Since the recent entry into force of the Federal Law for the Protection of Industrial Property in Mexico (FLPIP), the new rules on divisional applications have created uncertainty among patent applicants and practitioners in the country. The rules admit different interpretations, and some of those interpretations are beneficial to applicants whereas others are not.
Now, after four years of experience with prosecution of divisional applications, close observation of objection trends and changing criteria, as well as multiple interviews with officers of the Mexican Patent and Trademark Office (MXPTO), it can be said that divisional practice in Mexico is consolidating. Here are the conclusions of the team in ClarkeModet on key aspects of the divisional rules.
1. Timing for filing divisional applications
The current divisional application rules distinguish two types of divisional applications with different timing requirements.
- Required divisional applications. Divisional applications are required when a lack of unity is found during the substantive examination. In this case, the divisional application must be filed within the term to respond to the Office Action that raised the unity objection.
- Voluntary divisional applications. Divisional applications submitted on the applicant’s initiative, regardless of the issuance of a lack of unity objection, can be filed within any of the following timeframes:
- at any time during the pendency of the initial application, and
- within the term to respond to the Notice of Allowance.
According to the FLPIP, an application is pending up until the issuance of a rejection, withdrawal, or abandonment resolution. However, the wording of the law raises the question of whether the application is pending after it is allowed or granted, or stated otherwise, whether timeframe (ii) is conjunctive or alternative to timeframe (i).
In our view, a systematic interpretation supports voluntary divisional applications at the allowance stage even if it has been granted (that is, no longer pending), a hypothesis that has been positively validated in a few cases. Despite the foregoing, we firmly encourage filing divisional applications before paying the grant fees, as this will eliminate any potential discussion on the timeliness of the filing.
2. Delaying the filing of a required divisional application until allowance
In view of the two types of divisional applications provided by the FLPIP, the following question arises: can a group of invention that was withdrawn in view of a lack of unity objection, be filed after the term for responding the lack of unity objection, in a voluntary divisional application? Or, stated differently, must such matter be necessarily pursued in a required divisional application (filed within the term for responding to the lack of unity objection)?
From our experience with a number of cases and upon confirmation with MXPTO officers, yes, divisional applications with matter subject to a lack-of-unity objection are acceptable, even if they were not filed within the term for replying to said objection. This possibility brings a longer window for applicants to perform the division, if and only if the parent application is not a divisional application already. This practice is also consistent with the historical MXPTO’s procedure under the former law, where the filing of divisional applications at the stage of allowance was frequent, in spite of the issuance of a lack of unity objection during examination.
Notwithstanding the above, given the several precisions and restrictions of the new IP Law on divisional application matters and for the avoidance of doubt, our general recommendation is to file required divisional applications during the term for responding to the unity objection.
3. Filing a single divisional application to pursue multiple groups of inventions
A drastic variation has recently occurred in view of an internal directive order in the MXPTO’s patent department. According to this directive, a required divisional application cannot be directed to multiple groups of inventions as identified in the corresponding lack of unity objection. That is, a single divisional application must be filed per each group of inventions for which protection will be sought. This creates an unnecessary burden on applicants, as they are now required to submit all potentially desirable divisional applications within a short timeframe.
Furthermore, this directive disrupts the practice of delaying the filing of divisional applications by forcing new unity objections downstream in the divisional procedures. The MXPTO is refusing to reissue a lack of unity objection for groups already identified in the parent application’s lack of unity objection. As a result, applicants may be left with only one invention in the divisional application, and in the worst case, if the initial application has already been granted, they may lose the opportunity to pursue protection for any remaining inventions.
Without a clear legal basis for such stance, appeal procedures are expected, especially in those divisional applications filed with multiple groups of inventions before the MXPTO began applying such criterion. In the meantime, it is suggested to adopt a conservative practice of filing all divisional applications that are necessary and to the extent possible, when replying to the unity objection.
4. Substantive scope of the divisional application
The FLPIP provides a single but significant restriction on the substantive scope of divisional applications. In particular, the divisional application shall “claim an invention that is different to that claimed in the initial application, and, as applicable, in other divisional applications”.
The concept of “invention” can be narrowly interpreted as meaning the matter defined by the claims. Nevertheless, per MXPTO’s practice in some cases, the concept of “invention” could also refer to an “inventive concept” per the unity of invention requirement.
Similarly, the MXPTO has broadly interpreted the “different invention” standard, such that lack of coterminous scopes between the examined claims and the “reference” claims of the parent application is insufficient to meet the requirement. Rather, in an overreaching interpretation, the MXPTO may object to divisional claims that are “substantially the same” as those present in the parent case. Overlapping scopes between parent and divisional, even if not identical, are usually rejected. It is worth mentioning that the determination of a substantial difference when comparing subject matters relies on the officer’s criterion; unfortunately, no objective standard has been developed by the MXPTO until now.
Another controversial topic has been which parent claims must be used as “reference” in the “different invention” assessment. The matter claimed in an application generally changes as amendments are filed. Most applications originally claim the broadest possible scope and are progressively narrowed down.
The most favorable interpretation to applicants is that the parent claims that received a final resolution (e.g., allowance or rejection) should be used for the comparison. In practice, MXPTO may use any claims that were on file at any time during the parent prosecution, but mainly focuses its objections against claims that were substantively analyzed (especially those receiving prior art objections) in the parent case, while accepting claims removed before examination in the parent procedure. Hence, MXPTO’s stance significantly limits the utility of precautionary divisional applications.
In view of the foregoing, clients are advised to proceed cautiously, especially in the absence of lack of unity objections. The purpose and scope of divisional applications should be defined prior to the filing. Also, the divisional claims must differentiate from claims that were granted, rejected or otherwise received objections in the parent examination, and the differences must be substantive enough to convince the MXPTO that a new examination is deserved.
5. Dividing a divisional application
Under the FLPIP, filing a divisional application based on a pending divisional application is only possible in two scenarios: if the division was required due to a lack of unity objection or if the MXPTO deems it acceptable according to its discretion.
As such, as provided by the law, voluntary divisional applications stemming from an earlier divisional application are prohibited but may be accepted at the MXPTO’s discretion. The MXPTO’s current practice is to reject them all. At this time, the circumstances under which the MXPTO will accept division of a divisional application absent a unity objection, are unknown. Yet, such seemingly absolute discretionary power provides further grounds to challenge the authorities’ position whenever required, or, at least, open a small window to test technical and/or legal reasons for the admission of the voluntarily filed second (or further)-generation divisional application.
6. Final remarks
MXPTO’s application of the new divisional rules are striking when compared to the previous, long-standing practice under the former IP law.
Unfortunately, the ratio legis and the circumstances that led to the creation of the divisional restrictions cannot be ascertained from the lawmaking process. Yet, MXPTO officers frequently interpret the rules under the lens of administrative efficiency, aimed to avoid examination of matter in divisional applications for which resources were already spent in the parent application. In any case, applicant-favorable interpretations are available for circumstances where challenging the criteria is a reasonable alternative.
Furthermore, despite the clearer and more consistent Mexican divisional practice, the possibility of further change remains, especially since a new Federal administration, and MXPTO Director, took office in October 2024.
In building a prosecution and divisional strategy in Mexico, applicants and clients are advised to seek a case-specific advice.
