Mexico remains a key battleground for rights holders, as an ongoing series of disputes between pharmaceutical innovators and generics play out in the country’s courts. The so-called ‘linkage system’ in effect between the Mexican Intellectual Property Institute (IMPI) and the Federal Commission for the Protection against Sanitary Risk (COFEPRIS) may be over a decade old, but holders of blockbuster pharmaceutical patents continue to seek clarification from the latter regarding the types of innovation covered by the arrangement. These rights holders are keen to utilise the controversial connection between patents and market authorisation to identify more cases of alleged infringement. Filings at the country’s patent office remain stable if not exactly earth shattering. Domestic industry is vibrant but its output is still modest, so most prosecution work tends to be on behalf of international operations seeking to secure their intellectual assets in the market. National phase applications under the Patent Cooperation Treaty (PCT) stand out as a primary source of income for practitioners, with US operations at the top of the list of buyers. The fallout from the US Supreme Court’s 2014 Alice Corp v CLS Bank decision has spread to Mexico, with firms noting IMPI’s increasingly harsh line on computer-implemented inventions. On the international front, hopes abound that the Trans-Pacific Partnership might rise, phoenix-like, from the ashes of the US withdrawal. The agreement may have been divisive but leaked contents of the IP chapter prompted positive responses from many practitioners. As signatories to the North American Free Trade Agreement meet to discuss the future of the partnership, the salience of IP issues in the arrangement is as strong as ever, with a stream of players desperate to have their say.
Arochi & Lindner SC
“Consistently at the top of its game", IP firebrand Arochi & Lindner is a go-to for patent work in Mexico. A whole host of players in the automotive and heavy industry theatres depend on the set’s remarkable prosecution output, conducted by the eminently qualified Juan Rodrigo Pimentel. “Nowadays clients want responsiveness and Pimentel delivers – offering objective advice supported by a rock-solid legal expertise.” He boasts an unmatched technical background too, being a specialist in engineering, information technology and technology transfer. When the work heats up the group is truly in its element; it relishes administering the final blow in proceedings on behalf of its loyal clique of domestic drug manufacturers. Patent commander Jorge Mier y Concha and litigation skipper Heidi Lindner mastermind the firm’s contentious output. Mier y Concha is a “remarkable, highly technical litigator”, an IP academic and a sought-after negotiator in licensing matters. He shares his wealth of knowledge between his students at the National Autonomous University of Mexico and his clients, for whom he is a reliable sourceof advice and support. Lindner is a “brutal” litigator, who achieves awesome outcomes in contentious matters in the life sciences and pharmaceuticals industries.
AVA has come a very long way in a comparatively short time. In just eight years, the team has secured 3,000 patents and opened six offices across Mexico, Cuba and the United States. It has also honed its array of niche specialisms, placing it in a strong position to take advantage of increasingly valuable sectors of the domestic economy. Innovation lies at the heart of its offering, while a roster of domestic manufacturers complements its multinational following and ensures its strong place in the Mexican market. The firm also founded and helps to operate the Mexican Institute of Science and Technology, through which it helps to foster the national research scene and ensure that intellectual assets are protected from the start. Backed by its “extensive line-up of incredibly knowledgeable engineers”, the outfit has continued to build on its already substantive technical offering, boasting sustained growth in its plant variety rights practice over the past 12 months. Its radical approach comes wrapped in a bespoke package delivered by partners Agustin Velázquez and Tomás Arankowsky. “Renowned in Mexico’s legal community, Agustin and Tomás offer thorough and timely advice” when prosecuting applications for titans in the pharmaceuticals, automotive and telecommunications sectors. Directed by the impressive Elías Ríos, the group’s contentious output receives acclaim, too. It has adroitly advanced infringement proceedings and nullity actions on behalf of many of the world’s largest companies.
“In a conflict of interest, Basham, Ringe y Correa springs immediately to mind", extols one illustrious peer. “It is one of the best firms in Mexico for patents – a rock-solid practice formed of highly capable and esteemed IP partners.” Recommended as much for its prosecution talents as for its expertise in contentious instructions, the set deploys wisdom accumulated from over 100 years of hard graft in IP matters. Celebrating a quarter of that time as partner in the Mexico City office this year, MartÍn Michaus is a pillar of the IP scene. He has held executive positions in all of the country’s most important associations and is a sought-after writer and speaker on IP matters. He also remains a dedicated student of the law, currently working to attain a doctorate in the field.
