agreement has been widely applauded for providing greater certainty to rights holders, which should in turn bring more investment into the country and reinforce its innovation scene. Debate has also been ongoing with respect to the patent linkage system between the Mexican Intellectual Property Institute (IMPI) and the Federal Commission for the Protection against Sanitary Risk, although much remains to be done to increase confidence surrounding the interaction of drug patents with health regulations. Despite this, strong efforts are being made to establish a reliable linkage system to encourage healthcare and patent authorities to take all available measures to maximise the impact of healthcare innovation.

Firms: litigation

Firms: prosecution

Arochi & Lindner SC

“Arochi & Lindner is the gold-standard when it comes to IP practice in Mexico; the firm stands out for its exceptional professionalism and top-notch client service.” Superstars Jorge Mier y Concha and Heidi Lindner draw in the crowds and are “top litigators who live and breathe patents. They do a phenomenal job representing companies in the pharmaceutical and biotechnology industries”. Leader of the patent division Mier y Concha “has a diverse skill set and is one of the few lawyers who really delves into the technical issues”. Lindner, who oversees the contentious practice, is “one of the toughest litigators out there” and “always gives her counterparts a run for their money”. Though best known for its enforcement prowess, Arochi & Lindner also runs a tight ship on the prosecution side. In charge of this practice is Juan Rodrigo Pimentel, a mechanical engineer who is “highly knowledgeable, responsive and thorough”.

AVA

Throughout its 10 years in patent practice, AVA has gone from strength to strength; it started with 20 files and now handles more than 2,600 cases on behalf of many household names and academic institutions. The firm’s commitment to innovation in Mexico is demonstrated by its founding of the Mexican Institute of Science and Technology (MIST), a technology-focused business incubator. The managing director of MIST, and AVA’s general manager, is Agustín Velázquez, a hard-hitting litigator and tactful negotiator who is highly prized for his strategic insights. He and patent practice coordinator and ace global portfolio manager Tomás Arankowsky are “super proactive and are always looking for – and finding – solutions to every problem”.

Basham, Ringe y Correa SC 

Dynamic full-service law firm Basham, Ringe y Correa is “the best in the business” at providing 360-degree patent services. Its offices in Mexico City, Monterrey, Queretaro and Leon give it excellent national coverage and its membership of the Lex Mundi network means it is perfectly poised for international commerce. The top practitioner here is trailblazer Martín Michaus. “He works around the clock for his clients and is a fantastic lawyer with profound IP knowledge.” The firm has a new name in the IAM Patent 1000 this year as Claudio Ulloa makes his debut. The mechanical and electrical engineer acquits himself with distinction on the prosecution front.

Becerril, Coca & Becerril SC

Winner of the Mexico Patent Firm of the Year at the inaugural Global IP Awards, “Becerril, Coca & Becerril is the first choice for patent prosecution in Mexico”. It has “outstanding and highly reputed patent attorneys” who relish diving into the nitty-gritty details of complex inventions and “produce work of the highest standard”. Overseeing the patent and technology practice is Héctor Elias Chagoya, “a resourceful professional with a deep knowledge of patent strategy and protection not just in Mexico but the whole of Latin America”. “He is a leading reference for chemical, pharmaceutical and biotechnology matters and a valuable asset to have on your side.” He is also Mexico’s first certified licensing professional and demonstrates a deft touch on IP commercialisation. Another name for the address book is chair Fernando Becerril. He knows all about the firm’s business process automation and workflow management tools, having developed them over many years in his previous systems and IP management roles; he deserves immense credit for the consistently smooth and efficient functioning of the firm. When trouble brews, IP litigation chief Juan Carlos Amaro steps in with resolve to sort things out.

Calderón & De La Sierra

At every stage of the patent lifecycle Calderón & De La Sierra shows its dedication to getting the right results for clients; in line with this, it has developed standout privacy and data protection practices to ensure that nothing gets missed and that proposed solutions are satisfyingly holistic. Prosecution is a strong suit and an area in which senior patent counsel César Ramos shines brightly. The former OLIVARES partner is a repository of trust for some of the world’s top innovators in the telecoms, software and automotive markets. “Richly experienced and eminently knowledgeable, he exercises sound judgement at all times and provides in-depth, well-reasoned and timely advice that clients can trust.” Manned by Alberto Huerta Bleck, the litigation practice is robust, too; Bleck’s track record of success in important judicial and administrative patent disputes is certainly impressive. “Alberto is responsive and an excellent communicator who is a pleasure to work with. He operates swiftly, decisively and cost-effectively.” He frequently collaborates with Carlos Pérez De La Sierra, a “highly proactive lawyer who provides the most insightful advice”. The founding and managing partner of the firm is an IP devotee who generously dedicates his time and knowledge to patent law students at various universities.

Dumont 

Dumont’s patent team is technically accomplished and confidently handles complex innovations arising out of virtually all scientific fields. The practitioners here demonstrate excellent foresight when prosecuting patents and have a knack for predicting examiner responses to applications; leveraging this, they get drafts into the best shape possible the first time around, which minimises office actions and ensures that rights are registered as efficiently as possible. LEGO and Ricoh are just two prestigious patrons benefiting from this forward-thinking approach. Victor Garrido serves as head of patents and garners great reviews from the clients who know him best: “The most reliable patent attorney in Mexico, Victor is diligent, service-minded, extremely responsive and incredibly knowledgeable.”

Hogan Lovells

Global player Hogan Lovells has amassed infinite wisdom when it comes to protecting patent assets in Mexico and internationally. Flexing more than three decades of experience, IP division leader – and president of the Mexican Association for the Protection of Intellectual Property – Bernardo Herrerías Franco is sought after for his flawless management of global portfolios, his authoritative take on IP strategy and his cool head in contentious scenarios. He forms a great team with Alfredo Pineda Nieto, a commercially minded IP all-rounder with a particular talent for enforcement.

