Sergio L. Olivares, Jr., and Mauricio Sámano from Olivares discuss the Mexican patent scenario, considering the aspects that work well and those that need more development to be able to protect inventors.
The patent scenario in Mexico has faced many challenges in recent years. In this paper we will address those that are becoming more relevant for applicants who seek to protect their inventions in Mexico. Specifically, the most relevant challenges that we are now facing in Mexico are the following: voluntary divisional applications, lack of support objections, medical use, claim drafting, and post-grant amendments.
The gaps in Mexican domestic law and the lack of specific guidelines for the Examiners have contributed in great measure to this situation. The eventual signature of the TPP was an excellent opportunity to address these issues, since our domestic law would have been revised and modified in order to be in line with the intellectual property chapter of the TPP. However, since the TPP is no longer a possibility, we expect that our law modernizes in order to be harmonic with the day-to-day practice.
Voluntary divisional applications in Mexico
Voluntary divisional applications are a good strategy for obtaining protection for specific embodiments of an invention that were not granted in a certain parent case and that are of commercial interest for the applicant. In this sense, it is important to clarify that Mexican Industrial Property Law does not have a specific provision that contemplates the possibility of filing voluntary divisional applications. Mexican domestic Law only contemplates the possibility of filing a divisional application when a lack of unity objection is raised, as mentioned in articles 43 and 44 of our domestic law, which read as follows:
Article 43. The application for a patent shall refer to a single invention, or to a group of inventions so related to each other that they constitute a single inventive concept.
Article 44. If the application does not meet the provisions of the previous Article, the Institute shall notify the applicant in writing so that, within a period of two months, he may divide it into several applications, retaining as the date of each one that of the initial application and that of any recognized priority. If, on expiration of the period allowed, the applicant has not divided the application, it shall be considered abandoned.
Where the applicant complies with the provisions of the previous paragraph, the divisional applications shall not be published as provided for in Article 52 of this Law.1
Originally published by The Patent Lawyer, CTC Legal Media.
1. In view of the underlined section of article 44, when a lack of unity objection is raised, the criteria applied by the Mexican Patent Office is that the time limit for filing a divisional application is along with the response to the office action that issued with respect to the parent case.
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