Article 192 Bis 1 of the abrogated Industrial Property Law establishes that, when the patent subject of analysis in a procedure for administrative declaration of infringement is a process for obtaining a product, by legal mandate, the burden of proof is reversed, and, consequently, it is the alleged infringer who must prove that the questioned product was manufactured under a process different from the patented one in accordance with the regulatory circumstances described therein.

The incorporation of said legal figure in our legislation derives from the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the North American Free Trade Agreement, which establish that the defendant will have the burden of proving that the allegedly infringing product was made by a process other than the patented one, when one of the following assumptions is updated:

1. The product obtained by the patented process is new, or
2. When there is a significant probability that the allegedly infringing product was manufactured by the process and the patent owner has failed, through reasonable efforts, to establish the process actually used.

However, contrary to what is provided therein, article 192 Bis 1 of the Industrial Property Law establishes that the reversal of the burden of proof is conditional on the updating of the two regulatory hypotheses detailed above, this to the detriment of the owner of a right of exclusivity in an infringement action filed before the IMPI.

This contravention was the subject of analysis by the Supreme Court of Justice in a review recourse filed by OLIVARES, where it was decided to declare the unconstitutionality of article 192 Bis of the Industrial Property Law under the consideration that the content of international treaties should be favored and that they establish that when the subject matter of a patent is a process in an infringement procedure, the defendant will have the burden of proving that the infringing product was made by a process different from the patented one, and only compliance with one of said hypotheses should be required in order to reverse the burden of proof, so it will be sufficient for the aggrieved party to demonstrate that one of the two assumptions is met.

This ruling represents a significant progress to consolidate a system that efficiently protects the exclusive rights of patent owners, especially process patents in relation to actions processed under the abrogated Industrial Property Law, in clear harmony with what is now reflected in the Federal Law for the Protection of Industrial Property.

At OLIVARES we will continue to build innovative strategies to protect the intellectual property of our clients, advising them in complex patent litigation.