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General guidance on patent application amendment practice

By: Eder Gutiérrez

June 5, 2023

This is a general guide regarding patent application amendment practice according to the Federal Law of Protection of Industrial Property (FLPIP) and the Mexican Institute of Industrial Property (IMPI)’s application thereof.

1. Pre-filing amendments

There is no obligation in the FLPIP to file a Mexican application with the same contents as an earlier-filed application, such as a priority or a PCT application. Likewise, there is no prohibition to file amendments at the time of filing the Mexican application. Indeed, the FLPIP only regulates amendments to a patent application or issued patent, both of which imply the prior filing of a patent application.

The IMPI’s practice is to accept amendments that are entered at the time of filing. This is common, for example, in national phases under the PCT which claims are redrafted to conform to local practice or voluntarily amended to optimize prosecution. As such, the amended specification enters from the very beginning of the procedure and conforms to the originally filed application.

Any added matter vis-á-vis the priority or PCT application may result in the priority being recognized partially, i.e., only the matter supported in the priority/PCT application will benefit from priority rights, while the added matter will not.

2. Post-filing amendments

Once the application has been filed in Mexico, voluntary amendments of a pending patent application are possible under the FLPIP. This may happen either in response to an Office Action during formal or substantive examination, or at the applicant’s initiative. Two admissibility conditions must be met:

a. The application has not been allowed or rejected. In practice, the allowance may occur at any time during the substantive examination, while rejection happens when the response to the fourth Office Action of substantive examination has not overcome the PTO’s objections.

b. The amendments do not broaden the scope of the application as initially filed in Mexico, considered in its entirety. This means that all elements of the application (description, claims, drawings, sequence listing, etc.), as originally filed in Mexico, are the basis for establishing whether the voluntary amendment unduly extends the scope or adds matter.

Where examination has begun, there is no prohibition against adding new claims or matters that would require a new search or examination. This allows for filing independent or dependent claims at any time during the examination. The only exception concerns adding back claims that were removed from the claim set to pursue them in a divisional application, since this is expressly prohibited in the FLPIP.

3. Post-grant amendments

An issued or granted patent can be amended. In this case, amendments are restricted to the following scenarios.

a. Correction of formal errors or obvious substantive errors. In both cases, the correction must not broaden the scope of protection, which means that corrective amendments that do not affect the claim scope or provide a narrower scope are permitted.

b. Limitation of the patented scope, in the following two cases: cancellation of claims and merger of dependent claims with independent claims. Notably, the FLPIP does not foresee limitation of claim scope by elimination or amendment of claimed elements. In any case, the modification shall not broaden the patented scope.

The timing for filing the post-grant amendments is during the patent term. Per IMPI’s practice, post-grant amendments may be filed after a patent application has received allowance but has not been issued as a patent, in which case the amendment is entered until the patent certificate is issued.

Post-grant amendments are not allowed if a patent invalidity procedure is ongoing.

4. Effects of the amendment

Pre-filing amendments become part of the original filing, such that they will be the parameter against which later amendments and divisional applications will be compared for assessing whether they unduly extend the scope or add matter.

Post-filing amendments replace the previously pending specification or claims and must be substantively examined by the IMPI.

Post-grant amendments require IMPI’s official communication explicitly accepting the amendment to render its effects. Limitations to the scope of granted claims do not affect prior infringement resolutions based on the patent’s former scope.

5. Procedure

All amendments require a written submission or request, including the amended claims, and payment of official fees.

Although no rules in the FLPIP require that amendment submissions must be accompanied by a rationale and/or support for the amendments, this practice is highly recommended to maximize the probability of admission of the amendment.

IMPI’s acceptance of amendments to a patent application is usually implicit, in the absence of objections thereto. In contrast, post-grant amendments involve an explicit acceptance and a publication of the same in the Industrial Property Gazette.

If you have any questions regarding amendments to patents and patent applications in Mexico, please do not hesitate to contact us at info@clarkemodet.com.mx.

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