Voluntary Divisional Applications in Mexico

June 30, 2016

by Mauricio Sámano

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 respect, it is important to clarify that the Mexican Industrial Property Law does not have a specific provision that contemplates the possibility of filing voluntary divisional applications. However, in practice, Mexican Examiners accept the filing of voluntary divisional applications at any time during the prosecution of the parent application and before the payment of the final fees. The legal support for this criteria lies in article 4-G (2) of the Paris Convention Treaty which establishes that the applicant has the opportunity of voluntarily dividing a patent application and preserve as the date of each divisional application the date of the initial application and the benefit of the right of priority, if any. In this sense, it is important to contemplate that if the applicant has not decided which matter he wishes to pursue in said voluntary divisional application, it is possible to file the original PCT set of claims in said divisional and, afterwards, once he has defined the matter he seeks to pursue, he can file said matter by means of a voluntary amendment before the issuance of the first office action. Typically, the first office action for a divisional application issues about 8 to 14 months after the filing date of said divisional and thus, the applicant has plenty of enough time to define the matter they seek to pursue in said voluntary divisional application. Also, especially in the Chemical and Pharmaceutical/Biotech cases, when drafting the claims for a voluntary divisional application, it is necessary to avoid any type of overlapping matter with that of the parent case in order to avoid a future double patenting objection.