Divisional Patent Applications under the New Mexican IP Law

In the past few years, mankind advances and technology developments have forced many multidisciplinary knowledge areas to adapt and update the legal regimes which provide certainty and protection. Specifically, in connection with Intellectual Property matters, technical advances have contributed to many changes in associated regulations.

In this regard, Mexico is not an exception, and as an effort for updating the legal rules in connection with IP matters, from November 5, 2020, there is a New Mexican IP Law in force, which has established new legal concepts and has brought light to some Practice areas which before this New Law, were imprecise or not entirely clear. Into the new Mexican IP Law, there are some interesting changes and modifications which we would like to share with you. Talking about divisional patent applications, the New Mexican IP Law has established rules and filing exceptions, which should be considered when filing divisional patent applications in our country, in order to provide the broadest and strongest possible protection for any invention, no matter the associated technical field.

The Facts

First of all, please consider that under the New IP Law, there are new and interesting Articles in connection with divisional patent applications which deserve to be at least known for the purpose of the present article.

We have the following two Articles which collect and exemplify the most significant changes for divisional patent applications prosecution.

Article 100.- In the case of divisional applications submitted, voluntarily or at the request of the Institute, the applicant must meet the following requirements:

I.- Submit the specifications, claims and drawings necessary for each application, except the documentation regarding the priority claimed and its translation that are already in the original application and, where appropriate, the Assignment and Power of Attorney. The drawings and descriptions submitted shall not include alterations that modify the invention contemplated in the original application;

II.- Claim an invention different from that claimed in the original application and, where appropriate, in other divisional, without containing additional material or subject matter which gives broader scope than the originally submitted.

When, as a result of the division, an invention or a group of inventions have not claimed, these may not be claimed again in the original application or in the one that gave rise to the division, if any, and

III.- Submit the divisional application within the term referred to in article 111 of this Law or, when the division is voluntary, in the terms of its article 102. The divisional application may not consist of the division of other divisional applications, unless it is appropriate in the judgment of the Institute or is required of the applicant, in terms of article 113 of this Law.

If the divisional application does not meet the requirements established in this article, it will not benefit of the date of filing of the original application from which it is intended to be derived, considering the date when it was received, as long as it complies with article 105 of this Law.

Article 102.- The applicant may voluntarily divide an initial application that is still in prosecution, complying with the provisions of Article 100 of this Law, keeping as the filing date of each divisional application, the same date of the original and, if applicable, the date of the priority claimed.

For the purposes of the above, it will be considered that the original application is in prosecution, until before of the issuance of the resolution that denies, discards, considered as abandoned, or before an international application is considered withdrawn, under the Patent Cooperation Treaty (PCT).

When the applicant is informed that the granting of the patent or registration is proceeding, he or she still may voluntarily divide the initial application within the period of two months referred to in the article 110 of this Law.

Now, please join us into the Practice, explanations and new changes in Mexico in connection with divisional applications.

Filing Divisional Patent Applications in Mexico

In Mexico, divisional practice was quite flexible. For example, one or more divisional applications could be filed: (a) in response to a lack of unity rejection; and/or (b) at any time for any reason (e.g., voluntary divisional applications were allowed at any time). However, the related scenario has suffered some modifications, which will be considered and explained in the following sections.

On the other hand, some aspects of divisional applications have not changed with the New IP Law, for example, the specification of a divisional application must not go beyond the original specification of the parent application. In other words, no new matter can be added in a divisional application.

Time Window for Filing a Divisional Application

Before the New IP Law, a divisional application could be filed any time during the pendency of the parent application, that is, before the Mexican Patent Office (IMPI) issued a final decision regarding the allowance or refusal (Negative) of the parent application. In practice, nowadays, for some specific cases, a divisional application can still be filed no later than at the time of paying the grant fees of the parent application. Nevertheless, after the New IP Law, some considerations should be considered at this concrete point.