Becerril Coca & Becerril’s IP practice throws itself into a mass of prosecution for a troupe of major international charges. Backed by a slew of “extremely experienced, patent-focused engineers”, the technical output is all encompassing, forming a sturdy base for the group’s renowned practitioners to secure protection in any discipline. Reacting to a recent surge in applications for computer-implemented inventions, the group has utilised its solid ties to IMPI to strengthen the protection available for these difficult innovations. Taking charge on this quest, chemicals maven Héctor Elias Chagoya is most impressive. Peers at home and abroad respect his gifts in prosecution and transactional efforts: “He knows everything there is to know about licensing and technology transfer agreements. He has a laudable knowledge of the biotechnology field, too. I always feel safe knowing that Héctor is managing a case for us.” When tensions arise, Chagoya looks to “top contender in patent litigation” Juan Carlos Amaro. Deeply immersed in the legal aspects of the country’s commercial sector, he is a trusted ally to his pharmaceutical following, which relies on him for his staunch defensive faculties.
Calderón & De La Sierra
“Already among Mexico’s biggest and best-recognised IP practices, Calderón & De La Sierra is a growing force in patent work.” Indeed, the firm is experiencing both a surge in manpower and a snowballing roster of corporate devotees. In the last 12 months, a demanding line-up – including Bayer Pharmaceuticals, BASF, PepsiCo and Siemens – have flocked to the firm, seeking to take advantage of its pan-disciplinary expertise and the security of knowing that all technical and translation work is conducted in-house. The resulting swell in filings is testament to the quality of the group’s offering – one that is finely tailored to the requirements of the buyer, be it a small tech start-up or an industry goliath. Widely credited with cultivating the patent team’s upswing since his entrance in 2015, prosecution maestro Cesar Ramos “deserves recognition among the world’s preeminent patent practitioners – consistently proving his technical capabilities” in the mechanical and pharmaceutical arenas. “With an incredible knowledge of law and procedure, his judgement is entirely dependable. In addition, he is a delight to work with and a standout example of what all practitioners should be.” Bridging the prosecution and contentious outputs, partners Alberto Huerta Bleck and Carlos Perez De La Sierra focus their innate IP prosecution and enforcement skills on achieving superlative outcomes in any eventuality. Huerta Bleck’s peers commend him for his "experience and victories in litigation, friendly demeanour and deep analytical approach to his briefs. His work is of the highest quality and his communications are prompt and well written". His output has earned him considerable prestige on the IP scene, as well as the loyalty of a host of major corporations. Founding partner De La Sierra has the final word on the set’s litigation offering. Linking the worlds of science and law through a profound fluency in legal and technical issues, De La Sierra is “proactive and insightful”. “He consistently raises key issues beyond those that stand out as obvious and proposes actions that achieve the required outcomes.” Proving his combative mettle, he recently won a victory on behalf of domestic coffee-processing outfit Café Punta del Cielo to prevent it from having to increase bond payments to food titan Nestlé following an injunction.
Dumont refuses to take no for an answer when it comes to prosecution work, a fact much appreciated by its base of primarily European customers. An impressive cast of actors in the pharmaceutical, engineering, steel and mining theatres depend on its persistence to overturn examiners’ rejections and secure protection for difficult innovations. The group’s impressive hit rate is attributed to its strategic mindset and extensive technical department. The team sees every instruction as an invitation to get to grips with the substantive issues, brief the client on the most appropriate strategy moving forward and take the lead on harmonising the application to best fit the patentability criteria. Through this linear determination and technical mastery, it has overturned rejections in challenging filings for pharmaceutical titan Boehringer Ingelheim, electricals architect Maschinenfabrik Reinhausen and plastics giant Borealis. The latter company’s application was initially rejected for lack of innovative step – yet Dumont turned objections around to secure a notably broader level of protection than had been achieved for the same innovation elsewhere. On point at the patent practice is Victor Garrido, an avid prosecutor whose technical opinions are also essential to the oufit’s assured contentious output. His expertise and dilligence were instrumental for victory in a tender process for responsibility over Kraft Foods’ Mexican patent portfolio.
