Divisional practice in Mexico is set to receive an overhaul next month which will restrict an applicant’s opportunity to lodge a divisional application from a patent application that has completed examination.
Following a recent decision issued by the Mexican Courts on 15 July 2022, no divisional applications from an original application examined under the Industrial Property Law, which has been superseded on 5 November 2020 by the new Federal Law for the Protection of Industrial Property and which is now in force, can be filed after issuance of a Notice of Allowance or any official communication which concludes examination.
This decision by the Mexican Court will strictly limit the ability to file a divisional application from the filing date of the original patent application in Mexico until the end of the examination stage.
If examination is completed and a divisional application has not been filed, the ability to file a divisional application will be lost. Thus, a divisional application can only be filed prior to the issuance of the official notice of grant, denial, rejection, abandonment, or withdrawal, any of which can be issued at any time without advance notice to the applicant. This therefore provides significant uncertainty for applicants considering filing a divisional application from an application currently undergoing examination.
As a result of the decision, no divisional application can be filed from an application that has concluded the examination stage after 1 August 2022, when the precedent issued by the Mexican Courts will become full and effective.
If you are considering filing a divisional application from a currently pending patent application, in view of the decision by the Mexican Courts, it may be best to lodge a divisional application at the earliest opportunity to avoid such an opportunity being lost following the issuance of an official communication from the Mexican Patent Office that concludes the examination process.
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