A new amendment to the Regulations to the Intellectual Property Law is about to be published in the Official Gazette, and will take effect 20 working days after its publication. In general, the amendment to the Regulations is supplementary to the last amendment to the Intellectual Property Law, but also adds additional provisions to the amendment of said Law.
The most relevant modifications to the Regulations are the following:
1) Divisional applications:
- It is established that the filing of voluntary divisional applications can be made while the initial application is pending. The initial application is considered pending until before the issuance of the resolution that rejects, or the abandonment or withdrawal of the application
- When the granting of the application proceeds, the Applicant may voluntarily divide the initial application until before the payment of the granting fees.
- It will not be possible to file divisional applications of other divisional applications, except when the division is required by the Mexican Institute of Intellectual Property (MIIP).
- In the event that, in order to satisfy a lack of unity of invention rejection or by voluntarily dividing the initial request, an invention or group of inventions has been desisted or withdrawn, the group of inventions cannot be claimed again in the initial application or in the application which originated the division.
- Failure to comply with the requirements established for divisional applications will result in the treatment of the application as an independent application with a filing date corresponding to the filing thereof before the MIIP.
- A criterion is established to determine whether an application meets the unity of invention requirement. The unity of invention requirement is met when there is a relationship between the claimed inventions according to their essential novel and inventive technical characteristics with respect to the state of the art.
2) Industrial designs:
- It is established a formalization of criteria concerning industrial designs that were previously used in the local practice and are common in international practice, such as: the specification of the product for which an industrial design will be used in the title of the same, the numbering of the figures, the enunciation of the views, and the use of dashed lines for features that are not claimed.
- Applications for industrial designs may be submitted to the MIIP without including the specification. The MIIP will subsequently require the filing of the specification, without this implying a change in the date of filing of the application.
Comments from our experts
The proposed amendment is welcome given that various practices and criteria that were already being used by the MIIP in the prosecution of industrial designs without there being a clear legal basis are now established and procedures are specified in the prosecution of applications, for the benefit and legal certainty of the interested parties. The same applies to the establishment of criteria for the unity of invention requirement, which are now aligned with the international standard.
Regarding the prosecution of divisional applications, the current practice regarding divisional applications in terms of deadlines and requirements is lax; however, the amendment to the Regulations will limit the possibilities of applicants to submit new divisional applications.
Among the changes to divisional applications practice, it is highlighted that:
i) voluntary divisional applications can only be filed while the initial application is pending, and
ii) the MIIP acquires the power to reject the divisional nature of a divisional application when it does not comply with the applicable requirements, converting the divisional application into a new independent application, for which the initial application will be a possibly insurmountable prior art document.
In this context, it is recommended to the parties interested in the filing of divisional applications of other divisional applications to file them as soon as possible, in order to benefit from the current MIIP practice.
It is worth considering that once the amendment of the Regulations is published, it will come into force in a relatively short period (20 working days). Of course, Clarke, Modet & C° México will timely inform you the official publication of the reform, as well as any other news that may arise in this regard.