The Mexican IP landscape is seeing major changes on multiple fronts. The most momentous is the United States–Mexico–Canada Agreement (USMCA), which is finally being ratified after lengthy negotiations between the parties. The trilateral agreement will usher in stronger obligations regarding IP protection. Two key revisions in the final agreement were the removal of an extended 10-year data protection clause for biologics and a provision requiring patents to be available for new uses of known drugs. These amendments will have profound implications for generic manufacturers and the practice of patent evergreening. The USMCA also includes a patent term adjustment provision, which seeks to remedy the regulatory delays that often affect applicants. An agreement has also been signed between the US Patent and Trademark Office and the Mexican Institute of Industrial Property (IMPI) which will expedite patent issuance for US patentees in Mexico. The bilateral cooperation will improve IMPI’s capacity to process applications and is likely to reduce prosecution time. Additionally, Mexico’s accession to the Hague System for Industrial Designs means that Mexican inventors can now register designs in the member states of the Hague System by way of a single application to the World Intellectual Property Organisation at no extra cost. Such changes are expected to attract greater foreign investment and reinvigorate the commercial outlook of Mexican manufacturers.
Arochi & Lindner SC
Synonymous with quality, elite IP firm Arochi & Lindner fields an impressive line-up of patent professionals, including some of the best brains in the practice. First to mind are top-flight Heidi Lindner and Jorge Mier y Concha, who head the patent litigation and patent and copyright divisions respectively. Lindner has made Arochi a hot commodity among pharmaceutical and biotechnology clients, thanks to her knack for winning thorny cases. “She’s easily one of the best litigators in Mexico – her analyses are in-depth, she knows how the courts think and work, and she is extremely persistent.” Mier y Concha is no stranger to contentious briefs either and performs exceedingly well under pressure. As a result of his leadership, the headcount and caseload of the patent team have expanded considerably. On the front lines in prosecution is Juan Rodrigo Pimentel, a gifted mechanical engineer who also knows his way around computer and electronic technologies.
The efficient and dependable IP offering at technologically sophisticated firm AVA makes it a discerning choice for clients. The ensemble’s expertise encompasses all IP rights and cuts across the contentious/non-contentious divide, meaning there is nothing it cannot handle. A “thorough lawyer with a can-do attitude”, Tomás Arankowsky is the main name to know on this cosmopolitan, collaborative team. He is endorsed for his international portfolio management prowess.
Axkati Legal SC
A relatively recent addition to the Mexican IP market, Axkati has come on in leaps and bounds since it burst onto the scene in 2016. Leveraging a fine-grained understanding of the business needs of clients and the industry landscapes in which they operate, the boutique delivers a commercially attuned service encompassing rights protection, enforcement and exploitation. A repository of trust for prestigious patrons such as Procter & Gamble and the University of Southern California, head of patents Martin Pereyra and co-head of litigation Alfredo Pineda Nieto form a dynamic pair. They both keep their ear to the ground and give contemporary strategic advice informed by the latest business and legal developments. With his Baker McKenzie background, Pereyra has excellent international knowledge; likewise Pineda Nieto, a former Hogan Lovells lawyer.
Intellectual property is a central plank of Basham, Ringe y Correa’s full-service commercial practice. Sources are quick to praise its proficiency in patent procurement, citing Martín Michaus as one of the very best prosecutors in Mexico: “Martín has been a leader in Mexican intellectual property for a long time, throughout which he has innovated in the practice and given much to IP associations and committees.” Flanking Michaus is Claudio Ulloa, who is distinguished by his combination of scientific and legal expertise and strong mechanical and electrical engineering background.
Becerril, Coca & Becerril is a premier destination for top-drawer patent expertise. Adept at managing and mitigating commercial risk, the set displays impressive dexterity not only in obtaining patent rights, but also in monetising them in alignment with long-term strategic objectives. As such, the firm has become “an important reference for entrepreneurs”. Héctor Elías Chagoya and Fernando Becerril take charge. An expert in plant varieties, Chagoya leverages his chemical engineering background to handle complex and nuanced briefs. Becerril is a crack trouble-shooter who provides impeccable leadership. Strengthening the team, Juan Carlos Amaro is a class act in litigation – his polished advocacy can prove a game changer in challenging cases.
