One of the key novel features introduced by the Federal Law of Protection of Industrial Property (FLPIP) concerns double patenting. Before the FLPIP, the law was completely silent on double patenting, and examiners often cited different legal basis (if at all) to support their objections, creating uncertainty for both patent examiners and applicants. This gap was filled with a set of three rules, which, being a novelty in Mexican law, deserve thorough analysis. To that end, this article outlines and discusses the double patenting rules in the FLPIP, analyzes their legal implications for patent applicants, and ends with a description of the Mexican Institute of Industrial Property’s (MIIP) current practice.
The FLPIP’s three rules on double patenting are articles 50, 100, and 101.
Articles 50 and 101 are examined together because they are general rules, whereas article 100 provides a specific provision for divisional applications.
Articles 50 and 101: the general double patenting prohibition Article 50 of the FLPIP commands the MIIP “to guard the public domain and prevent double patenting of the same invention”. Article 101 of the FLPIP establishes that “no patent shall be granted to matter that has been protected by another [patent] or which essential technical features are a non-substantial variation of the matter protected by the same, even if the applicant is the owner of the first right”. Read more