The Federal Law for the Protection of Industrial Property (FLPIP), in force since November 5, 2020, brought an end to the traditionally permissive divisional practice of the former law. The FLPIP introduces new rules -mainly restrictive in nature- that force applicants to adjust their patent prosecution strategies in Mexico.
Here, we provide a brief outline the new divisional regime, its potential interpretations, and what patent owners can do to minimize risks.
1. Serial divisional applications
Filing divisional applications based on an earlier divisional has been severely limited: this practice will only be allowed in response to a unity objection.
Thus, to preserve the right to pursue additional applications, applicants are advised to include all groups of inventions of interest in the claims to force unity objections. This may be done when filing the divisional, before examination starts, or during examination.
2. Reincorporating non-elected subject-matter
Inventive groups deleted from an application in response to a unity objection cannot be reincorporated. That is, once an invention is withdrawn from the claim set to address a unity objection, it will not be possible to add it back for examination in said application.
Notably, applicants are not forced to restrict/elect inventions, and they may maintain all groups of interest in the claim set while arguing against the unity objection. Therefore, applicants must be careful when cancelling subject matter when responding to a unity objection, as it will be necessary to pursue that matter in a separate, divisional application.
3. Claimed subject-matter
The FLPIP requires that the divisional claims an invention that is different from that claimed in the initial application or other divisional applications. This provides grounds for the PTO to issue “double-patenting” objections, involving a comparison of the divisional and parent claims and a determination of whether their scope is different (the grounds were absent in the former law).
Further, this restriction to divisional applications must be interpreted together with a separate prohibition of patenting “matter which is already protected by another patent or which essential technical features are a non-substantial variation of the same, even if the applicant is the holder of the prior right”.
Since the matter claimed in an application changes as amendments are filed, it is uncertain against which claims of the family applications must the claims of the divisional application be compared.
Per the PTO’s double-patenting criterion of the past years, divisional claims must not have a scope that is identical or highly similar to the granted parent scope, whereas differentiating amendments in the divisional are usually effective to overcome the objection. Nevertheless, since divisional applications filed under the FLPIP have not started examination, it is yet to be seen if the same stance will be maintained.
The last opportunity to file divisional applications will depend on whether a unity of invention was involved.
Voluntary divisional applications can only be filed while the initial application is pending. This has two implications: first, the voluntary divisional must stem from the first filing in Mexico (i.e., it cannot stem from a divisional); and second, the divisional application must be filed before the payment of the granting fees or the rejection/abandonment of the initial application.
Divisional applications resulting of a lack of unity objection must be filed within the term for responding to the Office Action, which is of two months (extendable for two months).
Unfortunately, it is unclear if upon receipt of a unity objection, a divisional application that is not filed within the term for responding it can be voluntarily filed later, for example, before paying the granting fees.
However, it is likely that the PTO will continue accepting divisional applications in said cases because the PTO’s practice under the former law was to do so even after the legally established timeframe for responding to the unity objection had expired, despite the former law having the exact same timing limitation as the FLPIP. Therefore, under this interpretation, only the timing for filing serial divisional applications would be constrained. Applicants should consider that the former PTO’s practice might not be maintained under the FLPIP, so discretion is advised.
The consequences of not complying with the above-described requirements is fatal: the divisional will not adopt the filing date of the parent case, losing the priority claim and being in the imminent risk of facing its own patent family as prior art.
Applicability of the FLPIP
The FLPIP applies to all applications filed as of November 5, 2020.
There is a gray area concerning the applicable law for divisional applications filed after November 5, 2020, where the parent case was filed under the former law. Two interpretations are possible based on the filing date of the divisional: i) if the filing date of the divisional is regarded as the filing date of the initial application, the former and less restrictive law applies; and ii) if the filing date of the divisional is regarded as the date the application was materially/electronically submitted, the restrictive FLPIP applies.
Notably, the PTO has adopted the latter interpretation, and is thus treating said divisional applications as regular applications without recognizing a priority claim. Such interpretation is unconstitutional on the basis that it unduly provides retroactive effects to a new prohibition not foreseen by the patent owner when the parent application was filed. In these cases, applicants should immediately seek legal strategies to avoid the fatal destiny of their applications.