Saúl Santoyo Orozco

Saúl Santoyo-Orozco is a senior partner and the head of the litigation department at Uhthoff, Gomez Vega & Uhthoff. His practice focuses on IP litigation and enforcement, anti-piracy and anti-counterfeiting issues, domain names disputes and counselling. With extensive experience handling complex IP litigation, he has particular expertise in transcendental disputes involving patents.

Mr Santoyo-Orozco is routinely involved in multidisciplinary cases, where he can advise clients on all the legal and technical aspects of their industrial, commercial, institutional or government litigious matters. Mr Santoyo provides his clients with well-thought-out, practical and efficient solutions to all their IP issues. He also designs and implements anti-counterfeiting programmes.

Mr Santoyo-Orozco holds a law degree from the La Salle University Faculty of Law, Mexico City, and has completed postgraduate studies in IP, international commerce and internet law.

He is the author of Well-Known Trademarks (1997) and co-author of the Mexican chapter in Global Patent Litigation: How and Where to Win, published by Bloomberg Press and now in its third edition. He is also the author of several articles on IP-related topics and has spoken publicly on these issues and lectured at several universities and associations.

Mr Santoyo-Orozco holds leadership positions in several professional and industry associations and is a member of numerous others; he also regularly attends the meetings of the International Anti-counterfeiting Coalition, the International Trademark Association, the Mexican Association for the Protection of Intellectual Property, the Brazilian Association of Intellectual Property and MARQUES. He co-chairs the firm’s Entertainment and Sports Law Committee.

Uhthoff is a clear leader among IP firms in Mexico. For over a century the firm has been providing legal services to clients both domestically and around the globe. The firm is one of the most prestigious and recognised law firms in the country, with an undeniable track record of success across a spectrum of services in an array of different industries. The combined expertise at the firm in delivering the legal services clients expect and in doing so with the insight and awareness of what drives clients’ passion for innovation is what sets the firm apart.

Uhthoff’s main practice areas are outlined below.

Intellectual property

• New creations (patents, utility models, industrial designs, integrated circuits and plant varieties) – the new creations department comprises not only lawyers who are experts in the area, but also engineers specialised in different industries.
• Patent applications – the firm has filed the largest number of patent applications in Mexico every year for the past 20 years.
• Plant breeder’s rights – newly developed plant varieties are eligible for exclusivity IP rights in Mexico in the form of plant breeder’s rights. The firm has ample experience in the filing, prosecution and enforcement of such rights. With a staff of qualified life sciences specialists and experienced attorneys, the firm provides a high-quality, full-scope service in this area.
• Distinctive signs (trademarks, denominations of origin, trade names and commercial slogans) – this department handles services relating to all aspects of the registration and maintenance of trade and service marks in accordance with Mexican and international policy and law. The firm also holds the number one spot for the total number of trademark applications filed every year in Mexico.
• Copyright – the department provides protection of artistic and intellectual works and registration with the National Institute of Copyright. It also counsels clients in the defence and enforcement of their copyright against infringers, corporate and commercial law. Although the firm’s core practice is in intellectual property, over the years it has incorporated other areas of law and now offers services in corporate and transactional matters in Mexico: from the inception of a business to all general legal affairs relating to daily commercial and business operations.

Corporate and business law

• Legal advice for business solutions.
• Franchising – the firm’s franchise practice combines knowledge and experience in different areas, including trademarks, litigation and corporate law. With this synergy, it provides clients with integral franchising services, from conducting due diligence and drafting disclosure documents to comprehensive regulatory and compliances services on behalf of both franchisees and franchisors.
• Licensing – the licensing department provides expert advice on the negotiation, design, elaboration, administration and analysis of licensing contracts for IP rights, franchises and technology transfers.
• Regulatory – this department provides information on the regulations that must be complied with and the permits that must be obtained by manufacturers and importers, for the preparation and sale of food, alcoholic and non-alcoholic beverages, tobacco, cleansers, cosmetics and medicines. Further, it provides regulatory solutions in connection with both day-to-day and complex environmental regulatory issues and projects in different sectors.

Entertainment, media and sport

• Entertainment law – with its combination of copyright, corporate and litigation expertise, the firm provides clients with day-to-day counselling on legal challenges and issues faced within a variety of industries, including film, TV, radio, music recording, publishing, theatre and sports.
• Sports law – the firm’s practice within this area combines the necessary knowledge and expertise in different areas of law, including copyright, contracts and litigation. The firm’s excellent services are supported by a deep knowledge of all of the major sporting disciplines and international sports cultures in different regions and countries.

Enforcement

• Litigation – this team protects and enforces clients’ IP rights. It has extensive expertise in handling general litigation, enforcement actions, customs and international trade issues, and administrative, civil and criminal matters. It also develops tailored anti-counterfeiting programmes. The firm handles the largest percentage of IP litigation in Mexico, both before the Mexican Institute of Intellectual Property and in the federal courts. Further, we are prepared to offer and conduct general commercial and civil litigation with our allied litigation firms.