Hogan Lovells BSTL SC
General practice giant Hogan Lovells unites the necessary skill sets to deliver exemplary prosecution, litigation and contractual work for a horde of multinationals, which count on its global resources and unique position in the market to get results. A new German desk, staffed by a lateral hire from the group’s office in Munich, enables the firm to represent the interests of Germany’s finest corporations in Mexico. At the heart of everything is stalwart patent double act Bernardo Herrerías Franco and Alfredo Pineda Nieto. The pair is capable of handling anything sent their way, battling on behalf of IT, mining and pharmaceutical players including US titans Pfizer and Warner-Lambert. IP chief Herrerias Franco is a cross-disciplinary savant and former president of the Mexican Association for the Protection of Intellectual Property, whose counsel is in demand at the highest levels. Pineda Nieto is an academic, highly capable across the contentious/non-contentious divide and an expert on the link between IMPI and COFEPRIS in healthcare applications – an appreciation instrumental to the group’s pharmaceutical following.
IP dynamo IBERBRAND powers through a plethora of instructions from diverse international players that value its streamlined, cost-effective modus operandi. “Its high-quality professionals stay one step ahead of the competition in patent prosecution and are always informed on the latest developments in Mexican patent law.” The set excels in handling national phase PCT applications, continuing to reel in clients from across the United States, Asia and Europe attracted by its flat-rate offering and personal approach. Prosecution expert Marcelo Blanco is the brains of the operation. A life sciences authority by training, he deploys his talents for patrons across the technical spectrum – handling applications on behalf of Chinese electronics conglomerate Xaomi and freight-engineering leviathan WABTEC.
Müggenburg, Gorches y Peñalosa SC
“Diligent, ethical and commercially oriented” boutique Müggenburg, Gorches y Peñalosa is open about its preference for more contentious legal work. A highly capable prosecution arm ensures that it is “a tough competitor” on all fronts – well rounded and offering added value where required. However, its partners truly relish getting involved when rights holders are in need of a courtroom champion; they will throw themselves into jousting matches for patrons in any arena. Offices in Mexico City and Guadalajara place the firm in prime position to foster the flourishing domestic industry, while a sharp regulatory emphasis and shrewd business acumen ensures that it excels in pharmaceutical work. Its “profoundly strategic advice and strong analytical output” guarantees satisfaction for its diverse following, which values its ability to “work independently and with a clear focus on client needs”. Ringleaders Jean Yves Peñalosa Sol La Lande and Esteban Gorches Guerrero receive high praise from peers and clients for their impressive output. Peñalosa Sol La Lande has a keen eye for the peculiarities of life sciences applications, expertly securing the broadest protection possible. “Gorches is an outstanding litigator and an excellent practitioner with a strong commercial focus.” This has earned him a reputation as a discerning choice in infringement proceedings relating to blockbuster drugs. Together, the pair deliver “an outstanding service, clearly and directly explaining legal actions and the potential implications for business”. With skills and experience at the intersection of IP and regulatory law, Luis Enrique Donnadieu Macías has a secure grasp on all aspects of patent work and is a favourite among global healthcare giants.
“Among the biggest firms in volume of filings undertaken, Olivares has the edge when it comes to quality.” The boutique maintains a tight grip on a substantial corner of the market and has accrued an enviable mountain of respect, built up through its accomplished handling of the prosecution, litigation and transactional trinity. Acutely aware of the IP aspects of domestic law and international agreements, the partners invest their regulatory and technical expertise into multiple overlapping industry and practice groups, ensuring that every instruction is dealt with according to the legal and sector-specific requirements of the buyer. When the going gets tough, the litigation set is not afraid to get aggressive. In recent cases it has forced IMPI to reconsider and clarify its patentability criteria, winning victories for clients, including Novartis, while simultaneously altering the course of the country’s patent law. Leading the charge, Alejandro Luna Fandiño is “an extraordinary litigator, active at every level – from IMPI to the Mexican Supreme Court and back again”. Acting on behalf of Eli Lilly – and in the country’s highest court – he is due to battle for a precedent that will establish the parameters for the Roche-Bolar exemption in the national market. “In every instruction, he is responsive and insightful, developing and implementing strategies which incorporate his deep and thorough understanding of the legal issues and reflect the practical realities of litigation in the country.” He comes recommended as “a knowledgeable IP practitioner offering creative and cost-effective advice”. Fellow litigation team co-chairs Daniel Sanchez and Sergio Olivares share Luna’s polymathic abilities; Sanchez is a force to be reckoned with in litigation and possesses a fine mind for regulatory and administrative issues, earning him a strong following among life sciences and biotech concerns. Olivares is equally skilled in prosecution and confrontational matters. He applies his wide array of talents and international experience to spearheading the development of the practice’s comprehensive offering.
