Updates in Latin America

30 November 2022

Over the last few months, we had some news in Latin America: Chile and Mexico.

30 November 2022

Over the last few months, we had some news in Latin America: Chile and Mexico.

In Chile we have since May 2022 a new Intellectual Property Law, which has several interesting changes. Innocuous disclosures were already contemplated in the previous law.

In short, in Chile, if a disclosure of the invention was made within the 12 months prior to the filing of the application, it will not interfere with the novelty or inventive step, provided that this disclosure has been declared, accompanied by documents of proof, when filing the application.

In Mexico, we have to focus our attention to divisional applications. Over the years we have always held that the divisional application may be filed prior to the payment of the fees and the Mexican Institute of Industrial Property (“IMPI”) has unmistakably agreed. However, the law was ambiguous, and this produced several litigations also in relation to the term on when to file them.

The new Federal Law for the Protection of Industrial Property (5 November 2020) overcame such ambiguity and established that the term to file a divisional application is until before the payment of the corresponding fees and duties required by the IMPI at the conclusion of the substantive examination.

What are the consequences for this new criterion?

  • It is applicable for patents processed under the rules of the previous law.
  • No major risks are estimated for patents applied for after 5 November 2020, since they were processed under the rules of the new Federal Industrial Property Protection Law.
  • The case law is not binding on IMPI, but it could have an influence on its determinations.
  • Conflicts upon the term may exist. The Courts should apply the most favourable law for the benefit of citizens.

In summary, the suggestion for applicants wishing to file divisionals is as follows:

a) For all applications filed before November 2020, although not mandatory it is suggested nevertheless (in order to avoid risk of rejection) to file divisional before the end / completion of substantive examination.

b) For applications submitted after November 2020 it is suggested to submit the divisional under the following headings:

1. As a response to a request from IMPI itself, at the latest before the end of the deadline given.

2. As a voluntary application for division, it should be made:

a) Before the issuance of the decision rejecting, considered abandoned or withdrawn such application;
b) within the time limit for replying to the notice of allowance.

3. Before an international application is considered withdrawn, in accordance with the Patent Cooperation Treaty.

5/5 - (1 vote)

Borja Barrutieta

Lawyer.International Relations Department.Legal Advice Department.


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