In our newsletter No. 03 / JAN 2022, we highlighted the relevance of the first ruling issued by a Circuit Court that confirmed the arguments that our firm has asserted, resolving that the plaintiff in a patent invalidity action before the Mexican Institute of Industrial Property (IMPI), must demonstrate to the IMPI that it has the proper legal standing to initiate said action, that is, a direct impact, an opposable right or an expectation of right in relation to the questioned patent.

For many years, some plaintiffs stated that they had a legal standing to claim the invalidity of patents, under the justification of being competitors, proved with the exhibition of their articles of incorporation in which it was stated that their industrial and commercial activity was related to the pharmaceutical industry, arguing that it was sufficient to establish a right incompatible with the patent holder in the field of pharmaceutical technology.

In response to this argument, our firm insisted before IMPI and the Courts that the industrial and commercial activity of a pharmaceutical company did not evidence the existence of actual damage or a direct interest against the existence of a specific product or technology protected by a patent in the pharmaceutical field to be considered as a legal standing in terms of the applicable provisions of the Industrial Property Law.

These arguments were replicated in numerous cases and caused IMPI to modify its criteria when analyzing the defense of lack of legal standing in patent invalidity actions of pharmaceutical patents, however, said determination continued to be the subject of challenges by the affected companies, under the argument that article 188 of the Industrial Property Law, which mandates as a procedural requirement to demonstrate having a legal standing to file a patent invalidity action, is unconstitutional by violating the right of access to effective judicial protection.

Recently the Second Chamber of the Supreme Court resolved in one of the litigations that we handled to confirm the criteria of the Circuit Courts under the consideration that “being a commercial competitor does not generate a legal standing to initiate administrative declaration procedures before the IMPI”, specifying that the right of access to judicial protection recognized in the Constitution is not unlimited for individuals and that the conditions for resorting to an administrative procedure do not translate into restrictions, but rather obey a regulatory system that justifies them, which in turn, it guarantees the principle of legal certainty for all parties, which means that the legal standing must be proven and that by definition excludes simple or group interest. This decision motivated the Supreme Court of Justice to issue the jurisprudence 2ª /J.38/2024(11ª.).

Although, we consider that the concept of legal standing was defined by the Supreme Court, we also consider that the analysis of the legal standing should be studied according to the specific cause of action against a patent or a trademark registration, considering the particularities of the evidence submitted in the trial.