Mexico

The Federal Law on the Protection of Industrial Property came into force on 5 November 2020, replacing the former Industrial Property Law. The new law ushers in a host of changes with respect to patents – for example, it clarifies what is non-patentable; impedes the possibility of double patenting; affords new opportunities for obtaining supplementary protection certificates; and includes a Bolar exemption allowing for the import by third parties of patented active drug ingredients for the purpose of conducting tests in the final three years of patent protection. The reform is an important step towards harmonising Mexican IP law with international standards and gives those protecting their inventions in Mexico greater confidence.

Firms: litigation

Firms: prosecution

Arochi & Lindner SC

Famed around the world for its enforcement prowess, Arochi brings the heat in patent and IP litigation. It tackles multi-layered cases in style, assembling the right combination of technical expertise, trial ability and commercial thinking for each brief. Its mastery of the art of persuasion is also on show on prosecution instructions: it has a knack for convincing examiners and overcoming objections. Taking the reins of the patent and copyright practice, Jorge Mier y Concha is a sought-after opinion giver, litigator and deal lawyer who is much appreciated for his clear-sighted strategies. Valuable leadership is also provided by senior partner Heidi Lindner, an elite pharmaceutical litigator and all-round life sciences industry expert; and mechanical engineer Juan Rodrigo Pimentel, who captains the prosecution division.

AVA

AVA provides a satisfyingly complete domestic and cross-border patent and IP service, and is thus a reliable one-stop shop for rights holders. Firmly embedded in the nation’s innovation scene, the firm established the Mexican Institute of Science and Technology, through which it promotes entrepreneurialism and inventorship. Clients enjoy hands-on support from high-calibre individuals such as Tomás Arankowsky, “an excellent lawyer with an unmatched ability to manage complex patent matters”.

Axkati Legal SC

Intellectual property is the focal practice of Axkati Legal, a pragmatic and creative boutique that understands not just how to obtain strong, enforceable patents, but also how to leverage them for commercial purposes. The group also litigates with poise and, while always ready for judicial action, has a flair for facilitating early resolutions. The patent practice is led by Martín Pereyra, whose all-round dexterity makes him a savvy problem solver. Alfredo Pineda Nieto is the other sure bet here and a crack litigator for any complex patent or trademark dispute.

Baker McKenzie

Baker McKenzie’s Mexico contingent forms a vital component of a robust and well-integrated regional patent practice, which is staffed by 25 attorneys and technical experts. Taking advantage of the firm’s international reach and proprietary docketing systems and other technologies, the group provides an efficient service that always hits the spot. Local leadership falls on the shoulders of Marina Hurtado-Cruz, an astute manager of pharmaceutical patent portfolios. Overcoming objections and speedily securing much-needed rights, she helps innovative companies to explore new markets and make smart business moves. Clients hail her communication skills, affinity for detail, technical aptitude and strategic nous.

Basham, Ringe y Correa SC 

Proficient in all areas of technology and adept at guiding optimal choices at every point in the patent lifecycle, Basham, Ringe y Correa makes light work of any patent instruction. The team also has an intuitive grasp of trade secret issues and can put in place multi-layered protection that gives patrons confidence in pursuing their business goals. Partner-in-chief Claudio Ulloa capitalises on his mechanical and electrical engineering background to produce precise technical reports and percipient opinions. Colleague and celebrated thought leader Martín Michaus is another essential ally, particularly to those in need of high-level strategic counsel.

Becerril, Coca & Becerril, SC 

“Tremendously strong in the patent area” and “an amazing firm with a highly qualified team”, is the verdict on time-tested international legal and business consultancy Becerril, Coca & Becerril. The firm works closely with clients to fine-tune their innovation approaches and IP strategies, giving them the tools to take their creativity to the next level. Primed and ready for litigation, the set is counted on by companies that find themselves in conflict with competitors. A well-configured team is anchored by Fernando Becerril, Mariana González-Vargas and Juan Carlos Amaro, who each brings something special to the table. Senior partner Becerril is admired for his relationship-building skills and telecommunications, software and business methods patents expertise. New to the listings this year, Vargas is endorsed for her life sciences proficiency; while Amaro is the top litigator on deck.

