Sergio L. Olivares

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. 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: Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is www.NatLawReview.com  intended to be a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. Under certain state laws, the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.