As testament to the dynamism of its practice, C&L ATTORNEYS attracts enthusiastic praise from the clients that know it best: “The quality of its customer service, patent assessment, invention evaluation and strategic guidance is second to none. The team doesn’t speak legalese, which is especially important for independent inventors who may have a limited understanding of intellectual property law.” Head of patents Ana Castañeda is a versatile practitioner who has mastered the art of breaking down complex problems and delivering simple solutions. She covers a broad range of specialist fields and deploys her sophisticated scientific understanding to superb effect in managing telecommunications and robotics portfolios for patrons such as ZTE Corporation and Harmonic Drive Systems. One client comments: “I am particularly impressed with her initiative, her commercial approach and her straightforward advice, whether on registry or contentious matters.”
Calderón & De La Sierra
IP and technology-focused outfit Calderón & De La Sierra meets and exceeds all the IP needs of marquee pharmaceutical, food and beverage, chemical and other clients. The team stays the course to overcome prosecution obstacles and get watertight patents granted; tenacity is likewise a quality it displays in litigation campaigns, which are handled decisively. Seasoned prosecutor Cesar Ramos takes the reins of the patent department. “He is the person to call when you need timely and effective legal advice and expertise around freedom to operate matters.” Spearheading the contentious practice, meanwhile, is Carlos Pérez De La Sierra, a veteran with a profound understanding of patent law. “Carlos and his team are proactive: they raise issues for consideration and review, and go beyond the immediate brief assigned to them. Carlos’ advice is insightful – he proposes courses of action that enable the achievement of ultimate goals.” Adding further firepower, Alberto Huerta Bleck brings his A-game to patent, trademark and copyright suits.
Kudos goes to Dumont for its holistic patent offering. This is largely the result of a firm structure designed to encourage collaboration: a team of legal experts works in close partnership with specialised engineers to secure broad, ironclad protection for innovations. The ensemble has also put in place strict quality control measures that have helped to maintain its service at a consistently high level. The driving force behind its tremendous success is Victor Garrido, who attracts plentiful praise from the market: “Victor is a skilled patent attorney whose analysis is comprehensive and whose assessments are well grounded. He coordinates a very capable team and is deeply knowledgeable about technological industries in Mexico.” He recently obtained patents for Boehringer Ingelheim and Samsung Electronics in difficult situations that drew on his abundant strategic and legal talents.
“IBERBRAND is a fast-growing firm with a fresh approach: it is abandoning the protocol-driven and formalistic way of working in favour of a more flexible system.” Driving this innovation, Diego Rossi has an instinctive appreciation of what clients are looking for and always puts them first. His attention to detail and immaculate legal reasoning make him a smart choice for nuanced patent instructions. Chemistry guru Marcelo Blanco has a wealth of experience prosecuting industrial design, utility model and plant variety right applications with dexterity.
Müggenburg, Gorches y Peñalosa SC
“Müggenburg, Gorches y Peñalosa is one of the finest firms to work with. Its practitioners are superb in every way – they communicate well, act quickly and get results.” Esteban Gorches Guerrero puts his 25-plus years of experience to good use on contentious engagements, presenting resonant arguments that win over decision makers in all forums. He is distinguished by the breadth of his litigation experience in IP and non-IP areas, which has considerably enhanced his procedural and tactical nous. On the prosecution side, Ana Esther Urquizo runs a tight ship. “Ana has unmatched business awareness; her strategic input has allowed her clients to expand and exploit their portfolios in optimal ways.”
Since its inception over half a century ago, OLIVARES has cemented its reputation as one of the most prominent players in the IP space. The firm is home to some of the best practitioners on the market – in both litigation and prosecution – who collectively marry patent expertise with refined technical and business knowledge. The first name on the team sheet, Sergio Olivares is a prosecution virtuoso and a go-to expert for both start-ups and multinationals. Litigator Alejandro Luna Fandiño has mastered pharmaceutical patents and is a silver-tongued orator who makes persuasive, to-the-point arguments. Daniel Sanchez and Armando Arenas bring special qualities to the practice, too. Sanchez draws on his well-rounded IP knowledge and broad creative streak to hammer out favourable results in the courtroom; while Arenas adds value with his superb regulatory expertise.
