The Legal 500

Twitter Logo Youtube Circle Icon LinkedIn Icon

OLIVARES

PEDRO LUIS OGAZÓN 17, COL. SAN ÁNGEL, 01000, MÉXICO, D.F., MEXICO
Tel:
Work +52 55 5322 3000
Fax:
Fax +52 55 5322 3001
Email:
Web:
http://www.olivares.com.mx
Guadalajara, Mexico City
OLIVARES, Alejandro Luna F., Mexico City, MEXICO

Lawyer rankings

Alejandro Luna F.

Tel:
Work +5255 5322 3000
Email:
Web:
www.olivares.mx
OLIVARES

Work Department

• IP Litigation
• Alternative Dispute Resolution
• Regulatory Law
• Anti-Piracy, Anti-Counterfeiting & Enforcement

Position

Partner

Career

Alejandro Luna F. has been alternately dubbed “an extraordinary litigator, active at every level,” “responsive and insightful,” and “a knowledgeable IP practitioner offering creative and cost-effective advice” by his peers, according to IAM Patent 1000, while World Trademark Review’s WTR 1000 called him “a reliable ally for any party in a dispute”. Since joining OLIVARES in 1996 and being made partner in 2005, he has been instrumental to the firm’s IP Litigation, Regulatory, and Administrative Litigation practices. He co-chairs the Life Sciences & Pharmaceutical Law industry group and coordinates the Litigation Department.

As one of the few patent and regulatory litigation experts in the country, Mr. Luna has played a crucial role in updating Mexico’s intellectual property (IP) system. He participated in questioning the constitutionality of certain provisions of Mexico’s Industrial Property Law, the Federal Copyright Law, and the Health Law and its regulation. He sponsored an important proposal to modify the litigation and enforcement systems that made it easier to obtain monetary compensation for violations of IP rights.

Mr. Luna spearheaded a ten-year litigation strategy that incorporated regulation changes and lobbying and resulted in an important precedent for the patent linkage regulation and life terms of pipeline patents in Mexico. As a result of his involvement, Mr. Luna was selected as the delegate to represent the Asociación Mexicana de Industrias de Investigación Farmacéutica, AC (AMIIF), the industry association for R&D pharmaceutical companies that do business in Mexico, in negotiations concerning the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) agreement, the free trade agreement between Mexico and the European Union, and the United States-Mexico-Canada Agreement (USMCA/ T-MEC), which replaced NAFTA.

Mr. Luna’s practice is not devoted exclusively to life sciences; he represents clients across a myriad of industries. He has successfully litigated pharmaceutical patents and pioneered administrative court actions to seek recognition of DPE rights (regulatory data protection submitted to the regulatory agency), which are not specifically recognized under Mexican law. His commitment to just and fair law extends to his overall promise of client satisfaction; he acts on behalf of his clients as an attorney and a lobbyist, pushing for changes to the law as necessary in order to best serve his clients.

Mr. Luna is also the author of several articles on patents, litigation, and regulatory issues in the pharmaceutical industries. He is professor at the Universidad Nacional Autónoma de México (UNAM) in the IP Master of Law and the Health Law program and currently is working on his doctoral thesis, titled “The Impact of International Treaties in the Mexican Patent Law Pharmaceutical Patents and Related Enforcement”.

Languages

Spanish, English

Member

  • Asociación Mexicana de Industrias de Investigación Farmacéutica, AC (AMIIF)
  • Asociación Mexicana para la Protección de la Propiedad Intelectual (AMPPI)
  • Barra Mexicana de Abogados (BMA)
  • Biotechnology Industry Organization (BIO)
  • International Association for the Protection of Intellectual Property (AIPP
  • International Bar Association (IBA)
  • International Trademark Association (INTA)

Education

  • Franklin Pierce Law Center
    LLM, Intellectual Property Law, 2002
  • Universidad Panamericana
    Diploma on Amparo Law, 2000
  • Universidad Latinoamericana
    Juris Doctor, 1996
  • PhD Candidate (currently working on a doctoral thesis)


Mexico

Intellectual property

Within: Leading individuals

Alejandro Luna - OLIVARES

Within: Intellectual property

OLIVARES is one of the leading IP boutiques in the market, praised for its 'knowledge of trademark law in Mexico and willingness to give practical, concise advice'.  The 'very responsive' team covers all aspects of the IP spectrum and is commended for 'articulating clear strategy'. The practice represented pharmaceutical advocacy group AMIIF, recently, with regard to regulatory, patent and enforcement-related issues in the context of the renegotiation of the North American free trade agreement. A team is also representing a group of pharma companies, including Takeda, Celgene, and Abbvie, on an administrative dispute concerning Data Package Exclusivity.  Key partners include Sergio L Olivares, Jr. for patents, Luis Schmidt for copyright, Gustavo Alcocer for licensing and contracts, Antonio Belaunzarán for trade marks, and Alejandro Luna for litigation. Major clients include Netflix, Campbell Soup, JT International, Microsoft, and Novartis.

[back to top]


Back to index

Legal Developments in Mexico

Legal Developments and updates from the leading lawyers in each jurisdiction. To contribute, send an email request to
  • Notorious Marks

    Notorious marks or the declaration thereof, has always been an issue widely discussed in Mexico by the IP legal community. This is so because provisions of the Paris Convention dealing with this topic have for a long time been uses as an effort to cancel or nullify trademarks registered by Mexican authorities without really making an extensive evaluation of proposed denominations and without examining in depth if such marks may be potentially affecting rights acquired by third parties elsewhere. So, a specific regulation and legal frame that at least tries to resolve this issue is always a good start in the right direction.
  • FRANCHISING TRENDS IN MEXICO: A NEW VALUE

    By Ignacio Dominguez Torrado Uhthoff, Gomez Vega & Uhthoff, S.C. Why a new value? Is Mexico avoiding the economic fallout that the world may be facing? In Mexico franchises are worth more? Is Mexico not a country that the global economic standstill is or will affect? The answer is, not really. Are Franchises in Mexico currently experiencing a boom? Perhaps. Are Franchises becoming an important aspect in Mexican economy? Certainly.
  • ADVERTISING IN MEXICO: COMMENTS UNDER AN INTELLECTUAL PROPERTY LAW PERSPECTIVE

    Advertising in Mexico is governed by multiple bodies of law including for at least seven Federal Laws, five Regulations also of Federal application, a number of the so-called Mexican Official Standards (NOM's) and certain other laws and regulations applicable into specific States within the Republic of Mexico. All of them are focusing to establish the form and manners for producing and communicating advertising of products and services in Mexico.
  • MEXICAN CUSTOMS. UPDATE ON THE ENFORCEMENT OF TRADEMARK RIGHTS

    It has been well publicized in the Mexican media over the last few months that the General Customs Administration (AGA) and the Mexican Institute of Industrial Property (IMPI) are planning to launch a customs trademark registry, as a short-term solution to increase protection for trademark owners against the import of infringing and counterfeit products.
  • DEMONSTRATING USE OF TRADEMARKS UNDER MEXICAN LAW AND PRACTICE

    The evolution in the protection and enforcement of IP rights has also reached the Mexican practice. The traditional ways of defending a registered trademark on a non use contentious procedure have developed.
  • ANTI-COUNTERFEITING IN MEXICO

    By Jose Luis Ramos-Zurita