IBERBRAND SC

With its integrated team of trademark and patent attorneys, litigators, IP strategists and technical advisers, IBERBRAND is well-placed to handle any IP conundrum thrown at it. Precise prosecution and harnessed aggression in IP litigation make it one of the market’s more dynamic firms, and its ability to serve as a hub for protection and enforcement in Latin America further distinguishes it from the pack. Marcelo Blanco captains the patent practice and attends to life sciences instructions with an eye for detail and clever strategies. He is in demand as an opinion giver thanks to his facility with IP databases and the prior art knowledge he has developed as a result.

Müggenburg, Gorches y Peñalosa SC

Commercially attuned, creative and experienced, Müggenburg, Gorches y Peñalosa is a popular choice among innovators in the high-tech and pharmaceutical industries. The firm is especially known for its litigation dexterity; co-heads of the IP unit Jean Yves Peñalosa Sol La Lande and Esteban Gorches Guerrero are take-charge courtroom virtuosos who know all of the right levers to pull to win any dispute. Peñalosa Sol La Lande has trained around the world – from Harvard Law School to the Japanese Institute of Invention and Innovation in Tokyo – giving him a cosmopolitan outlook that resonates with global companies. Gorches cultivates panoramic understanding of his clients’ businesses thanks to his broad expertise encompassing administrative, constitutional, commercial and IP litigation. Luis Enrique Donnadieu Macías is noted for his combined IP and regulatory knowledge.

OLIVARES

This year marks the 50th anniversary of “brilliant and extremely reliable firm” OLIVARES. Throughout its existence, the ensemble has played a pivotal role in developing Mexico’s IP laws, practices and policies. For example, OLIVARES recently achieved an agreement with the IMPI that foreign language versions of Patent Cooperation Treaty applications will no longer count as extra pages or amass additional fees, following a new government amendment of the patent filing fee scheme. The firm maintains a “strong, experienced and technically adept group that consistently delivers high-calibre work in prosecution and in litigation”. At the top of the team sheet is Sergio Olivares, who is counted as “one of the most knowledgeable attorneys in Mexico”. “Efficient and prompt, he gets results – and his services are excellent value for money, too.” His recent work for Celgene has shaped the standards of evaluating inventive step and novelty claims for pharmaceutical patents. With him on this has been Alejandro Luna Fandiño, “an excellent lawyer whose deep expertise in the pharmaceutical industry is obvious even from the most fleeting of conversations”. Daniel Sanchez is another top dog; he co-chairs the litigation team and is a tried-and-tested administrative litigation and regulatory expert. Thanks to vociferous praise from the market, Armando Arenas enters the IAM Patent 1000 listings for the first time this year. “Armando displays unwavering professionalism and provides highly sophisticated advice as a result of his combination of substantive IP knowledge and procedural expertise. He is a very effective litigator.”

Uhthoff, Gómez Vega & Uhthoff SC 

“Uhthoff, Gómez Vega & Uhthoff is a master of high-efficiency patent prosecution” and “handles a monumental volume of patent applications while maintaining high standards”. It is also an assured performer on the litigation and enforcement side, having proven its mettle in many complex and commercially significant disputes. The set thrives as a result of Javier Uhthoff-Orive’s steady leadership. “Javier communicates clearly and gives complete answers to any queries. He is not one to shy away from responsibility – with him, you know your matters will be taken seriously.” Flanking him is Eugenio Pérez, “a leading reference for patent prosecution in Mexico”. “Eugenio displays a remarkable commitment to his clients. Personable and wonderful to work with, he has been in the business for a long time and has deep knowledge to show for it.”

Other recommended experts

Armed with “impressive technical capabilities”, Eric Alávez offers a “responsive, well-rounded” prosecution service for clients in the chemical and petroleum industries. Herrero & Asociados is his base of operations. Beltrán Fortuny & Beltrán Rivera founder Rafael Beltrán Rivera is “a reliable contact” and the man to call on for all-encompassing patent protections. Andrés Esteva of Panamericana de Patentes y Marcas is an IP value creator par excellence. He exercises a keen eye for strategy to give his clients a competitive edge in their markets. Flying the flag of Legarreta y Asociados, Rafael Heres “is a gem” who is consistently singled out for his non-contentious talents. “Clients feel comfortable instructing him – he is a true student of intellectual property and has a great commercial sense. He is bright, timely and a great professional.” Recently moving back to the Mexican branch from Herrero & Asociados’ headquarters in Madrid, food chemist Karla Islas astutely deploys more than 15 years’ experience when handling applications. Martin Pereyra leads Axkati Legal’s patent practice. Adept at prosecution, portfolio management, litigation and IP transactions, the versatile operator also possesses excellent regional knowledge. “An exceptional professional at Vila Abogados, Elías Ríos displays a high level of intellect at all times and provides valuable advice when getting patents granted.”

Individuals: litigation

  • Heidi Lindner - Arochi & Lindner SC
  • Alejandro Luna Fandiño - Olivares
  • Martín Michaus - Basham, Ringe y Correa SC
  • Carlos Pérez 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
  • Armando Arenas - Olivares
  • Luis Enrique Donnadieu Macías - Müggenburg, Gorches y Peñalosa SC
  • Bernardo Herrerías Franco - Hogan Lovells
  • Martin Pereyra - Axkati Legal
  • Alfredo Pineda Nieto - Hogan Lovells
  • Elías Ríos - Vila Abogados
  • Daniel Sanchez - Olivares
  • Agustín Velázquez GL - AVA

Individuals: prosecution