In the eld of intellectual property, obtaining a patent quickly and efciently can be crucial for protecting innovation and securing a competitive position in the market. Recognising this need, Mexico has implemented different mechanisms to expedite the patent-granting process. Particularly, these mechanisms include the Patent Prosecution Highway (PPH), the Parallel Patent Grant (PPG) and the Accelerated Patent Grant (APG).
Each of these programmes offers distinct advantages and requirements, addressing the specic needs of applicants. This article explores how these programmes function and compares their particularities to help applicants make informed decisions about the best strategy to accelerate the granting of their patent applications.
The PPH
The PPH is a cooperative initiative among several patent ofces worldwide. It allows for expedited examination processes for corresponding patent applications that have already received a favourable result from the examination performed by another patent ofce. Essentially, if a patent application is deemed patentable in one member country, it can be fast-tracked in another, reducing redundancy and speeding up the process. This means that another ofce can reduce the work needed to examine the same invention by utilising the examination result from the initial ofce.
This agreement has gained signicant popularity in recent years because it reduces the time each ofce spends analysing and examining patent applications, which are increasing globally each year.
Mexico's involvement with PPH
Mexico's involvement with the PPH began as a way to streamline patent processes and increase the efciency of the Mexican Institute of Industrial Property (IMPI). The rst PPH agreement in Mexico was signed by IMPI in March 2011 as a pilot programme with the United States Patent and Trademark Ofce (USPTO), becoming a permanent programme in 2012.
Given that the United States is Mexico's principal trading partner, and that around 45 per cent of the patent applications led in Mexico last year came from US applicants, this programme has proven to be an excellent mechanism for accelerating the examination of patent applications in Mexico when a favourable result is obtained from the USPTO.
Evolution of PPH agreements
Due to the success of this programme, IMPI has signed PPH agreements with many of the world's major patent ofces over the years, reducing the time needed to grant a patent among the participating ofces. Initially, the PPH was restricted to applications claiming priority from countries that had signed the agreements. However, the PPH has evolved to include three key types:
- PPH: allows the applicant to request accelerated examination in the Ofce of Second Filing using the examination results from the Ofce of First Filing;
- PPH Mottainai: allows the applicant to request accelerated examination in the Ofce of Later Examination using the examination results from the Ofce of Earlier Examination, regardless of which ofce conducted the rst ling; and
- PCT-PPH: allows an applicant who has obtained a favourable result in the international phase under a PCT application to request accelerated examination of the corresponding application in an Ofce of Later Examination.
PPH agreements signed by IMPI with each ofce are different, so it is necessary to consult the applicable rules for each of them.
- Mexico has established PPH agreements with several foreign patent ofces, including:
- Pacic Alliance (Colombia, Chile and Peru);
- Austria (Austrian Patent Ofce – APO);
- Canada (Canadian Intellectual Property Ofce – CIPO);
- China (China National Intellectual Property Administration – CNIPA);
- Korea (Korean Intellectual Property Ofce – KIPO);
- Spain (Ocina Española de Patentes y Marcas – OEPM);
- United States of America (United States Patent and Trademark Ofce – USPTO);
- France (Institut National de la Propriété Industrielle – INPI);
- Japan (Japan Patent Ofce – JPO); Europe (European Patent Ofce – EPO); and
- Singapore (Intellectual Property Ofce of Singapore – IPOS).
In practice, IMPI's criteria often align with the results from the USPTO or the EPO, resulting in the issuance of a Notice of Allowance in most cases. This contrasts with PPH requests based on patents granted by other ofces with PPH agreements, where it is common to receive a substantive ofce action requesting additional clarications before issuing the Notice of Allowance.
Conditions for PPH participation
In general terms, to request the participation of a Mexican patent application in a PPH agreement, the following conditions must be met.
- The Mexican application must have already been published, the two-month period for third-party observations must have passed and the substantive examination by IMPI must not have begun.
- The claims of the Mexican application must sufciently correspond to those considered patentable by the Ofce of Earlier Examination. It is possible to submit an amendment along with the PPH request so that the claims match those considered patentable by the corresponding foreign ofce. Additionally, this opportunity can be used to amend any other part of the application if necessary. In the context of sufcient correspondence, it is important to note that US patents often contain claims directed to non-patentable subject matter in Mexico, such as methods of treatment or software. For software claims, they must be amended to eliminate any references to software, computer programmes, executable instructions or applications. For method of treatment claims, these should be reformulated under the format of purpose-limited product claims or Swiss-type claims. If these amendments are not made, IMPI will issue a substantive ofce action objecting to these claims, and the applicant will need to amend the claims in response to this ofce action.
It is important to keep in mind that even though certain subject matter has been considered patentable by a foreign ofce, IMPI will analyse whether it meets the patentability requirements established by Mexican law. Therefore, while the examination can be accelerated by requesting participation in a PPH agreement signed by IMPI, it does not guarantee that the patent will be granted.
Nonetheless, around 80 per cent of applications invoking PPH receive a Notice of Allowance within three months of submitting the PPH request. In cases where IMPI considers that the subject matter does not meet the requirements of Mexican law, a rst substantive ofce action is issued.
