The maximum number of Office Actions available during substantive examination of patents and utility models has been reduced from four to two, in view of an amendment to the Mexican Patent Office (MPO) operative rules officially published on March 11, 2026.
This amendment will be effective only for patent and utility model applications filed from March 12, 2026, onwards.
Implications
The amendment limits the room to maneuver in the substantive prosecution. Responses to the first substantive Office Action may have to be as exhaustive as possible or less ambitious in claim scope. Responses to the second and final Office Action should have considered that a final Resolution, either allowing or rejecting the application, will follow.
Since amendments after a final Resolution are not accepted, a more careful consideration of the prosecution strategy will be necessary to maximize the probability of obtaining meaningful patent protection in fewer rounds of examination.
On the other hand, fewer Office Actions result in a compacted procedure and shorter times to resolution. Therefore, the amendment also brings opportunities for earlier strategic planning and for maximizing the efficacy of expedited examination procedures.
Suggested actions
- Establishing an early prosecution strategy. Entering the national phase with a reduced claim scope, filing voluntary amendments before examination, or pursuing expedited examination procedures (PPH or APG), may facilitate the discussion during substantive examination.
- Integrating divisional applications into the strategy. Divisional applications may provide additional opportunities to defend the patentability of the claims, but only if the divisional claims received minimal or no examination in the parent procedure. Careful assessments of double patenting and other divisional restrictions are advised.
- Conducting examiner interviews. Examiner interviews provide opportunities to obtain clarification on unclear objections and test patentability positions before a response is formally filed.
Please don’t hesitate to reach out if you have any questions.
It would be our pleasure to support you in shaping a protection strategy that strengthens your assets and enables timely decision‑making in this evolving regulatory landscape