Double Patenting

September 25, 2020

Following an analysis of the new Federal Law for Protection of Industrial Property, which will come into force on November 5, 2020, it has been observed that one of the most significant amendments in this new law related to patents, is the introduction of a specific provision prohibiting what is known as double patenting – the granting of two patents for a single invention.

For the past several years, the Mexican Institute of Industrial Property (hereinafter referred to as IMPI) has issued double patenting objections without a specific provision in the current law prohibiting double patenting. IMPI applied the criteria followed by most patent systems, which is that two patents cannot be granted for the same invention. The basis for the criteria applied by IMPI is that an applicant has no legitimate interest in the proceedings that lead to the granting of a second patent for the same subject matter if he already possesses one granted patent for said matter.

However, the new IP Law contemplates a specific provision prohibiting double patenting in its articles 50 and 101 stating that, “During substantive examination and in the granting of rights, IMPI shall look out for the public domain and prevent double patenting of the same invention” (article 50) and “No patent will be granted to matter that is already protected by another patent, or which essential technical characteristics are a non-substantial variation of the matter protected by another patent, even when the applicant is the same in both” (article 101).

It is clear from the above articles that double patenting will not be allowed in Mexico; however, it is not clear how IMPI will assess double patenting.

Currently, a double patenting objection is issued both when the scope pursued in a second case (normally a divisional application) is identical to the scope already pursued in a first case and also when there is scope overlap between said second case and the first case.

This practice appears to be incorrect because the existence of scope overlap between a pending application and a granted patent in no way indicates that the same invention is sought to be protected twice. To date, OLIVARES has been successful in overcoming double patenting objections due to scope overlap by presenting this argument.

By the same token, it is important to consider that a selection invention would be an exception to this criterion, since currently Examiners allow selection inventions.

A patent granted in violation of the dispositions of the new IP law is considered a cause of action for invalidity under the new IP law[ELC1] . Thus, it is recommendable to be especially cautious when receiving double patenting objections and be punctual in addressing each of the Examiners concerns when explaining that the applicant does not wish to seek protection for the same invention twice.

It remains to be seen how IMPI will assess double patenting objections once the new IP law enters in force. It would be beneficial if specific guidelines on how to evaluate double patenting will be included in the upcoming Regulations of the new IP law.