Panamericana de Patentes y Marcas SC
Panamericana de Patentes y Marcas is a haven for innovative companies in need of staunch prosecution support. The person they seek out is Andrés Esteva, a natural-born problem solver who pulls out all the stops to derive maximum value from clients’ intellectual property. “As a communicator, Esteva is matchless: he speaks the language of inventors and conveys his own thoughts with exceptional clarity.”
The battle-hardened Uhthoff, Gómez Vega & Uhthoff has a longstanding reputation for excellence in patent practice. It constantly seeks new ways to improve its offering and puts technical tools to judicious use to improve workflows – when it comes to high-efficiency prosecution, few firms are better. Promoting this nimble approach, Eugenio Pérez manages domestic and international patent portfolios with a deft touch. Javier Uhthoff-Orive is in high demand among multinationals, which prize his global outlook. He has established a market-leading practice in prosecution in the pharmaceutical, biotechnology and electronics industries. Tenacious litigator Xavier Hadad Rojas impresses with his oral advocacy skills: “Rojas always comes prepared and leaves nothing to chance.” When the going gets tough, Saul Santoyo Orozco is also on hand. A tried and trusted partner with an encyclopaedia of attack plans, he makes all the right moves.
Other recommended expertsEnrique Díaz of Goodrich, Riquelme y Asociados is “a clever lawyer who has distinguished himself on many occasions with his eloquence and clarity of thought”. Luis Enrique Donnadieu Macías practises at ELS - Peñalosa + Donnadieu. Bringing technical ability and intellectual acuity to each case, he thrives in the cut and thrust of litigation. At Legarreta y Asociados, Rafael Heres provides incisive counsel and pursues patent protection with vigour. Karla Islas flies the flag for Spanish firm H&A. Her efforts have given the Mexican contingent momentum, such that it is no longer simply a satellite office, but a more fully fledged offering. She has a background in chemistry and significant research experience on her CV. Colleague Eric Alávez also shines in the chemical area. “Elías Ríos handles filing and litigation extremely well and his advice is always balanced and candid.” He plies his trade at Vila Abogados. Tsuru Morales Isla Abogados managing partner Kiyoshi Tsuru is a dynamic force for pharmaceutical and nanotechnology innovators.
- 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
- Juan Carlos Amaro - Becerril Coca & Becerril, SC
- Armando Arenas - OLIVARES
- Enrique A Díaz - Goodrich, Riquelme y Asociados AC
- Luis Enrique Donnadieu Macías - ELS - Peñalosa + Donnadieu
- Xavier Hadad Rojas - Uhthoff, Gómez Vega & Uhthoff SC
- Alfredo Pineda Nieto - Axkati Legal SC
- Elías Ríos - Vila Abogados
- Diego G Rossi - IBERBRAND SC
- Daniel Sanchez - OLIVARES
- Saul Santoyo Orozco - Uhthoff, Gómez Vega & Uhthoff SC
- Kiyoshi Tsuru - Tsuru Morales Isla Abogados SC
- Eric Alávez - H&A
- Tomás Arankowsky - AVA
- Fernando Becerril - Becerril, Coca & Becerril, SC
- Marcelo Blanco - IBERBRAND SC
- Ana Castañeda - C&L ATTORNEYS, SC
- Héctor Elías Chagoya - Becerril, Coca & Becerril, SC
- Andrés Esteva - Panamericana de Patentes y Marcas SC
- Ana Esther Urquizo - Müggenburg, Gorches y Peñalosa SC
- Victor Garrido - Dumont
- Rafael Heres - Legarreta y Asociados SC
- Karla Islas - H&A
- Jorge Mier y Concha - Arochi & Lindner SC
- Sergio L Olivares Jr - OLIVARES
- Martin Pereyra - Axkati Legal SC
- 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
- Claudio Ulloa - Basham, Ringe y Correa SC