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These Regulations complement the recent amendments to the FLPIP and provide further detail on how several of the recently introduced mechanisms will operate in practice. Set out below are the key aspects specifically affecting patent practice.
Priority rights:
The Regulations clarify that when the official fee for the recognition of priority rights is not submitted, the Mexican Institute of Industrial Property (IMPI) may issue a requirement granting a non-extendable term of five business days to submit the same. Failure to comply within this term will result in the priority right being deemed as not claimed.
Provisional patent applications:
The Regulations confirm that provisional patent applications must be accompanied by proof of payment of the corresponding official fee, which has not yet been published by IMPI, and that their content will be included in the publication of the corresponding complete (non-provisional) application. They further reinforce that the subject matter claimed in the complete (non-provisional) application must be supported by the content of the provisional filing, the sufficiency of which will be determined during substantive examination. Any additional matter will not benefit from the provisional filing date.
Grace period for prior disclosures:
The Regulations introduce an important clarification regarding the benefit of the 12-month grace period for disclosures made before the filing of the application, or if applicable, of the recognized priority date.
While previous provisions required applicants to indicate details of any prior disclosure at the time of filing, the Regulations now provide that, if such information was not initially included, the omission may be remedied during substantive examination. This applies where IMPI cites a disclosure as prior art and the applicant demonstrates that such disclosure falls within the grace period established under the Law.
Divisional applications:
The Regulations confirm that, where IMPI requires the division of an application due to lack of unity of invention, the corresponding divisional applications must be filed within the term for responding to the office action in which such requirement is made.
If the applicant fails to file the required divisional applications within such term, the subject matter identified for division will be deemed as not claimed and may not be subsequently pursued through voluntary divisional applications.
Restoration of procedural rights:
In connection with the reinstatement of rights for missed deadlines, the Regulations establish that, if the reinstatement request does not comply with the applicable requirements, IMPI may issue a single requirement granting a non-extendable term of five business days to correct the omission. Failure to comply within this term will result in the request being dismissed.
Reduced prosecution timelines:
The Regulations clarify certain circumstances that will not be considered as delays attributable to IMPI for purposes of the one-year timeframe to issue a final decision once substantive examination has begun. These include, among others, applicant-requested extensions and circumstances beyond the control of the Office.
Overall, the Regulations provide additional clarity on the operation of the mechanisms introduced by the recent reform, while confirming certain practices already followed by IMPI.
At OLIVARES, we are closely monitoring the implementation of these provisions and will keep you timely informed of any further relevant developments.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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