In Mexico, the local practice has been constantly evolving in the last two years, over the arrival of the Federal Law for the Protection of Industrial Property (FLPIP), In-Force since November 05, 2020, and replacing the Industrial Property Law (IPL), published in the Official Gazette of the Federation in 1991.
The practice for voluntary filing divisional patent applications is of special interests for most clients, and it is one of the practices that have undergone the most changes during these recent times.
For some time now, and since the IPL was previously In Force, the Mexican Institute of Industrial Property (IMPI) has accepted the voluntary filing of divisional applications, which has been filed without any major hurdle. At this time, from a patent application filed with the FLPIP (In Force from November 2020) a direct requisition from the institute is not required for the applicant to file a divisional application from a parent patent, as well as the newly filed divisional application complies mainly with the provisions of Articles 100 and 102 of the FLPIP:
Article 102.– The applicant may voluntarily divide an initial application that is still in process, complying with the provisions of Article 100 of this Law, keeping as the filing date of each divisional application the same date of the initial one and, where appropriate, the date of the priority claimed.
For the purposes of the foregoing, it shall be considered that the initial application is in process until before the issuance of the resolution that denies, rejects, considers said application abandoned or withdrawn, or before an international application is considered withdrawn, according to the Patent Cooperation Treaty.
When the applicant is informed that the granting of the patent or registration proceeds, he/she may still voluntarily divide the initial application within the period of two months referred to in Article 110 of this Law.
In this sense, applicant can file a voluntary divisional application only if the parent application is still in process, i.e., considering the provisions of Article 102 of the FLPIP, a voluntary divisional application is accepted after receiving the Notice of Allowance of an application and before the payment of the final granting fees. Of course, if a final denial is issued or if the granting fees are already paid, any divisional application will be directly rejected.
Article 100.- In the case of divisional applications filed voluntarily or at the request of the Institute, the applicant must meet the following requirements:
… II.- Claim an invention different from that claimed in the initial application and, where appropriate, in other divisional ones, without containing additional matter or that gives further scope to the matter originally filed.
When, because of the division, an invention or a group of inventions has ceased to be claimed, these may not be claimed again in the initial application or in the one that gave rise to the division…
Regarding Article 100, fraction II, IMPI is now directly requiring the applicant not to file subject matter that is already claimed in the parent application (or in any other already filed sister application). In this sense, the position of IMPI is to not examine the same subject matter in two different in-depth examinations, mainly to avoid the practice of some applicants directed to maintain an application pending although the examination has already been performed and the in-depth examination stage has ended for an application. Accordingly, when filing a divisional application in Mexico, applicant is strongly suggested not to file an original PCT set of claims, but instead to file an amended set of claims not overlapping with the subject matter maintained in the parent application or in any other already filed sister divisional application. In line with the provisions of Article 100, a divisional application could not be recognized as such if the claimed subject matter is the same as that claimed in the parent application.
A special situation has raised for parent application filed during the validity of IPL, due to a recent jurisprudence enforceable since August 1, 2022, stating that for applications analyzed with the IPL provisions, applicant is able to voluntary divide the subject matter only during the in-depth examination stage. i.e., before issuance of the Notice of allowance, allowing the corresponding Examiner to consider all the subject matter of interest for the applicant before proceeding with an allowance of the application. This jurisprudence only applies to voluntary divisional applications from an original application filed before November 2020, (when IPL was in Force) and facing a litigation process. However, it is of great importance to note its existence, and consider the same to try to define a strategy for clearly defining the subject matter that will be sought for protection by means of a voluntary divisional application while the parent application is still facing its in-depth examination, considering that some application receives a direct allowance without issuance of a technical office action, the best time to file voluntary divisional application is as soon as the strategy suggest a division on the claimed subject matter, for example after publication of the application. In case of applications receiving a technical office action, since there is no way to know the specific time from the filing of a response to the allowance of the application, the suggestion is to file any application of interest along with the response to a technical office action.
