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Divisional Practice in the BRICs (Brazil, Russia, India and China) and other Countries – Part 1 of a 9-Part Series

This is Part 1 of a nine-part series examining divisional practice in the BRIC as well as several non-BRIC countries.  Specifically, we will examine divisional practice in Brazil, Canada, China, Europe, India, Mexico, Russia, and the United States (in no particular order).  The last post in this series will summarize the similarities and differences in divisional practice in each of these countries in chart form.  We look forward to receiving your comments on these postings.

Divisional Practice in Mexico

Time Periods for Filing Divisional Applications

A divisional application can be filed in Mexico at one or both of the below time periods:

1.  When responding to an Office Action raising a lack of unity rejection; and/or

2.  Any time prior to the grant of a Mexican patent application (such a divisional application is referred to as a “voluntary” divisional application).

Divisional Applications filed in Response to a Lack of Unity Rejection

The Industrial Property Law (“Law”) provides that if an application fails to comply with the unity of invention requirement, an Applicant must be notified of such in an Office Action.  In addition, the Applicant is allowed to divide the application into one or more divisional applications depending on the number of inventions identified by the Mexican Institute of Industrial Property (“IMPI”).  An Applicant must file one or more divisional applications when responding to an Office Action containing a lack of unity rejection.

However, a question arises as to when such divisional applications must actually be filed.  For example, assume that an Applicant receives an Office Action containing a lack of unity rejection.  Specifically, in the Office Action, the Examiner argues that the claims are directed to 5 different inventions and requires the Applicant to elect a single invention for prosecution (or present arguments as to why the claims relate to a single inventive concept (If such arguments are not sufficient to convince the Examiner to remove the lack of unity rejection, then a further Office Action will be issued requiring the Applicant to elect a single invention and file one or more divisional applications)).   If the Applicant elects to pursue claims to the first invention in the originally filed (parent) application, is the Applicant required to file 1, 2, 3 or 4 divisional applications for any non-elected inventions when responding to the Office Action containing the lack of unity rejection (depending on whether the Applicant wanted to pursue some or all of the non-elected inventions)?

Strictly speaking, under the Law, an Applicant is required to file one or more divisional applications for all non-elected inventions when responding to an Office Action containing a lack of unity rejection.  Because no guidelines exist regarding such a scenario, IMPI allows Applicants to file a first (single) divisional application containing claims to all non-elected inventions when responding to an Office Action containing a lack of unity rejection.   What will ultimately occur, however, is that the Applicant will receive an Office Action in the first divisional application raising a lack of unity rejection.  At that time, the Applicant will be required to file a further (second) divisional at the time of responding to the Office Action for any non-elected inventions.

Claims of a Divisional Application and Double Patenting

A divisional application can be filed with one or more claims as originally filed.  However, if an Applicant files a divisional application containing one or more claims that are identical to claims that have previously undergone substantive examination by IMPI (such as in a previous parent or divisional application), then the Applicant should amend the claims in question so as not to be identical with any such previously examined claims.  The reason is INPI will not conduct substantive examination twice for identically claimed subject matter in a pending divisional application when the same claimed subject matter has already been examined in a previous parent or divisional application.  However, an Applicant can pursue any claimed subject matter (including any claims that have been previously deleted in a parent or divisional application) in a divisional application that has not previously been substantively examined in another parent or divisional application by IMPI.  Therefore, when filing a divisional application in Mexico, Applicants should carefully consider the claims to be filed with the divisional application taking into account any claimed subject matter substantively examined by IMPI in a previous parent or divisional application.

Requirements for Filing a Divisional Application

When filing a divisional application, the following documents must be submitted:

1.  A copy of the description and drawings;

2.  A set of claims to be pursued; and

3.  If appropriate (namely, if the Applicant has assigned its rights in the parent application to a third party), an assignment and Power of Attorney.

Documentation relating to the priority claim and translation do not need to be submitted.

The current government fee for filing a divisional application is approximately $800.00 U.S. dollars.  An additional $110.00 U.S. dollars is required for each priority claim made. 

Examination and Publication of Divisional Applications

Like an original (parent) application, a divisional application is examined in chronological order.  However, this rule is not strictly applied in all substantive examination groups and in some groups, divisional applications are examined more quickly then non-divisional applications.

Additionally, divisional applications are not published until granted.  Therefore, it is not possible to know whether a divisional application corresponding to a parent application has been filed unless mention of the filing of a divisional application is made in the file wrapper of the parent application.

To read Part 2 of a 9-Part Series Divisional Practice in the BRICs- Click here:

Pedro Herrera of Olivares also contributed to this post.

©2020 MICHAEL BEST & FRIEDRICH LLPNational Law Review, Volume III, Number 317

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About this Author

Lisa Mueller, Michael Best, Patent application Attorney, intellectual property lawyer,
Partner, Industry Group Chair, Life Sciences

Lisa provides strategic counsel on complex patent issues to clients in the pharmaceutical, biopharmaceutical, biotechnology and chemistry sectors. She brings an in-depth knowledge and extensive experience to her work advising clients on patent protection, freedom to operate and invalidity of blockbuster drugs they aim to produce and distribute.

Lisa’s advice on the full spectrum of global intellectual property portfolio management includes patent prosecution, opposition and other post-grant proceedings

312-596-5812