Recently a new procedure was implemented between the Mexican Patent Office (IMPI) and the United States Patent and Trademark Office (USPTO) to expedite the granting of Mexican patent applications based on the examination of a US corresponding application, it is the Accelerated Patent Grant program (APG).
In conjunction with the existing Patent Prosecution Highway program (PPH) and the Parallel Patent Grant program (PPG), the APG emerges from collaborative efforts between IMPI and USPTO to streamline and accelerate procedures by exchanging work products. In the case of APG, it is possible to request it even when substantive examination has begun, unlike the PPH that requires that substantive examination has not started.
This program is only available for those patent applications being electronically prosecuted, so if a patent application is still being physically handled a request for its electronic prosecution before the IMPI is advisable.
Moreover, the following requirements should be noted:
a. The Mexican patent application must have a corresponding patent application in the USPTO that has been already granted and published as such.
b. The Mexican patent application should claim priority of a related US application or should share a priority claim, under the Paris Convention.
c. All the claims in the Mexican patent application should sufficiently correspond to those of the US patent application, meaning that format or different practice changes are allowable, but the Mexican scope should be the same or narrower than that of the US patent application. If required, it is feasible to file an amendment along with the APG request to fulfill this requirement. Deletion of claims is permitted.
d. The Mexican patent application has been published and the third-party-observations period (2 months after publication) is over.
For divisional applications, participation in the APG program will be suspended until the initial application is resolved definitively. The acceptance of participation in an initial patent application doesn't extend to divisional applications, so applicants must apply for each divisional application.
If the participation request doesn't meet the criteria, it is possible to reapply.
Expanding the paths to shorten patent prosecution timelines signifies a favorable development for applicants seeking protection in Mexico, enabling them to streamline the process and enhance the patent granting procedures. The APG program presents an appealing avenue for applicants with an US granted patent, supplementing the choices offered by the widely utilized PPH program, so it would be important to consider it when planning a patent strategy in Mexico.
author:
Mariana Gonzalez, partner of the Intellectual Property Practice in Basham Ringe y Correa
For further information, please contact basham@basham.com.mx