Consequently, as from November 5, 2020, some practical updates should be considered when considering divisional applications in Mexico:

• When an invention or group of inventions has been withdrawn due to a division, they cannot be claimed again in the initial application or the application from which they originated;

• Voluntary divisional applications would be only permissible when they originate from an initial application;

• Voluntary divisional applications originating from another divisional application (serial divisional applications) are not permissible; and

• Serial divisional applications would be only permissible if the initial application is pending or when there was a unity of invention objection during the in-depth examination of the originating divisional application. Please also consider that divisional applications with subject matter resulting from a lack of unity objection must be filed along the corresponding response to an Official Action (in-depth examination).

At this point, we consider that it is our duty to inform you about new aspects which were inexistent before the New Mexican IP Law. Unfortunately, nowadays the Mexican Patent Office (IMPI) is objecting voluntary serial divisional applications derived from divisional applications with effective filing date is before November 5, 2020. Consequently, the Mexican Practice is suffering some substantial changes which we would like to point out when you are interested in divisional applications. Therefore, please let us share with you the following suggestions:

• In case applicant wishes to file a voluntary divisional application and pending application is an initial case, we highly recommend to file the voluntary divisional application containing all the possible embodiments/matter to force a unity of invention objection during the in-depth examination of the divisional application which would enable the filing of serial divisional applications; or

• In case applicant wishes to file a voluntary divisional application and pending application is a divisional application, we highly recommend to file a response which forces a unity of invention objection despite the Examiner is requesting to mirror the matter of a foreign parallel case.

Divisional Application Requirements during Filing

Now, we provide you, according to New Mexican IP Law, the requirements for filing a divisional application, which most important issues are the following:

Submission of a copy of the specification, claims, abstract and drawings of the divisional application as well as an entry form indicating the name, address and nationality of each inventor. For the specific case of a Design divisional application, please consider that it will be only necessary to file specification and drawings, since according to New Mexican IP Law, a Design divisional application will not need anymore the submission of a claim.

It is worth noting that, the divisional application cannot include any subject matter not originally disclosed in the parent application; and also, please consider that the parent application and the divisional application cannot claim the same subject matter.

In addition, please bear in mind that the priority and filing dates of each divisional application should be identical to the priority and filing date of the (original) parent application.

Claims for a Divisional Application

Before the New IP Law, a divisional application could be filed with the claims as originally filed, for example, in the parent application or in the PCT application, with further and respective amendments. However, nowadays divisional claims should not be identical to the original parent claims, and in addition, if the claims of two patent applications or a patent and a pending application have identical scope, the application(s) will be considered to be an identical invention and rejected for double patenting.

Double Patenting in Mexico

In the New IP Law scenario, if more than one application has been filed for the same or “equivalent” inventions, then only one patent will be granted for the application having the earliest priority or filing date (that is, if the application does not claim priority).

In-depth Examination of Divisional Applications

According to New IP Law, a divisional application is accorded the same filing date as the parent application, but is treated as a new patent filing, applying all the established Articles from New IP Law. Consequently, some important issues of divisional applications are as follows:

Its own (New) application number will be allotted;

It will be necessary the payment of its own filing fees (separate from the filing fees paid in the parent application, and all prior fees and/or annuities);

It will be separately prosecuted from the parent application; and

After examination and granting it will result in a patent that is independent from the parent application.

Please also consider that the fees for a divisional patent application are similar to those for a parent application and the term of a patent issuing off of a divisional application is twenty years from the filing date of the parent application.

In light of the above, and as you can see, the New IP Law has brought some light in aspect which were previously not limited nor restricted in the previous IP Law, and the present scenario provides an opportunity landscape for treating, analyzing, prosecuting and protecting divisional applications with a new optics, based on the challenges of the future. Hence, for any upcoming task involving divisional applications in Mexico from any field of knowledge related to Patents and Designs, please contact us and it will be a pleasure to support you with your IP Portfolio in Mexico.

Manuel López