This is a general guide regarding patent application amendment practice according to the Federal Law of Protection of Industrial Property (FLPIP) and the Mexican Institute of Industrial Property (IMPI)’s application thereof.
1. Pre-filing amendments
There is no obligation in the FLPIP to file a Mexican application with the same contents as an earlier-filed application, such as a priority or a PCT application. Likewise, there is no prohibition to file amendments at the time of filing the Mexican application. Indeed, the FLPIP only regulates amendments to a patent application or issued patent, both of which imply the prior filing of a patent application.
The IMPI’s practice is to accept amendments that are entered at the time of filing. This is common, for example, in national phases under the PCT which claims are redrafted to conform to local practice or voluntarily amended to optimize prosecution. As such, the amended specification enters from the very beginning of the procedure and conforms to the originally filed application.
Any added matter vis-á-vis the priority or PCT application may result in the priority being recognized partially, i.e., only the matter supported in the priority/PCT application will benefit from priority rights, while the added matter will not. Read more