Uhthoff, Gómez Vega & Uhthoff, S.C.Uhthoff

New rules for filing voluntary divisional applications in Mexico explained

On 5 November 2020, the Federal Law for the Protection of Industrial Property in Mexico came into force. It provides guidelines for filing new divisional patents, utility models and industrial design applications and restricts the filing of voluntary divisional applications.

Background

The former IP Law did not limit the voluntary filing of divisional applications. The Mexican Legal Practice established that the application must be “pending” as the deadline for the filing of new divisional applications procedure for filing these stated that the application must be pending (iei.e., it was still being processed) as the deadline. This was only pPartially based on Article 4G(2) of the Paris Convention, it provided that The applicant may also, on his initiative, divide the patent application”.Therefore,the requirement was that divisional applications submitted on the applicant’s initiative (i.e., voluntary divisional applications) could be submitted solely and exclusively if the application from which they derived was a legal condition of a patent application. It was understood by “legal condition of patent application”, that the application was still in process. In other words, a patent application is “pending” when its processing has not finished.The processing of this application was complete when the final application rights were paid upon grant or the application had been rejected or abandoned.

The new law

The most important restriction in the new law is on cascade or serial divisional applications, which are divisional requests that derive from another request of the same type. A grandmother application has a daughter application, which in turn has a granddaughter application, and so on.

As previously explained, the former Mexican Legal Practice established as the deadline for the filing of new divisional applications, that the patent application from which the new patent application derives must have the status of an “application”, regardless of whether the original patent application is a grandmother, daughter, granddaughter, or even great-granddaughter. Nor does it stipulate that it must only be the original grandmother application that is in the “pending” condition.

The Paris Convention

Under the new regime, voluntary serial divisional applications are not accepted unless the first Mexican patent application is still pending. The rules for filing these are as follows:

  • The deadline to submit a voluntary divisional application is before the payment of the final fees or the issuance of a statement of refusal or abandonment.
  • The deadline to submit a divisional application requested by the Mexican Industrial Property Office, through a unity objection at the application examination stage, is the same as that for filing a response to the official action.
  • Serial voluntary divisional applications are not accepted. This means that voluntary divisional applications that are derived from another divisional application will not be accepted unless the original application is pending.
  • Serial divisional applications are accepted through a unity objection in the exam.

Expert recommendations for filing voluntary divisional applications

If an applicant wants to file new voluntary divisional applications, the following courses of action are advised.

First, file all claim sets, such as:

  • claim sets of derived patent applications filed in foreign IP offices;
  • other divisional/continuation applications; or
  • those in response to an office action; or those in a voluntary divisional application.

Second, file all possible voluntary divisional applications, provided that the original application is pending.

Last, in case of any doubts or concerns rises regarding the protection of your IP rights, one of the experts of our Law Firm will be happy to attend to your needs.