PROVISIONAL RELIEF
patent holders continue to post exorbitantly large bonds without any scrutiny by IMPI. One recent appellate decision concluded that in determining the propriety of preliminary relief and the amount of security to be posted by the plaintiff, IMPI must consider (i) whether the defendant has engaged in an unlawful activity related to the plaintiff ’s patent; and (ii) whether there is objective data which support the amount of the bond being offered by the plaintiff. Regularly, this admonition has not been heeded by IMPI.
Defendants in pharmaceutical patent cases have argued that IMPI must require plaintiffs to:
by their patent. Simply requiring plaintiffs to submit a copy of the allegedly infringed patent is not enough. Plaintiffs should be required to provide credible evidence that they are likely to succeed on the merits of their infringement claim—that is, evidence that their patent has been infringed or is about to be infringed by the defendant. Tis is particularly important in cases where the plaintiff’s patent does not cover an active ingredient, since the scope of rights conferred by secondary patents is oſten unclear;
irreparable harm that will occur in the absence of preliminary relief; and
proposed, so that the plaintiffs cannot use the preliminary injunction procedure to destroy legitimate competition.
On December 3, 2009, the Fourth Collegiate Circuit Court in Administrative Matters for the First Circuit decided Case No. 311/2009. In May and June of 2011, the Seminario Judicial de la Federación published a series of non-binding tesis aisladas, or points of law, from the decision, which provide a series of minimum standards for the granting of preliminary relief under Article 199 bis.1. Specifically, the court held that the plaintiff must:
patent or registration at issue that is being violated by the defendant;
prima facie evidence that the defendant has committed an infringement;
began prior to the request for preliminary relief or the plaintiff seeks to prevent imminent harm; and
will be ineffective if the alleged infringement is allowed to continue until a decision on the merits.
44
“BEFORE GRANTING SUCH RELIEF, IMPI MUST CAREFULLY CONSIDER WHETHER IT IS NECESSARY OR PERMITTED BY LAW … AND WHETHER LESS DRASTIC MEASURES MIGHT PROTECT THE LEGITIMATE INTERESTS OF THE PLAINTIFF.”
of irreparable harm if relief is not granted, and whether less drastic measures might protect the legitimate interests of the plaintiff. While IMPI must grant effective provisional relief in appropriate cases, it must also recognise the prevalence of frivolous infringement claims.
Hedwig Lindner is a partner at Arochi, Marroquín & Lindner, SC. She can be contacted at:
hlindner@aml.com.mx
Manuel Morante is an associate at Arochi, Marroquín & Lindner, SC. He can be contacted at:
mmorante@aml.com.mx
In addition, the court held that IMPI must carefully consider the plaintiff’s likelihood of success on the merits, the suitability or necessity of preliminary relief, whether less drastic relief would accomplish the same purpose, and the relative hardship to the parties if relief were granted or denied, particularly in cases involving two presumably valid rights.
As stated by Carlos María Correa (Medidas cautelares en el regimen de patentes): “Te exclusion of the presumed infringer from the market constitutes a drastic measure, which should only be
taken in exceptional cases,
since it alters the state of facts and rights [of the parties] existing at the time relief is granted, and amounts to a finding that the plaintiff is likely to prevail when the case is finally decided.” Further, preliminary relief “causes certain and direct damage to those who will be deprived of medication at an accessible price while the measures are in force. It must be remembered that in the pharmaceutical field we have arrived at a situation where in many cases patents are not sought for genuine inventions, but rather for the purpose of suppressing competition, at least temporarily”.
Te Industrial Property Law allows IMPI to grant drastic forms of preliminary relief, which remain in effect for long periods of time due to the delays in resolving cases before IMPI and its reviewing courts. Before granting such relief, IMPI must carefully consider whether it is necessary or permitted by law, whether there is a likelihood
Life Sciences Intellectual Property Review 2012
Hedwig Lindner heads Arochi, Marroquin & Lindner’s patent litigation department and is consistently a top tier- ranked lawyer. She also has been active in IP legislative reforms. Lindner is a past president of the Mexican IP Association/ AIPPI National Group and teaches at the Universidad Panamericana. She holds Master’s degrees in IP law from George Washington University and constitutional and administrative law from the Universidad Nacional Autónoma de México, and is a graduate of the Universidad Panamericana.
Manuel Morante practises IP, international law,
administrative
and
advertising law. He also is director of the firm’s library. Morante has extensive experience as an academic and is a professor of comparative law at
the
Universidad Panamericana, where he earned his doctorate and law degrees.
www.worldipreview.com
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