June 26, 2022

Volume XII, Number 177

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Sergio L. Olivares

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:

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Articles in the National Law Review database by Sergio L. Olivares

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