February 5, 2023

Volume XIII, Number 36

Error message

  • Warning: Undefined variable $settings in include_once() (line 135 of /var/www/html/docroot/sites/default/settings.php).
  • Warning: Trying to access array offset on value of type null in include_once() (line 135 of /var/www/html/docroot/sites/default/settings.php).
Advertisement

February 03, 2023

Subscribe to Latest Legal News and Analysis

February 02, 2023

Subscribe to Latest Legal News and Analysis
Advertisement

Relevant Criterion Regarding Divisional Applications.

On July 15, 2022, the Mexican Circuit Court´s en banc issued a decision regarding the correct time for submitting a petition for a divisional application for patents prosecuted under the rules of the former Industrial Property Law (abrogated in 2020). This decision was issued as consequence of two contradictory decisions issued by the two different Federal Circuit Courts.

The decision stated that divisional applications must be requested prior to the conclusion of the substantive examination, however, the decision was reluctant in pronouncing if the two months terms (that is four at the most) for the payment of fees after the Notice of Allowance is considered as part of this examination.

It is important to say that this criterion was issued because the former Industrial Property Law was ambiguous regarding divisional applications, including the timeframe for requesting them and several litigations were filed as consequence, however, the new Industrial Property Law (November 5, 2020) stated that the limitation for requesting a divisional application is prior the payment of fees of the patent, same that is required in the Notice of Allowance.

With respect to this new criterion, there are relevant points that must be considered:

  • For patents prosecuted under the rules of the former Industrial Property Law.

  • We do not oversee major risks for patents requested after November 5, 2020 under the rules of the new Industrial Property Law.

  • Judicial decisions are not mandatory for the MPO but can be highly persuasive.

  • The conflicts of applicability of law in time, in case of doubt Courts should also apply the most favorable law in benefit of citizens.

© 2005-2023 OLIVARES Y COMPAÑIA S.C.National Law Review, Volume XII, Number 234
Advertisement
Advertisement
Advertisement

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
Partner

Alejandro Luna has been alternately dubbed “an extraordinary litigator, active at every level,” “responsive and insightful,” and “a knowledgeable IP practitioner offering creative and cost-effective advice” by his peers, according to IAM Patent 1000, while World Trademark Review’s WTR 1000 called him “a reliable ally for any party in a dispute”. Since joining OLIVARES in 1996 and being made partner in 2005, he has been instrumental to the firm’s IP Litigation, Regulatory, and Administrative Litigation practices. He co-chairs the Life Sciences & Pharmaceutical...

+52 (55) 5322 3000
Advertisement
Advertisement
Advertisement