C&L Attorneys SC

Despite its relatively compact (though growing) size, dynamic boutique C&L covers all bases for clients and is thus a great one-stop IP shop. Zooming in on the patent side, the group displays finely honed technical insight in the life sciences and high-technology domains, giving a diverse feel to its client base and caseload. Brilliant at tailoring the ensemble’s service to fit the needs of patrons and carrying out assignments with a strong personal touch, Ana Castañeda takes the lead on patent matters. Her enthusiasm for deep-diving into the technology is illustrated by an outstanding track record in getting patent applications through to grant in Mexico and elsewhere. She has recently been managing prosecution for ZTE, among other technology heavy hitters. In his element on complex pharmaceutical disputes, Jorge Léon supervises the litigation practice with a hawkish eye.

Calderón & De La Sierra

Sophisticated outfit Calderón & De La Sierra stays sharp and ready for anything in intellectual property – one of several key practice areas alongside corporate, regulatory, litigation, and data privacy and cybersecurity. Its highly trained, scientifically knowledgeable squad of high-calibre professionals shines in all phases of the patent lifecycle. The team takes its cue from founding and managing partner Carlos Pérez De La Sierra, an “amazing pharmaceutical litigator” and “market-leading IP lawyer”. César Ramos and Alberto Huerta Bleck also help set the standard of excellence – Ramos as head of the patent practice and chief prosecution expert, and Huerta Bleck as another seasoned litigator.

ClarkeModet 

ClarkeModet earns significant expanded coverage in the IAM Patent 1000 for 2021, courtesy of its inaugural inclusion in the Mexico rankings, in which no less than four of leading representatives also make the cut. “Committed, consistent and in full control of the matters under its care”, the local group impresses with its efficient, quality-controlled representation of industry-leading innovators. The broader firm is clearly distinguished by its international reach and capability, which the practitioners in Mexico lean heavily into in supporting clients with their every need. The top names on the team sheet are technical and legal services director Tanya Escamilla; Nahanny Canal , who takes the lead on prosecution and technical services manager Tania Lopez.

Dumont Bergman Bider & Co SC

Specialised IP outfit Dumont garners glowing reports from the market: “Its lawyers are responsive, proactive, experienced, hands-on and responsive, and provide great support on a timely basis.” Unerring attention to detail is a hallmark of its service, reflected in its fine-grained understanding of both the technical complexities and the commercial potential of clients’ inventions, and in the strength of the protections it puts in place. A mastermind in this regard is patent practice head Victor Garrido: “Victor consistently proves himself to be extremely knowledgeable about all aspects of Mexican patent law and great at implementing effective strategies.” Since joining the firm over a decade ago, he has developed its patent client portfolio tremendously in the life sciences and numerous other industry sectors. The team around him is a large one and puts its resources to good use on behalf of prestigious companies such as Boehringer Ingelheim and Samsung Electronics.

H&A

With a solid footprint in Europe and Latin America, H&A is ideally situated to handle cross-border patent protection in the Spanish and Portuguese-speaking worlds. “It uses its network very effectively and does a fantastic job dealing with challenging logistics and tight deadlines.” Keeping things running smoothly in Mexico is local director Eric Alávez, a chemical engineer with valuable industry insight in the energy sector. Burning brightly as a responsive, deeply committed practitioner, Karla Islas has a strong technical background in food chemistry, coupled with well-developed commercial nous.

IBERBRAND SC

Agile at procuring, enforcing and monetising rights, and demonstrating a complete command of the entire IP spectrum, IBERBRAND provides a satisfyingly holistic service to innovative companies. Creativity characterises its approach – the lawyers here see solutions that others don’t and design new ways to realise them in a time and cost-effective manner. This quality is instilled by founding partner Diego Rossi, an abundantly experienced, internationally well-connected professional who takes a personal interest in clients’ concerns. For life sciences patent prosecution expertise, the key contact is Marcelo Blanco, who has an exceptional ability to navigate matters through the Mexican Patent and Trademark Office, as well as many of its foreign counterparts. Like Rossi in his general manager role, Blanco brings staunch leadership to the firm, which he serves as patent director.

Müggenburg, Gorches y Peñalosa, SC

Müggenburg, Gorches y Peñalosa offers a comprehensive suite of corporate and litigation services, but is especially prized for its prowess in the field of intellectual property, which is a central pillar at the firm. It deftly dispatches prosecution, licensing and contentious briefs for a diverse range of clients, including major pharmaceutical companies. Overseeing the practice at the partner level, Esteban Gorches Guerrero has wisdom distilled from nearly three decades on the frontlines of IP development in Mexico. Seasoning also sets senior attorney Ana Esther Urquizo apart: she has engaged in prosecution matters for 25-plus years and is appreciated for her strategic insight.

