As you may know, a New Industrial Property Law (“New Law”) came into force in Mexico on November 5, 2020.
Regarding the procedure and formalities for filing a divisional patent application, the abrogated Federal Industrial Property Law “Old Law” had greater flexibility due to the little regulation.
However, with the entry into force of the Federal Law for the Protection of Industrial Property (LFPPI) on November 5, 2020, new rules were implemented, mainly restrictive, for the presentation and processing of these applications.
WHAT IS THE MAIN DIFFERENCE BETWEEN THE “OLD LAW” AND THE “NEW LAW” REGARDING THE FILING OF DIVISIONAL APPLICATIONS?
Mostly, the “New Law” distinguishes voluntary divisional applications from divisional applications requested by the MX Patent Office. Voluntary divisional applications are applications filed according to the desire of the applicant. On the other hand, divisional applications requested by the MX Patent Office are through a unity objection at the in-depth examination.
Additionally, the “New Law” is restrictive regarding the filing of new divisional applications. According to the former legal practice that ruled the “Old Law” for the filing of any divisional application, the deadline for filing any divisional application was before the payment of the granting fees. No matter if the application was the Parent case, the Daughter or Granddaughter case. Through these criteria, we were able to file cascade divisional applications.
Cascade Divisional Applications are divisional applications that derive from another divisional application.
WHAT RULES APPLY NOW REGARDING THE FILING OF NEW DIVISIONAL APPLICATIONS?
- The deadline to submit a new voluntary divisional application is before the payment of the final fees, the issuance of a NEGATIVE, or the issuance of an abandonment. In other words, it is a must that the original Parent application has the status of “pending”.
- The deadline to submit a divisional application requested by the MX Patent Office through a unity objection in the in-depth exam is the same as that for filing a response to the official action.
- Serial voluntary divisional applications are not accepted. I.E. Voluntary divisional application(s), derived from another divisional application(s) are not accepted unless the original “grandmother” application still has the status of “pending”.
- Serial divisional applications are accepted through a unity objection in the in-depth exam.
- A patent application is “pending” when its processing has not finished. Then, the processing of a patent application is defined as completed when the final rights of the same have been paid when granted, or a negative or abandonment has been issued.
- When the original Parent Application has received the Notice of Allowance, and the applicant wants to file a voluntary divisional application. It is compulsory that the divisional claims prosecute a matter different than the one already granted in the Parent case, must not be the same as originally filed in the Parent case, and must be fully supported at the originally filed MX Parent Specification.
IF THE APPLICANT WANTS TO FILE A NEW VOLUNTARY DIVISIONAL APPLICATION, WHAT ARE THE POSSIBLE COURSES OF ACTION TO BE TAKEN?
- To file all claim sets that the applicant wishes to pursue, such as claim sets of derived patent applications filed in foreign Patent Offices or other divisional/continuation applications, in response to an Office Action. This is to let the Examiner analyze all the claim sets and possibly raise a unity objection in the next Office Action. There is no excess claims fee in Mexico.
- To file all claim sets that the applicant wishes to pursue in a voluntary divisional application (as long as the current case is not a divisional application). Please bear in mind that there is a possibility that the Examiner could not raise a unity objection, and hence, we will not be able to file a cascade divisional application.
- To file all possible voluntary divisional applications, as long as the original Parent patent application has the status of pending.
IF THERE IS A UNITY REJECTION AT THE IN-DEPTH EXAM, WHAT ARE THE RULES FOR FILING A DIVISIONAL APPLICATION UPON REQUEST OF THE MEXICAN PATENT OFFICE?
When there is a lack of unity, the Examiners are now required to file all the possible divisional applications separately (I.E., a divisional application per each invention/design), instead of filing a single divisional application for the remaining claims and waiting for a new unity rejection in the in-depth exam of the divisional.
According to our “New Law”, the deadline for the filing of a divisional application, requested through an Office Action, is the same as that for responding to the said Office Action. Henceforth, if we do not file the divisional in that time-lapse, the matter claimed in the remaining inventions will be considered abandoned.
Furthermore, it is a must that we pursue invention/design 1 as a response to the Office Action. We are not able to pursue in the Parent case another invention/design. For example, if the Office Action divided your invention into three parts and you want to pursue Invention 2 only, it is a must that we file it in a divisional application.
Likewise, if the application is a divisional application and the Examiner has raised a unity rejection. We can file unity arguments as a response to the Office Action. However, please consider the possibility that the Examiner could maintain the unity rejection and NOT let us file the divisional applications arguing that the time-lapse has passed. This applies because cascade divisional applications are only accepted through a unity rejection. Hence, our advice is to always file the requested divisional applications, since the Examiners rarely change their mind regarding unity.
IF THE APPLICANT FILED AN APPLICATION BEFORE THE DATE THAT THE “NEW LAW” BECAME IN FORCE, WHICH LAW APPLIES FOR THE FILING OF A DIVISIONAL APPLICATION, THE NEW OR THE OLD LAW?
Please note that a recent jurisprudence issued by the Supreme Court of Justice is applicable to voluntary divisional applications filed after the “New Law” came into force, even though the divisional application claims that it is derived from a Parent case that was filed before the “New Law” came into force.
This issue was the subject of debate between two collegiate courts. One argued that the divisional application should be governed by the abrogated “Old Law” since it derives from a Patent granted under that legislation. In contrast, the other court held that the divisional application should be governed by the “New Law” in force at the time of its filing.
As previously explained, the “Old Law” accepted the filing of divisional applications as long as the application on which is derived has the status of “pending”, no matter if it was a regular application or a divisional application.
Hence, applicants that had an MX filing date previous to the date that the “New Law” came in force, requested to file cascade voluntary divisional applications by applying the criteria and Legal Practice of the “Old Law”.
The Supreme Court of Justice in their Jurisprudence Thesis PR.A.C.CN. J/43 A (11a.) follows a prior-criteria in the same sense, sustained by the Administrative Matter Circuit Courts Plenum of the 1st Circuit, under Jurisprudence Thesis number PC.I.A. J/11 A (11a.), which determines that a patent applicant has the right to voluntarily file a divisional application before the substantive examination stage is exhausted, i.e. before the authority communicates such stage has concluded.
If the protected matter of a given invention “ends” when the substantive examination phase of the corresponding patent application is exhausted, then you cannot apply the law under which the first invention was patented, even if from that invention derived another one whose protected matter is a division of it, because in the meantime a new IP Law was enacted and entered into force and because they are “separate” inventions (although intimately related), it is correct to apply different laws to regulate the parents that are requested to protect them.
In this sense, by submitting a new divisional application under the “New Law”, the right regulated by the “Old Law” no longer exists since the original patent has already been granted.
In addition, the plenary session established that the principle of non-retroactivity is not violated since the right to submit divisional applications is not an acquired right. An acquired right has already been exercised and does not depend on future regulations. On the contrary, this right is subject to the provisions in force at the time of its exercise, in this case, the “New Law”.
In light of the above, the right to file a voluntary divisional application expires upon completion of the substantive examination of the initial application, understood as the one that gave rise to the issuance of the original patent by the payment of the granting fees.
You can find the abovementioned Thesis in the following link:
https://sjf2.scjn.gob.mx/detalle/tesis/2024997
By: Fabián Ocampo