Panamericana De Patentes y Marcas SC
IP dynasty Panamericana de Patentes y Marcas has honed its craft over 75 years of work in the patent sphere. “Experts in prosecuting applications in the oil and gas and software domains", its team quickly gets a handle on innovation across a multitude of disciplines, skilfully attending to an impressive number of applications for its faithful clientele. Among the firm’s many selling points, its ability to operate in English is a bonus for international actors, while its litigators step up to the plate with vigour and authority, deftly enforcing the protections their colleagues in the prosecution corps have worked so hard to secure. A leading light at the practice, general director Andrés Esteva has one foot in each division, bringing his strengths – both legal and technical – to a host of instructions from appreciative clients.
Uhthoff, Gómez Vega & Uhthoff is king of the hill in Mexico’s patent playground, handling a staggering volume of applications for the world’s leading industry players. It “excels in prosecution”, coming out in front in a race to the top with an assured yet humble delivery. Its partners recognise a changing world and the need to adapt, inviting input from both the most experienced and the most fresh-thinking practitioners in the field. Among them, Eugenio Pérez is repeatedly name-checked by peers for his non-contentious nous. Celebrating a decade as partner this year, he is a “remarkable, technical practitioner” and a beacon in the trans-American patent milieu, deeply involved in domestic and international associations and sought after as a speaker on IP issues. Standing shoulder to shoulder alongside patent department head Javier Uhthoff-Orive, Pérez dictates the division’s technical output. Uhthoff-Orive has “dedicated his life to patent work” and, as a result, is highly qualified in prosecution and transactional avenues. Together the duo coordinates a crack team of specialists in the protection of intellectual assets across the life sciences, telecoms, electronics and software sectors. No one-trick pony, the set is “among Mexico’s biggest players in patent litigation” as well, ensuring that it is poised to react to the increasing prevalence of contentious cases.
Other recommended expertsHerrero & Associados’ man on the ground in Mexico, chemical sage Eric Alávez expertly soldiers through a heap of instructions for the Spanish outfit’s roster of global leaders. Rafael Beltrán Rivera comes highly recommended by peers for his talents in the patent domain. A skilled all-rounder practising from his namesake set Beltrán Fortuny & Beltrán Rivera, he champions the patent cause at the Mexican Association for the Protection of Industrial Property. Highlighted here for his prosecution nous, Rafael Heres possesses a skill set encompassing the worlds of corporate law and intellectual property. He can be reached at Legarreta y Asociados. Since his move to Axkati Legal, Martin Pereyra has made waves through his “litigation savvy and sound counsel in patent matters”. He leads the patent practice, advising throughout the full lifecycle of a patent. “Doing an incredible job and putting forward excellent arguments,” Guillermo Javier Solórzano continues to light up the patent environment, practising out of Mexico City outfit SOLCARGO. His pharmaceutical expertise is of particular value to his collaborators, with whom he has engaged in litigation against multinational pharmaceutical giants.
- 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
- 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
- Agustín Velázquez GL - AVA
- Eric Alávez - Herrero & Asociados
- Tomás Arankowsky - AVA
- Rafael Beltrán Rivera - Beltrán Fortuny & Beltrán Rivera
- Marcelo Blanco - IBERBRAND SC
- Héctor Elias Chagoya - Becerril, Coca & Becerril SC
- Andrés Esteva - Panamericana de Patentes y Marcas SC
- Victor Garrido - Dumont
- 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
- Juan Rodrigo Pimentel - Arochi & Lindner SC
- Cesar Ramos - Calderón & De La Sierra
- Javier Uhthoff-Orive - Uhthoff, Gómez Vega & Uhthoff SC