Double Patenting in Mexico in View of the New IP Law
Sep – 25 – 2020
Following our analysis of the new Federal Law for Protection of Industrial Property, same that will come into force on November 5, 2020, we observe that one of the most significant amendments in this new law in the patent scenario, is the introduction of a specific provision prohibiting double patenting.
For the past several years, the Mexican Institute of Industrial Property (hereinafter referred to a IMPI) has issued double patenting objections without a specific provision in our current law prohibiting double patenting. IMPI applied the criteria followed by most patent systems which is that two patents cannot be granted for the same invention. The basis for the criteria applied by IMPI is that an applicant has no legitimate interest in the proceedings that lead to the granting of a second patent for the same subject matter if he already possesses one granted patent for said matter.
However, our new IP Law contemplates a specific provision prohibiting double patenting in its articles 50 and 101 stating that “During substantive examination and in the granting of rights, IMPI shall look out for the public domain and prevent double patenting of the same invention” (article 50) and “No patent will be granted to matter that is already protected by another patent, or which essential technical characteristics are a non-substantial variation of the matter protected by another patent, even when the applicant is the same in both” (article 101).
It is clear from the above articles that double patenting will not be allowed in Mexico; however, it is not clear how IMPI will assess double patenting.
Currently, a double patenting objection is issued both when the scope pursued in a second case (normally a divisional application) is identical to the scope already pursued in a first case and also when there is scope overlap between said second case and the first case.
From our point of view, this practice is incorrect because the existence of scope overlap between a pending application and a granted patent in no way indicates that the same invention is trying to be protected twice and so far, we have been successful in overcoming double patenting objections due to scope overlap by presenting this argument.
By the same token, it is important to consider that a selection invention would be an exception to this criterion, since currently Examiners allow selection inventions.
It is important to consider that this new law contemplates as an invalidity cause of action that a patent be granted in violation of the dispositions of our new law. Thus, it is recommendable to be especially cautious when receiving double patenting objections and be very punctual in addressing each of the Examiners concerns when explaining that the applicant does not wish to seek protection for the same invention twice.
We will have to wait and see how IMPI will assess double patenting objections once the new IP law enters in force and hope that specific guidelines on how to evaluate double patenting will be included in the upcoming Regulations of our new IP law.