New IP Court gears up for business

The Federal Court of Tax and Administrative Affairs (FCTA) published a decree on 24th March 2008 in the Mexican Official Gazette relating to the creation of a specialised court for IP matters. The decree came in force on 25th March 2008.

The IP Court will be formed of three magistrates, whose appointment by the president is still pending; after the appointment is announced, further approval will be needed from the Senate. The court will start hearing cases once the magistrates take office, which is expected within the next four to six months.

Until this happens, all decisions issued by the Mexican Institute of Industrial Property (IMPI) and the Mexican Copyright Office (INDAUTOR) referring to patents, designs, plant varieties, trademarks and copyright, as well as to related administrative proceedings (eg, infringement actions, cancellations and invalidation proceedings), can be appealed at three venues: 

• before the IMPI or the INDAUTOR; 
• before a federal district court, through so-called ‘amparo’ proceedings; or 
• before the FCTA, through so-called ‘invalidation trials’.

These three venues for appealing IMPI and INDAUTOR decisions remain current. However, any appeals filed through the invalidation trial process will be prosecuted and resolved by the new IP Court.

IP trials represent only 1% of all cases heard by the FCTA. Bearing in mind that not all FCTA magistrates specialise in IP law, FCTA decisions in this area have not always been consistent. Moreover, it can take up to three years for a decision to be issued. It is therefore hoped that the new IP Court will improve consistency in this area and result in speedier decisions.

The decree indicates that the IP Court shall have national jurisdiction, with a seat in Mexico City. In addition, it will be competent to rule on industrial property disputes (ie, appeals against decisions issued under the Industrial Property Law, the Federal Copyright Law, the Law on Plant Varieties and other IP laws).

Once the IP court is fully formed, it will assume responsibility for all IP trials currently pending before the FCTA courts. This means that even in those cases where the appeal proceedings have been closed but no decision has been issued, IP Court magistrates may reopen such proceedings, thus allowing the parties involved to file supervening evidence, request suspension of the appealed decisions and file further allegations in connection with the case. This will be no easy task and consequently it is expected that the IP Court will have a considerable backlog to work through once it opens. However, this delay will be balanced by a more consistent body of case law, delivered by magistrates with specialised IP knowledge. Once the initial backlog is cleared, it is hoped that it will be possible to expedite future trials.

Some critics have objected to the fact that the court’s creation means that all cases prosecuted at this instance will be resolved under only three magistrates. However, it will be possible to appeal IP Court decisions before 17 circuit courts, each formed of three magistrates.

Finally, the decree states that the FCTA’s High Bench shall be empowered to study those trials that it considers relevant in setting precedents.