In our July newsletter regarding the same topic, we informed you about a change of criteria adopted by the Mexican Institute of Industrial Property (IMPI) in which, as of May of this year, they are not accepting any voluntary cascade divisionals, if the first parent case has been allowed and has issued as a patent or if it was abandoned.

We also mentioned in our past newsletter that at that time IMPI was not questioning the validity of voluntary cascade divisionals that were filed before this abrupt change of criteria, but that this change of criteria did leave them in a fragile situation.

Nevertheless, we regret to inform you that in the last weeks of August and first weeks of September, IMPI has begun to issue substantive office actions rejecting cascade divisionals that were previously accepted and which had complied with all formal requirements. They are overturning their decision to accept voluntary cascade divisionals deriving from a parent case filed before our new law entered in force on November 05, 2020 even though said cascade divisionals were filed long before this abrupt change of criteria which occurred on May of this year.

Recently, we have even seen cases in which they issue 1 or 2 office actions objecting substantive issues such as lack of inventive step, lack of clarity, etc., and in the last office action they abruptly reject the application for being a divisional that was filed after the first parent case had been allowed.

As we mentioned in our previous newsletter, they are basing this criterion on a Federal Court Jurisprudence that provides that it is not possible to file divisional applications once the prosecution of the parent case has finalized. However, this court decision does not mention the specific case of cascade divisionals and thus, IMPI is misusing this Jurisprudence and applying it wrongfully to all voluntary cascade divisional applications, regardless of the applicable law.

The current situation is very worrying because not only IMPI’s legal criterion lacks any legal support, but they are applying it to cases that had been already accepted and thus, are applying contradictory criterions in a single application. In fact, administrative authorities are not allowed to revert their own decisions during the prosecution of the same case, which is exactly what is starting to happen.

Needless to say that OLIVARES strongly disagrees with this unfortunate turn of events and we are currently working on a legal strategy to answer these office actions which, as we mentioned lack any legal support and are contradictory with the office actions issued by IMPI itself recognizing the claimed priorities in these voluntary cascade divisionals.

The OLIVARES patent team will keep you updated on any further development on this important issue.

Associates Mauricio Sámano and Jorge Juaréz also contributed to this article.