The Ongoing Challenges in the Implementation of Mexico’s Intellectual Property Law: Divisional patent applications originating from another divisional application

The Intellectual Property Law (IPL) did not include any restriction on subsequent divisional applications that originated from parent applications that were themselves divisional applications. This led to certain ambiguity regarding the timeframe for requesting such divisionals. In contrast, the FLPIP explicitly prohibits submissions of divisionals stemming from other divisional applications, except when IMPI deems it necessary due to an objection about the unity of invention or if considered appropriate by the Office. However, the conditions and procedural stage that determine IMPI’s discretion to consider an application as admissible remain unresolved due to the absence of FLPIP regulations and uniform guidelines across different areas of the Office.

In practical scenarios, certain divisional applications originating from a divisional application have been accepted by IMPI, acknowledging their divisional status, priority rights and legal filing date of the original application. Despite this, in the official actions acknowledging priority, IMPI highlights that the application under exam stems from another divisional application. IMPI includes a disclaimer stating that the substantive examination department will analyze compliance with the applicable legal framework's provisions for prosecuting the application.

This prompts the question of whether the substantive examination department will deem it appropriate to determine the maintenance of priority recognition and legal filing dates. It is not clear under what criteria IMPI could disregard its own resolutions. Given that administrative acts cannot be revoked by the same Authority that issues them within the same process when favorable to individuals, the possible revocation could occur through procedures such as a nullity action.

Yet, in other cases, a different and contradictory criterion for “cascade” divisional applications has also been implemented by IMPI, without clear justification. During formal examination, IMPI started considering these applications as independent entities, not recognizing their originating application's priority and establishing the submission date as the legal filing date, despite the original application being prosecuted under the IPL. Transitional FLPIP provisions stipulate that IPL-filed patent applications should adhere to the regulations applicable at the time of their submission, yet their divisional applications are not recognized as such. Consequently, they lack the same priority and legal filing date as the original application, even if the legal date predates the FLPIP entering into force.

If this trend continues, it may well be possible that, upon reaching substantive examination, applications may not overcome novelty issues over their same family.

Additionally, the Office has used, as part of the arguments to disregard the divisional nature of the applications, a jurisdictional criterion published by the Circuit Court on July, 2022, issued with the intention of clarifying the ambiguity regarding the term to request divisional applications during prosecution. However, this criterion made no references or considerations related to “cascade” divisionals. In fact, the application of this criterion by IMPI seems to contradict its initial intention to enforce FLPIP based on the filing date before the Office.

In our view, IMPI seems to selectively cite different laws to justify the rejection of divisional applications, creating legal inconsistencies and inequality. This application of law retroactively and inconsistently can lead to a lack of legal security. Divisional applications that should share the same priority and filing date with their parent application are being unfairly and incoherently treated as independent entities.

Consequently, divisional applications originating from other divisional applications whose legal date is previous to November 5, 2020, and that are being unjustly treated as independent applications, need to be defended through administrative proceedings against the lack of consistent legal basis for their dismissal and the retroactive application of the law.