Patent law: Voluntary divisional patent applications
As in many jurisdictions, divisional applications can be filed in Mexico either as the result of a division requirement by the patent office, or voluntarily. While the conditions under which divisional applications are acceptable are relatively clear for the former, they are not for the latter.
The patent office view
The Mexican law is totally silent on the subject of if, when, and how voluntary divisional applications are acceptable. In practice, the Mexican IP Office (IMPI) accepts divisions provided that the parent case is pending, particularly up to payment of the issuance fees or issuance of a final rejection, whichever the case. Allegedly, this practice derives from interpretation of dispositions of the Paris Convention.
As practitioners know, article 4(G) of the Paris Convention contemplates: i) the division of an application required through an official action; and ii) the voluntary division of an application, leaving each country the faculty to determine the conditions under which the voluntary divisional applications will be authorised.
Accordingly, IMPI has set up the practice described above to try to fill the gaps of the law. Moreover, daisy-chained divisional applications have been discouraged by establishing that child applications cannot be divided if the original first parent application is not pending.
The reasons for this criterion are not clear enough. Apparently, this involves the interpretation that all divisional applications derive from the first parent case and there is no such figure of a divisional-upon-divisional application.