At this moment, MPO has not issued an official communication or position on this matter. Applicant is still able to file voluntary divisional applications from this kind of parent applications analyzed with the IPL and after allowance of the same, the voluntary divisional application is accepted and scheduled to formal and technical examinations, but care should be taken considering this jurisprudence, which could be new a practice-modifier in the future. In any case, if MPO decides to adopt a different practice in this line in the future, the applicant will be able to challenge the same ruling by means of a nullity petition filed before the Federal Court of Administrative Justice Specialized IP Courtroom.
On the other hand, another special attention is required for divisional applications filed from an already filed divisional application (serial division applications).
In this sense, the practice for serial divisional applications have been strongly modified with the arrival of the FLPIP, mainly considering the provisions of Article 100, fraction III:
Article 100.- In the case of divisional applications filed voluntarily or at the request of the Institute, the applicant must meet the following requirements: …
III.- File 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, unlessit is deemed valid by the Institute or it is required to the applicant, in terms of article 113 of this Law.
If the divisional application does not comply with the requirements established in this article, it shall not benefit from the filing date of the initial application from which it is intended to be derived, being considered filed on the date it was received, if it complies with the article 105 of this Law.
From the above, it seems clear that if the Institute directly requires the applicant to divide an already filed divisional application, the applicant will face no problems with the submission of one or more serial divisional applications.
However, if the serial divisional application is filed voluntarily, the application will face some relevant considerations. Current FLPIP clearly describes a possibility where a voluntary serial-divisional application can be accepted by the IMPI, since Article 100, fraction II, specifies that these voluntary serial applications are not accepted “unless it is appropriate in the judgment of the Institute.” This possibility is not defined in the FLPIP or in the current Regulations thereof.
For voluntary serial divisional applications, it is of high relevance to note that IMPI has rejected some of these applications as a result of the administrative examination, mainly on the on the basis of Articles 100 and 102, since in most cases when a voluntary serial divisional application is filed the first original application (grandparent application) is not still in process but has been already granted.
Clearly, this resolution has not been accepted by applicants and practitioners, since at first instance, when filing a serial divisional application of an original application filed before November 2020, the FLPIP must not be considered, but instead the IPL. However, even if considering the FLPIP, the voluntary serial divisional application is filed as a divisional application of the already filed divisional application (still in process) and not as a divisional of the original parent application (now Patent). Notwithstanding the above, several direct rejections of voluntary serial divisional application were issued as result of the administrative examination during 2020 and 2021, i.e., the authority denied the recognition of the filed application as a divisional one and considered the same as a newly filed application without even examining the claimed subject matter.
However, recently, some administrative resolutions have been issued by the IMPI for voluntary serial divisional applications, recognizing the same as valid divisional applications, but warning the applicant that a “final recognition of priority” will be delivered in the in-depth examination stage. This means that, at least, a final resolution for the validity of the divisional application will be issued after consideration of the subject matter as claimed in the serial divisional application. These recognized voluntary serial divisional applications have been officially published into the Online Database of IMPI, specifying the same as valid divisional applications.
This practice could be a first step for defining the conditions of “unless it is appropriate in the judgment of the Institute” noted in Article 100, fraction II, of the FLPIP.
Needless to say, if an applicant is interested in filing a voluntary serial divisional application in MX, considering the latest positive administrative resolutions issued by the IMPI for this kind of applications, it is highly important to consider the provisions of Article 100 fraction II, and file the application with a claim set clearly not overlapping with the subject matter as protected in the original parent application and the subject matter as currently claimed in the already filed first divisional application. As commented before, another important consideration is to file the any divisional of interest, if possible, during the in-depth examination of the parent application or as soon as the strategy shows voluntary divisional applications as a suitable option for the applicant, not waiting until the allowance of the same.
Currently, there is no official position from the IMPI for the acceptance of voluntary serial divisional applications, and any applicant interested in filing this kind of patent applications must be clear of the existing risk of direct rejection; however, the constant changes in the practice could be now considered as directing voluntary serial divisional applications to a complete examination (administrative and technical) before the resolution of recognizing the same as valid divisional applications instead of a newly filed applications.
Luis Fernando Granados
Patent Specialist Chemical, Pharmacy and Biotechnology