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Prosecution – Patent law is one of our core practices. OLIVARES has a reputation for getting complex patent applications granted quickly and effectively and is consistently named the Leading IP Law Firm for Patent Prosecution in Mexico by Managing IP magazine. Furthermore, OLIVARES is one of only two firms voted into Band 1 – Intellectual Property Law Firms in Mexico by Chambers Latin America.

OLIVARES has obtained more than 14,000 patents in the last 10 years and our patent lawyers have an unrivalled knowledge of the Mexican patent system. With nearly half a century of experience, we represent many of the world’s largest companies as well as many highly niche and technically advanced companies who own some of the most highly prized and commercially valuable global patent portfolios.

In 1969 we were the first firm in Mexico to employ staff with technical, scientific and specialized knowledge to work alongside attorneys. Today our patent team has technical specialists, engineers and scientists with backgrounds in:

  • Chemistry
  • Biotechnology
  • Mechanics
  • Pharmacology
  • Electronics
  • Computer software
  • Bioinformatics
  • Nanotechnology

These technical specialists work hand-in-hand with our dedicated patent department attorneys and skilled translators to meet clients’ needs both in Mexico and when prosecuting PCT patent applications across Latin America

Latin America Network  Our prosecution services are not just limited to Mexico, some clients manage all their patent work for the Latin America region through OLIVARES. In many Latin American countries it is extremely hard to find the exact technical engineering skills required for successful patent prosecution. Our network of IP firms is highly specialized; we only use firms with the exact technical needed for the patent being filed, ultimately lowering risk for the client.

Translations  Our team of in-house translators works hand-in-hand with the engineers and lawyers to ensure patent translations are ‘technically and legally accurate’. No job is too large and, given the skills, importance of this element of the patent prosecution process, our rates are extremely competitive.

Additionally, OLIVARES’ patent attorneys and agents ensure the protection of clients’ patents by offering legal services in areas that are a natural extension of patent prosecution:

  • Litigation
  • Licensing, mergers and acquisitions
  • Regulatory
  • Tech transfer
  • Anti-trust
  • Anti-counterfeiting

Recent exemplary work examples –

  • Pharmaceutical pipeline patent term corrections: OLIVARES has successfully litigated several term corrections to obtain additional terms of patent exclusivity for pharmaceutical compound patents.
  • Linkage: OLIVARES has successfully argued several Jurisprudence setting cases before the Supreme Court in matters related to interpreting the scope of the Linkage Regulation. Specifically, this is related to actions to obtain the publication of pharmaceutical formulation, use patents in the linkage gazette, and observance of patents.
  • Representation of the IP chapter for the R&D Pharma industry at the TPP negotiations:Alejandro Luna personally participated in numerous rounds of negotiations in various countries with presentations and meetings with the negotiators and stakeholders from Mexico and other of the ten participant countries. The IP Chapter of TPP pertains to provide higher standards of IP protection and establishing clear rules and definitions for certain topics that are crucial for the pharma industry such as data package exclusivity, patent linkage, patent restoration and second use patents.