Use the highway: quicker patent grants in Mexico

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    The Mexican Institute of Industrial Property (IMPI), like many patent offices around the world, has a lag in patent examinations, which is why since 2011 it has signed a number of bilateral agreements with foreign patent offices that promote work sharing and enable patent applications to request an accelerated processing in the examination, where examiners can make use of the work products from other patent offices under programmes of the Patent Prosecution Highway (PPH).

    Mexico agreed to the first PPH pilot programme with the US Patent and Trademark Office (USPTO), and the programme began on 1 March 2011, and ended on 30 June 2016.

    A PPH pilot between Mexico and the Canadian Intellectual Property Office (CIPO) is in force from 6 January 2014 until 6 July 2018, and it already includes PPH Mottainai and Patent Co-operation Treaty (PCT)-PPH programmes.

    ISRAEL JIMENEZ Breakthrough IP Intelligence Partner Breakthrough IP Intelligence
    ISRAEL JIMENEZ
    Breakthrough IP Intelligence
    Partner
    Breakthrough IP Intelligence

    Different to regular PPH programmes, under the PPH Mottainai pilot programme an applicant can request PPH at any office of later examination by using the examination results of the office of earlier examination, no matter whether the office of earlier examination is the office of first filing or not. Under the PCT-PPH programme, applicants are enabled to request accelerated processing during the national phase based on the following: the written opinion of an international searching authority (ISA); the written opinion or the international preliminary examination report of an international preliminary examining authority (IPEA).

    The IMPI, in co-operation with the USPTO and CIPO, is now promoting innovation and strengthening protection in North America. These offices agreed to conduct the pilot programme in order to apply even procedures across the three offices, using the PPH. The pilot programme implies that the PPH programme, already implemented between the IMPI and USPTO, is now also covering the modalities of PPH Mottainai and PCT-PPH.

    On the other hand, the IMPI and Japan Patent Office (JPO) started their trial period of a PPH pilot programme on 2 June 2011, and it was extended to an indefinite term; it presently includes the modality PPH Mottainai. Likewise, the IMPI and China’s State Intellectual Property Office (SIPO) started a trial period of a PPH pilot programme on 1 March 2013, and it, too, has been extended to an indefinite term.

    A PPH pilot was also initiated with the Korean Intellectual Property Office (KIPO); the trial period started on 1 July 2014 and will end on 30 June 2017, including the modality PPH Mottainai.

    Another programme that Mexico has kept is a PPH pilot programme with Spain’s patent authority, Oficina Española de Patentes y Marcas (OEPM). The trial period started on 1 October 2011 and will end on 31 July 2018.

    Other programmes to which the IMPI has agreed include: the PPH pilot programme with the Intellectual Property Office of Singapore (IPOS), in which the trial period started on 14 April 2014 and ended on 13 April 2016; the PPH pilot programme with the European Patent Office (EPO), which started trials on 6 January 2015 and will end on 5 January 2018; and The PPH pilot programme with Instituto Nacional da Propriedade Industrial (INPI), the patent authority of Portugal, where the trial period started on 23 October 2014 and will end on 23 October 2016.

    More recently, other programmes with South American countries have been agreed, with the patent offices of Colombia, Chile and Peru on 8 October 2015. PPH pilot programmes for each started on 1 July 2016, and will end on 30 June 2019.

    use-the-highway-quicker-patent-grants-in-mexico

    The trial periods of any of these programmes can be extended if necessary, until the countries above and Mexico’s IMPI have received a sufficient number of PPH requests that allow adequate assessment on the feasibility of the PPH programme. These offices may also terminate the PPH pilot programme if the volume of participation exceeds a manageable level. Ex ante notice will be published if the PPH pilot programme is to be finalized.

    It is important to keep in mind when requesting participation in any of the PPH pilot programmes in Mexico to comply with all the requirements in order to get the application advanced for examination. Likewise, publication as established in article 52 of the Mexican IP Law should have taken place and the period for third parties’ observations (provided by article 52) should have expired. If a PPH request is submitted before the expiration of the period for observations, the IMPI shall determine whether the patent application may be entitled for accelerated examination under the PPH until the said period ends.

    Therefore, it is recommended to request the PPH procedure in Mexico during the last month of the observation period, making a fast granting of the patent possible.

    These programmes are bringing very good results in terms of time in Mexico because the term to get a final resolution of a patent application can be significantly reduced to less than two months (five weeks on average) from submitting the PPH request. However, the number of applications using this highway is very low.

    Applicants are encouraged to take advantage of these programmes by submitting PPH requests that are functioning in Mexico. They will contribute to reducing the lag in the examination of patent applications and bring benefits to all users of the patent system, and may also secure co-operation between Mexico and each of the foreign patent offices, through the PPH programmes.

    Israel Jimenez is a partner in the Mexico City office of Breakthrough IP Intelligence, with his patent practice focusing on chemistry, biotechnology, biochemistry and pharmaceuticals. He can be contacted on +52 55 1000 9130 or by email at israel@breakthroughip.com

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