Mexico’s new federal IP law has greatly affected the prosecution of divisional patent applications, Romeo Chora of Dumont explains.
On November 5, 2020, a new Federal Law for the Protection of Industrial Property (FLPIP) came into force in Mexico. It intends to fill some gaps existing in the former law and, among other goals, update the way patent applications are prosecuted in the country.
The new law brought about many changes and greatly affected the Mexican industrial property system, including the prosecution of divisional patent applications, as briefly explained below.
Applicability of the new law on divisional patent applications
The new law tries to establish clear time frames and specific guidelines to ensure a straightforward patent application process. But the application of the new law came with new criteria to which the praxis should be adapted. The patent office is now applying the new provisions to all divisional applications filed after November 5, 2020, even if such applications derive from parent applications processed under the former law.
This practice arguably, retroactively, applies a new law and contravenes the transitory provisions in FLPIP, which essentially state that the new law is not applicable to applications that were filed under the former law, because divisional applications enjoy the same filing date as their parent applications.
Foreign applicants should know the generalities of the practice being adopted by the patent office because no change is foreseeable in the short term. Also, trying to convince the office to deviate from its adopted criteria for specific cases would involve litigation.
General considerations for divisional applications
The specification and drawings should be the same as those filed for the original parent application. The matter claimed in divisional applications must be different to that claimed in the original or in any other divisional application.
Additionally, the matter claimed in a divisional application must not consist of insubstantial variations of matter already protected in the parent case, even if the applicant is the same in both cases.
”Foreign applicants should know the generalities of the practice being adopted by the patent office because no change is foreseeable in the short term.”
When the patent office determines that the application does not comply with the inventive concept requirement, it will ask for the division to take the main invention that claimed first place in the application to be divided and that the remaining invention(s) be claimed in divisional application(s), if so desired by the applicant.
Applicants must be careful when selecting which matter should be pursued in further divisional applications. According to FLPIP, once some matter is cancelled, either from the original case or from any of the divisional applications, it will not be possible to claim it again. Divisional applications should include all the matter of interest since matter not originally claimed either in the original case or in any divisional application will not be accepted in a further division—even if it is supported by the specification.
Finally, if the divisional does not meet with the legal requirements established in the law, the filing date of the parent application, as well as priority rights, might not be recognised in the divisional application.
Divisional applications required by the authority
The implementation of the new law does not demand any substantial changes to the submission of divisional applications required by the authority. The division of the application is required when the application does not comply with the inventive concept requirement.
This provision applies to both the original application and divisional applications, even if the original case has been granted, which means that divisional applications from divisional applications are accepted only by official requirement.
Voluntary divisional applications
One of the more remarkable changes in the new law refers to the guidelines and time frames for submitting voluntary divisional applications. Before the new law, voluntary divisional applications were mainly regulated by the provisions of international agreements which Mexico is a party to because the country’s law did not address the issue.
Due to the lack of clear deadlines for submitting voluntary divisional applications, many interpreted that the applications could be submitted at any time while the parent application was pending, even after the first application within the family had been granted. There were some court decisions ordering the acceptance of divisional applications derived from granted parent cases.
The FLPIP establishes that voluntary divisional applications will be accepted only if the prosecution of the original case has not ended. The prosecution ends when the original application is allowed, abandoned, withdrawn, or refused. In the case of allowance, the last chance to file voluntary divisional applications is before paying issuance fees of the original case.
For the prosecution of divisional applications, it is important to consider the following:
- The matter of a divisional must be different from the matter claimed in the initial application or in any other divisional applications within the same family.
- Voluntary divisional applications are accepted only while the prosecution of the original case is still pending.
- Divisional applications from divisional applications might be permitted only upon a request by the patent office to disregard whether the original case has been granted.
- It is not possible to re-claim matter that was not selected to be pursued into a divisional application or which was not originally claimed, although supported by the specification.
- Insubstantial variations of matter granted in the original application or other divisional applications will not be accepted as subject matter of divisional applications.
- And divisional applications not meeting the requirements of the new law might lose the filing date and priority rights recognised in the original application.
Contributed by Romeo Chora, manager of the technical team at Dumont. [email protected]
Previously published in wipr