June 26, 2022

Volume XII, Number 177

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June 24, 2022

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June 23, 2022

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Cascade Divisional Patent Applications in Mexico – New IMPI’s Criteria Welcomed

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.

© 2005-2022 OLIVARES Y COMPAÑIA S.C.National Law Review, Volume XII, Number 140
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About this Author

 Sergio L. Olivares Intellectual Property Attorney Olivares y Compañía S.C. Law Firm Mexico
Partner

Mr. Olivares’ breadth of experience is extensive; he is skilled in the prosecution and litigation of intellectual property rights, including trademarks, copyrights, patents, and unfair competition. He is proficient across all areas of intellectual property law but works most closely with the firm’s Patent Group. Mr. Olivares is highly recommended by leading industry publications and directories as a leader in IP. He has been influential in ensuring that Olivares remains highly innovative, helping to support the firm’s effort to add new practice areas and industry groups...

+52 (55) 5322 3000 EXT. 3201
Daniel Sánchez Intellectual Property Attorney Olivares y Compañía S.C. Law Firm Mexico
Partner

Mr. Sanchez’s work is extensive, with experience in prosecution and litigation across all areas of IP, including trademarks, copyrights, patents and unfair competition. His broad background allows him to tailor enforcement strategies to a range of needs. His practice is focused in litigation and regulatory matters, with a specialization in life sciences and technology. Mr. Sanchez co-chairs OLIVARES’ Litigation Team, the Patent Team and the IT industry group. His team is focused on litigation before the Mexican Institute of Industrial Property (IMPI) and the Federal...

+52 (55) 5322 3000 EXT. 3210
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