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PARTNERS

Sergio L. Olivares Sr.

Partner

VCARD

Sergio L. Olivares Sr. joined OLIVARES in 1987 and today leads the firm with strength and a commitment to transparency, client satisfaction, and personal service. He has been a partner since 1994 and Chairman of the Management Committee since 2009.

Mr. Olivares’ breadth of experience is extensive; he is skilled in the prosecution and litigation of intellectual property rights, including trademarks, copyrights, patents, and unfair competition. He is proficient across all areas of intellectual property law but works most closely with the firm’s Patent Group. Mr. Olivares is highly recommended by leading industry publications and directories as a leader in IP. He has been influential in ensuring that Olivares remains highly innovative, helping to support the firm’s effort to add new practice areas and industry groups that will enable the firm to offer its clients a more comprehensive approach. Mr. Olivares has played a key role in the establishment of many of these new groups, including the Regulatory and Administrative Law Groups and the Life Science & Pharmaceutical and Information Technology Industry Groups.

After his graduate work, Mr. Olivares trained with two prominent IP law firms in New York City—Morgan & Finnegan and Kenyon & Kenyon—before joining Olivares. This deep understanding of US intellectual property law allows him to offer clients clear comparative analyses of the US and Mexican legal systems and to explain complex matters in a way that suits the needs of the firm’s international clients.

Representative Cases

Olivares has been at the helm of cases that are helping to shape the standard for evaluating inventive step and novelty for pharmaceutical patents. IMPI traditionally has refused requests during litigation to amend patent claims once an invalidity action has already been filed. However, Mr. Olivares and his colleagues successfully requested amendment of certain pharmaceutical patents during a litigation, and IMPI´s criteria surrounding patent claim amendments during litigation were subsequently changed to follow the precedent set by the firm’s case. With this strategy, Mr. Olivares and the firm are forcing IMPI to allow limitations to the scope of a patent during litigation, thereby ensuring that important pharmaceutical inventions are brought to market.
In 2000, Mr. Olivares was involved in a landmark Supreme Court case that changed the landscape for unfair competition enforcement in Mexico and emphasized the importance of international treaties in assessing trademark infringement. Olivares’ client ultimately won its case alleging unfair competition and trade dress infringement when the Supreme Court reversed a decision by IMPI that had denied the client’s infringement claim. The Supreme Court disagreed with IMPI and importantly ruled that:
International treaties approved by the Senate are applicable as domestic law.
Authorities are bound to apply international treaties unless such treaties contradict the Mexican Constitution.
With respect to TRIPS and NAFTA, the Supreme Court decided that these international treaties are in harmony with the domestic Industrial Property Law. In this regard, the Court decided that, according to NAFTA and TRIPS, registrants are able to prove the use of a trademark by third parties when registrant controls the use of the trademark. The Court also interpreted the term “control of a trademark”, ruling that said controls could be conducted by certain legal acts such as: licenses, transfer of rights, assignments, security interest, and franchises, among others.
It is possible to initiate infringement actions based on unfair competition under the grounds of the use of the trade dress, regardless of whether the trademark is registered or not.