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Filing Divisional Patent Applications in Mexico – Part 2

This is the second post in our 16-part series examining divisional practice in Argentina, Brazil, Canada, China, Europe, India, Indonesia, Malaysia, Mexico, Pakistan, Russia, Thailand, Saudi Arabia, Singapore, the United States, Vietnam (in no particular order).  Our first post examined divisional practice in Brazil.  This post can be found here:  Divisional Practice – Brazil.

Filing Divisionals in Mexico

Time Periods for Filing Divisional Applications

A divisional application can be filed in Mexico at one or both of the below time periods:

1.  When responding to an Office Action in which a lack of unity rejection is raised; and/or

2.  Any time prior to the payment of the final fees of a Mexican patent application (such a divisional application is referred to as a “voluntary” divisional application).

Divisional Applications filed in Response to a Lack of Unity Rejection

The Industrial Property Law (“IP Law”) provides that if an application fails to comply with the unity of invention requirement (e.g., lacks unity), an Applicant must be notified in an Office Action.  In addition, the Applicant is allowed to divide the application into one or more divisional applications depending on the number of inventions identified by the Mexican Patent Office, also known as the Mexican Institute of Industrial Property (“IMPI”).  An Applicant must file one or more divisional applications when responding to an Office Action containing a lack of unity rejection.

However, a question arises as to when such divisional applications must actually be filed.  For example, assume that an Applicant receives an Office Action containing a lack of unity rejection.  Specifically, in the Office Action, the Examiner argues that the claims are directed to 3 different inventions and requires the Applicant to elect a single invention for prosecution (or present arguments as to why the claims relate to a single inventive concept (If such arguments are not sufficient to convince the Examiner to remove the lack of unity rejection, then a further Office Action will be issued requiring the Applicant to elect a single invention and file one or more divisional applications)).   If the Applicant elects to pursue claims to the first invention in the originally filed (parent) application, is the Applicant required to file 1 or 2 divisional applications for any non-elected inventions when responding to the Office Action containing the lack of unity rejection (depending on whether the Applicant wanted to pursue some or all of the non-elected inventions)?

Strictly speaking, under the IP Law, an Applicant is required to file one or more divisional applications for all non-elected inventions when responding to an Office Action containing a lack of unity rejection.  Because no guidelines exist regarding such a scenario, IMPI allows Applicants to file a first (single) divisional application containing claims to all non-elected inventions when responding to an Office Action containing a lack of unity rejection.   Ultimately, what will occur is that the Applicant will receive an Office Action in the first divisional application raising a lack of unity rejection.  At that time, the Applicant will be required to file a further (second) divisional at the time of responding to the Office Action for any non-elected inventions.

Claims of a Divisional Application and Double Patenting

Although the Mexican Industrial Property Law does not specifically contemplate a provision prohibiting double patenting, there are certain considerations that Examiners apply when issuing a double patenting objection. Specifically, Examiners analyze the scope of the subject matter granted in the parent case as well as the scope of the subject matter that the Applicant is pursuing in the subsequent divisional application, and verify whether there is an overlap in the scope of protection. In other words, if the parent case protects a series of chemical compounds and the subsequent divisional application claims a series of chemical compounds wherein some of these compounds fall within the scope of the compounds claimed in the parent case, the Examiner will issue a double patenting objection.

By the same token, it is important to consider that a selection invention constitutes an exception to this criteria. Namely, if the Applicant demonstrates that a specific chemical compound that is sought to be protected in a divisional application and which falls within the scope of the chemical compounds granted in the parent case, has a surprising and unexpected technical effect which could have not been deduced from the parent case or from any prior art document, it is very likely that the Examiner will not issue a double patenting objection.  Under these circumstances, it is possible that the Examiner will request the respective experimental evidence that demonstrates the surprising and unexpected technical effect of the claimed invention.

Ways to avoid double patenting

We recommend having a strategy in place when filing a divisional application. Namely, the subject matter claimed in the divisional application must refer to a completely different invention than the one protected in the parent case and the subject matter of said divisional application must also be duly supported and exemplified by the originally filed description.

With this in mind, it is important to consider that if the Applicant has not decided which subject matter it wishes to pursue in the divisional application, it is possible to file the original PCT set of claims in the divisional and, afterwards, once s/he has defined the matter it seeks to pursue, the Applicant can file a voluntary amendment before the issuance of the first office action. Typically, the first office action for a divisional application issues from around 8 to 14 months after the filing date of the divisional and thus, the Applicant has plenty of enough time to define the subject matter they seek to pursue in the divisional application. Likewise, in practice, double patenting objections can be addressed by making a pre- or post-grant amendment in the earlier case (parent case). Therefore, Mexican Patent Law is open to the possibility of making post-grant amendments, but the only possible amendments which can be made to an issued patent are corrections of obvious errors or limitations in the scope of the granted matter.

When filing a divisional application, the following documents must be submitted:

1.  A copy of the description and drawings;

2.  A set of claims to be pursued; and

3.  If appropriate (namely, if the Applicant has assigned its rights in the parent application to a third party), an assignment and Power of Attorney.

Documentation relating to the priority claim and translation do not need to be submitted.

The current government fee for filing a divisional application is approximately $330.00 U.S. dollars for an application that contains up to 30 pages and an additional official fee of 4.5 US dollars will be charge for each page in excess of 30.  An additional $78.00 U.S. dollars is required for each priority claim made. 

Examination and Publication of Divisional Applications

Like an original (parent) application, a divisional application is examined in chronological order by IMPI.  However, this rule is not strictly applied in all substantive examination groups and in some groups, divisional applications are examined more quickly than non-divisional applications.  Due to an amendment to the Mexican IP law that entered in force in April 2018, divisional applications are  published once formal examination has concluded.

Looking Ahead: Potential New Changes to Divisional Applications

As a side note, it is important to comment that the political party that currently has majority in both the senate and congress (Morena) presented a proposal for a new Mexican IP Law on November 11, 2019.  This proposal is still being studied but among many other issues, this proposal expressly contemplates the possibility of filing voluntary divisional applications and prohibits double patenting. However, once a voluntary divisional is filed, it will not be possible to file a further voluntary divisional (second divisional) from the first divisional, unless the Examiner issues a restriction requirement to the first divisional. We will continue to monitor how this proposal advances and inform of any updates.

This post was written by Lisa Mueller of Casimir Jones and Maurico Samano of Olivares.

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