How to Conciliate on Intellectual Property matters?
J. Rafael Amador Espinosa
The Federal Law for the Protection of Industrial Property (“LFPPI”) in force as of November 5, 2020, which abrogates the Industrial Property Law (“LPI”), has incorporated an innovative (for intellectual property proceedings) proceeding into the system of administrative infringements in Mexico: a conciliatory procedure.
Conciliation is an alternative mechanism of dispute resolution (“ADR”) that has been incorporated in the LFPPI to be a regulated alternative in favour of the parties for the resolution of administrative infringement proceedings before the Mexican Industrial Property Office (“IMPI”) following it duty to conciliate the interests of the parties involved.
According to LFPPI, the IMPI will act as a facilitator in the negotiations between the parties and will not issue a decision on the substance of the dispute if the parties request a conciliatory stage. The conciliation may be requested by any of the parties, prior to the payment of official fees (please follow: Changes in IMPI Official Fees), at any procedural stage, prior to the substantive resolution issued by the IMPI.
At the time of requesting the conciliation, the terms of the conciliation proposal must be submitted, the IMPI will then admit the request and will give the other party a hearing, and the other party may accept the proposed terms, or submit a counterproposal, to begin negotiations of a settlement agreement. If no response is given within the time limit granted, it will be understood as a negative response to conciliate.
If the initial proposal is accepted, the agreement formalized must be filled before IMPI within the term indicated by it. In case there is a counterproposal, the IMPI will summon the parties to a first negotiation meeting. The outcome of the meeting will be recorded in the minutes of the proceeding. If no agreement is reached, the negotiation may be terminated at the request of the parties or a second and final meeting may be requested.
If their interests have been conciliated at the first meeting, the parties must fill the formalized agreement. The agreement terminates the infringement procedure and has the character of res judicata, being fully enforceable. We highlight that the agreement may not be contrary to public order, public health, or public interest.
If any of the parties fails to attend a conciliation meeting without justification, it will be fined up to the amount of two hundred and fifty thousand UMAs. If both parties fail to do so, the conciliation shall be deemed to have been terminated and rejected.
However, even though the terms of the conciliation provided in the LFPPI are very formal, the parties are not limited in any way to solve their differences by negotiating on their own terms and/or any other ADR that they decide to submit and is suitable according to their claims, of course the conclusion of the administrative procedure is subject to the terms of the Law.
The rest of the concepts of the official fees for the services provided by the IMPI remained intact. For further information, please contact some of our specialists in Intellectual Property.
