Introduction
Advice to applicants
Comment
The Federal Law for the Protection of Industrial Property (FLPIP) applies to patent applications filed in Mexico from 5 November 2020. If a patent application was filed before this date, the former Industrial Property Law (IPL) applies until the patent is granted. However, what happens to divisional applications filed after 5 November 2020 when the parent application was filed under the IPL?
In practice, the Mexican Patent Office (MPO) has been evaluating all divisional applications filed after 5 November 2020 (including those derived from parent cases filed under the IPL) according to the provisions of the new FLPIP. Many practitioners consider this unfortunate since they believe that such divisional applications should be evaluated based on the IPL. The reason for this belief is that the legal date, and consequently the validity term, of divisional applications corresponds to that of the parent case. Where the parent case (including the subject matter that is pursued in the divisions) was filed before 5 November 2020, the IPL was in force at the time of its filing. Further, divisional applications should be filed during the prosecution of the parent case; therefore, practitioners believe that if the parent case is evaluated according to the IPL, its division should continue the prosecution of the originally described matter according to the former IP rules.
The early shift to the more restrictive rules of the FLPIP for filing new divisional applications must be considered by applicants when redesigning prosecution strategies in Mexico.
Formerly, filing divisional applications from a divisional application used to be common, as long as such divisional applications claimed a different subject matter to that of the parent case or the first division. In this regard, one of the most important restrictions in the new law is on cascade divisional applications. This practice is no longer acceptable under the FLPIP for voluntary divisional applications derived from a previous divisional application. This will be allowed only in response to a unity of invention objection or when the MPO considers it applicable.
Accordingly, if a patent application is an initial application and a division is intended, applicants are recommended either to file all pending embodiments in the divisional claim chapter to force a unity objection during its evaluation or to file several divisional applications at once. This is because a subsequent voluntary divisional could be problematic and may be not considered by the MPO as a valid divisional application from the parent case, thus losing the benefit of the filing or priority date of the parent application.
Further, applicants are recommended to file divisional applications by request of the MPO within the same term as the unity of invention objection office action. This is because the FLPIP has indicated that divisions made because of substantive examinations will be completed in the same term as that established for responding to pending office actions.
The FLPIP has stated that a divisional application must claim an invention that is different to the one claimed in the original parent application or in other divisional applications and that it may not contain additional subject matter or provide a greater scope than that originally filed. Further, this restriction on divisional applications must be interpreted together with a separate prohibition on double patenting, as the FLPIP has clearly stated that no patent will be granted for a matter that is already protected by another patent or where the essential technical features are a non-substantial variation of the matter covered by another patent, even when the applicant is the holder of the first right (ie, the parent case).
In view of this, applicants are advised to file divisional applications with subject matter that is clearly different from the subject matter that was filed originally or that has already been granted, to ensure that it is considered a divisional application. The FLPIP has not indicated how it will be determined whether the features of a divisional application correspond to a substantial variation from those in the parent case. This issue might be defined in the FLPIP regulation, which is pending publication.
Voluntary divisional applications may be filed until the issuance of a decision to reject, abandon or withdraw an application. If the parent case is allowed, voluntary divisional applications can still be filed before the term for paying the grant fees expires.
Based on the above, there are several considerations that should be addressed by applicants when defining a prosecution strategy in Mexico in view of the new FLPIP, even for divisional applications derived from parent cases filed under the former IPL. Therefore, it is advisable to review whether the strategy for cases currently in prosecution should be adjusted.
For further information on this topic please contact Mariana González Vargas at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730) or email [email protected]). The Becerril, Coca & Becerril SC website can be accessed at www.bcb.com.mx.