Cascade divisional patent applications in Mexico – new IMPI’s criteria welcomed

May 19, 2022

Since the Federal Law for the Protection of Industrial Property (FLPIP) came into force, filing of cascade divisional applications submitted after November 05, 2020, was restricted only to those required by Mexican Patent Office (IMPI) due to a unity of invention objection.

However, transitional articles of FLPIP provide that patent applications filed under the former law, should be prosecuted still under the former law, in which cascade divisional applications had no restrictions whatsoever.

Notwithstanding the above, IMPI adopted the criterion of denying all cascade divisional applications regardless of whether the parent case was filed either before or after November 05, 2020.

OLIVARES as a Law Firm, along with different Associations of legal practitioners, have been persistently discussing this criterion with the IMPI’s authorities.

As a result of these efforts, we are glad to inform our clients that this practice has started to be modified in cascade divisional applications derived from applications prosecuted under the former law, and now they are being recognized as divisional applications sharing the legal date of the parent case.

Why we considered this change necessary?

IMPI had been rejecting cascade divisional applications deriving from applications prosecuted under the former law, not recognizing them as divisional applications.

Therefore, IMPI intended to prosecute such divisionals as independent new applications, considering the legal filing date as the date of its submission before IMPI, instead of the legal filing date of the parent case, which would result in a lack of novelty denial due to the publication of the parent cases.

Our position had always been that IMPI´s criteria was incorrect, mainly because our Constitution prohibits any authority to apply the law retroactively, and the previous law allowed voluntary cascade divisional applications.

OLIVARES is committed to ensure its clients that this achievement, although partial, is the first step for the proper interpretation of the Mexican Patent Law.

The OLIVARES patent team will keep you updated on any further development.