OLIVARES 

A market leader on the Mexican IP scene and a perennial IAM Patent 1000 gold-tier member, OLIVARES has a rich tradition of excellence in the patent space. Its well-integrated team of attorneys and technical specialists consistently obtains broad and enforceable patents without any wasted time or effort, and is skilled at managing and developing large patent portfolios both in Mexico and internationally. Sergio Olivares Jr, Daniel Sanchez, Armando Arenas and Alejandro Luna Fandiño enjoy eminent standing and form one of the strongest partner teams in the country. Olivares never lets the standard slip, as illustrated by his continued expansion of the firm’s horizons during the past three decades: over the years he has launched numerous specialised groups – including in regulatory and administrative law – which are complementary to the patent practice. Sánchez, Arenas and Luna have a flair for litigation and an enviable hit rate in all kinds of IP cases, making OLIVARES a go-to for the most complex disputes.

Panamericana de Patentes y Marcas SC

Testament to the quality it offers, boutique Panamericana has lasting connections with many of its clients, some of which extend back more than five decades. All comers are treated to a seamless, cost-sensitive service that meets the most stringent requirements in terms of quality. The team maps out its approaches in line with the latest developments in intellectual property not just in Mexico, but internationally. Andres Esteva is the fulcrum round which the patent practice turns. The ambidextrous practitioner handles both prosecution and litigation briefs, giving him a keen understanding of the business value of intellectual property and how to position clients for maximum advantage in competitive markets.

Uhthoff, Gómez Vega & Uhthoff, SC 

Venerable outfit Uhthoff, Gómez Vega & Uhthoff has been pacing the field of Mexican patent and IP practice for more than 115 years, giving it unmatched institutional knowledge of the market. Blending technical, legal and commercial expertise in a compelling way, its team – helmed by eminent senior partner and strategist Javier Uhthoff-Orive – always finds ways to add value on strategically important rights acquisition, monetisation and enforcement assignments. Several team members receive special praise from research sources this year. Prosecution lead Eugenio Pérez is “extremely responsive” and an “outstanding patent agent with vast experience”. Contentious ace Xavier Hadad-Rojas earns commendations as a “proactive and talented lawyer who drives superb results”. Another consummate litigator, Saúl Santoyo-Orozco “knows Mexican and international patent law, and provides practical, solutions-oriented advice that demonstrates excellent judgement”.

Other recommended experts

A “fantastic lawyer at an excellent firm”, Enrique Díaz of Goodrich, Riquelme y Asociados is a popular choice among peers for conflict of interest referrals. He has a ton of Mexican and Latin American IP know-how encompassing all facets of the protection, maintenance and enforcement of intellectual assets. At ELS – Peñalosa + Donnadieu, Luis Enrique Donnadieu Macías has smart patent strategies at his fingertips for any contentious or non-contentious situation. Well prepared in the brands and copyright area, too, he is a walking one-stop IP shop. Bernardo Herrerías Franco is “among the most capable and knowledgeable attorneys in Mexico. A great pleasure to work with, he is always available to discuss things and provides timely, well-developed answers to all questions”. He leads the Mexican IP practice at Hogan Lovells. Rafael Heres of Legarreta y Asociados is brilliant on the service aspects of his craft – he responds promptly, gives personal attention to matters and is competitive on fees. With 20-plus years of patent prosecution and transactions experience to draw upon, he also delivers on quality. An invaluable support on patent procurement and licensing instructions, José Juan Mendez of MÉNDEZ + CORTÉS has an enviable international following and is called on by a host of top companies and leading foreign law firms. Recent highlights include filings for Volkswagen and Glenmark Pharmaceuticals. Elías Ríos is “an extremely diligent lawyer whose responses are immediate, direct, clear, concise and easy to understand. He pays great attention to detail and is quick to understand his clients’ needs”. He undertakes a mix of prosecution and litigation work at VILA Abogados. TMI Abogados thrives at the intersection of different practice areas and is a great pick for complex multi-layered matters involving intellectual property, regulatory issues, data concerns and more. Leading the firm’s inter-disciplinary team, Kiyoshi Tsuru has a passion for technology which pervades the entire group in a way that helps drive favourable outcomes.

Individuals: litigation

Individuals: prosecution