What to Expect When Filing a Patent in Mexico?

When an applicant decides whether to file a patent in Mexico with the Mexican Patent Office (MPTO), it is important to consider that often times a granted US application will go right on through without further objection from the Mexican Patent Office, however, unlike in Canada, there is no extended deadline to file the request for examination, so most likely the US version will have not been granted yet, fortunately, the examination can take up to over three years to begin and generally does not start within the first two years.

When to file an amendment for a patent in Mexico?

In Mexico, the original claims should be filed, prior to the amended set of claims which can be filed later upon the Examiner's first technical opinion.

What are the PPH (Patent Prosecution Highway) requirements for a patent in Mexico?

In Mexico, a request for PPH can be made 2 months after the publication.

In order to request the PPH the corresponding conditions should comply:

• Mexican Patent Application should claim priority from an application filed in any of PPH membered offices.

• Evidence of allowance or granting should exist in said priority application.

• Mexican claims should conform to the allowed subject matter and avoid claiming non-statuary subject matter in Mexico, i.e., therapeutic method, computer programs, and business methods should be excluded.

When to file a divisional patent in Mexico?

In Mexico the examiners usually adhere either to what the EPO says or what the USPTO says and, if there is an equivalent, they grant the same. In most cases, the examiner will ask to copy what was granted in the US or Europe, at which time a divisional can be filed for what is of interest.

Divisional applications are something that in Latin American countries are handled differently than in the USA or the EPO. They are designed exclusively to solve problems of lack of unity of invention pointed out by the office. The most appropriate way to proceed is to enter the complete text and additional pending claims, and the examiners are the ones who point out if it is required to make amendments or file divisional applications.

The exact deadline for filing divisionals has been a point of contention in Mexico. In general, the safest course of action is to file them along with the response to an office action or, if the applicant wishes to wait, as soon as possible and always before a final decision is issued by the Patent Office (either grant or rejection). Please find below an explanatory text for your records and future reference:

On July 15, 2022, the Plenary of the Administrative Circuit of the First Circuit issued a jurisprudence on the correct time to file a divisional patent application processed under the rules of the Industrial Property Law (repealed in 2020). This jurisprudence was issued because of a contradiction of thesis between Collegiate Circuit Courts.

The precedent established that divisional applications must be filed prior to the conclusion of the substantive examination; however, in the resolution, the Plenary of the Circuit did not analyze in depth, nor did it comment on whether, in the event a notice of allowance is issued, the 2-month period (4 months at the most if the applicant requests an extension) for the payment of granting fees is considered as part of this substantive examination period. In accordance with common practice, we have always held that a divisional application may be filed prior to the payment of granting fees and the Mexican Institute of Industrial Property (IMPI) has responded favorably to the same.

It is important to mention that this jurisprudence was issued because the previous Industrial Property Law was ambiguous with respect to the regulation of divisional applications, including the term to apply for them, and due to this, several lawsuits were filed. However, the new Federal Law for the Protection of Industrial Property (November 5, 2020) overcame such ambiguity and established that the deadline for filing a divisional application is until the payment of granting fees.

With respect to this new criterion, there are relevant points to be considered:

- It is applicable for applications processed under the rules of the abrogated Industrial Property Law.

- No major risks are estimated for patents filed after November 5, 2020, since they were processed under the rules of the new Federal Law for the Protection of Industrial Property.

- The jurisprudence is not mandatory for IMPI, but it could have an influence on its determinations.

- The conflicts of temporality of norms may exist, and, in case of doubt, the Courts must apply the most favorable law for the benefit of the citizens.

In summary, a suggestion for applicants who wish to file divisionals is the following:

- For all applications filed before November 2020, it is suggested to file a divisional before the end of the substantive examination.

NOTE: This suggestion is not a mandatory trend that will result in a definitive rejection of the divisional as there are several matters in controversy that have been challenged through trials and have resulted in favorable outcomes. However, to avoid/minimize the risk of rejection, the aforementioned recommendation should be taken into account.

- For applications filed after November 2020, it is suggested to file divisionals under the following scenarios:

1. In response to a request from IMPI itself; at the latest before the end of the term granted to provide a response.

2. As a voluntary request for divisional, in which case it must be filed:

1. Prior to the issuance of the resolution that rejects the parent application or considers it abandoned or withdrawn.

2. Within the term to respond to the notice of allowance, that is, as long as it is done before paying the grant fees.

3. Before an international application is considered withdrawn under the Patent Cooperation Treaty.

Kindly note that, if the application is granted, we will indeed receive a “warning” in the form of a notice of allowance that will give the applicant time to consider whether to file a divisional. However, if the application is denied, we may not receive such a warning prior to the issuance of the refusal. In this event, it will not be possible to file a divisional unless an appeal is filed, in which case:

- If the appeal is successful and the patent is granted, the divisional application will also be allowed (and then it will either be granted or not).

- If the appeal is not successful and the patent is not granted, the divisional will not be admitted either.