Benets and drawbacks of the PPH
The PPH offers signicant advantages for both applicants and patent ofces. For applicants, the primary benets are faster processing times and reduced examination costs. This accelerated process can be critical for businesses needing timely protection to stay competitive in fast-moving markets. For patent ofces, the PPH helps manage workloads by taking advantage of examination work already done by other ofces, promoting collaboration and consistency in patent examination.
However, there are also disadvantages. Not all patent applications are eligible for the PPH, and specic procedural requirements can be barriers. The PPH does not apply to utility models or industrial designs, limiting its scope. Coordination between different patent ofces can require additional administrative efforts and costs. There can also be inconsistencies in how different ofces interpret patentability criteria even with the standardised process.
PPG
The PPG programme is designed to strengthen technical and strategic cooperation between IMPI and the USPTO or the EPO to accelerate the patent grant process in Mexico by reusing search and examination results from these ofces. The agreement with the USPTO came into effect on 28 January 2020, and the agreement with the EPO on 15 November 2019.
The PPG applies to Mexican patent applications claiming priority from a US application or a European application. It is a collaborative agreement between industrial property ofces, meaning that no application for participation is required from the applicant. Instead, participation in this programme is through an invitation issued by IMPI when, during the substantive examination, a granted patent or allowed application related to a Mexican application is identied. In this case, IMPI will issue a substantive ofce action requesting that the claims be amended according to what was granted or allowed by the USPTO or EPO.
If the applicant agrees to participate in the programme, they must respond to the ofce action by amending the pending claims to conform to the claims approved by the USPTO or EPO. Once the response is submitted, the estimated response time from IMPI is approximately three months, after which the applicant will receive the notice of allowance. If the patentability requirements established in Mexican legislation are not met, IMPI will issue a substantive ofce action with objections, and the application will follow its normal course.
Alternatively, if IMPI does not invite the applicant to participate through a substantive ofce action, the applicant can participate in the programme by submitting a voluntary amendment aligning the claims to those approved by the USPTO or EPO. This voluntary participation can be done at any stage of prosecution but before the issuance of the Notice of Allowance, provided that the patentability requirements of Mexican legislation are met.
Since the implementation of the PPG, over 4,000 patent applications have been processed under this programme, according to information provided by the National Institute for Access to Information (INAI).
APG
This programme aims to accelerate the patent grant process in Mexico by relying on the examination results from the USPTO through collaboration between IMPI and the USPTO.
- To benet from the APG, applicants must meet the following requirements:
- claim priority under the Paris Convention from a US application or have a common priority with the corresponding US application;
- the corresponding US patent must have been published in the USPTO Patent Gazette;
- ensure all claims in the Mexican patent application correspond to those in the US granted patent or amend them accordingly;
- complete the necessary formalities and have the Mexican application published in the Industrial Property Gazette, with the two-month period for third-party observations having passed; and
- the deadline to participate in the programme is within the period granted to respond to an eventual third substantive ofce action. The ofce action must be responded to, and the APG request must be submitted independently.
Additional considerations
- Utility model and industrial design applications, as well as patent applications containing non-patentable subject matter, are not eligible for the APG programme.
- Acceptance of the participation request for an initial patent application does not automatically transfer to a divisional application. A new request must be submitted for each divisional application, meeting all established conditions.
- There is no limit on the number of attempts to participate in the APG programme, and requests can be submitted even if the substantive examination has already begun.
- The APG programme is not reciprocal and applies only to patents granted by the USPTO.
The APG represents a valuable tool for applicants seeking a quick and efcient grant of their patents in Mexico.
Since the implementation of the APG on 13 November 2023, very few applications have been submitted to participate in this programme, according to information provided by INAI.
Comparison of patent acceleration programmes in Mexico
Due to the similarities among the PPH, PPG and APG programmes, we present the following comparison to help applicants determine which programme best suits their needs.
Comparative table of patent acceleration programmes
Understanding the differences between PPH, PPG and APG is essential for applicants aiming to expedite their patent applications in Mexico. While PPH and APG require a written request for participation, PPG does not. Additionally, each programme varies in terms of collaboration basis, basis for acceleration, application stage and the number of attempts allowed. Selecting the most appropriate programme depends on the specic circumstances of the patent application and the strategic goals of the applicant.
Handling divisional applications within patent acceleration programmes
When seeking expedited examination of divisional applications under the PPH, PPG and APG programmes, there are additional considerations to keep in mind.
First, the acceptance of the participation request for an initial patent application does not automatically transfer to a divisional application. The applicant must submit an independent request or receive an invitation from IMPI (in the case of PPG) to participate in the divisional application and meet all established conditions.
For the APG specically, if the patent application is divisional, participation in the programme will be suspended until the initial application has been denitively resolved. This restriction is unique to the APG, ensuring that the initial application must be resolved before the divisional application can proceed under the programme.
This requirement is not explicitly stated for the PPH and PPG programmes, which may offer more exibility in handling divisional applications concurrently with the initial application.
Additionally, all other requirements of any of the three acceleration programmes apply equally to divisional applications as to parent applications.
Reciprocity
In terms of reciprocity, the PPH programme allows for mutual use of examination results between participating patent ofces. This means that IMPI can rely on examination results from foreign ofces, and vice versa.
In contrast, the PPG and APG programmes do not offer this mutual benet. While PPG and APG rely on search and examination results from foreign patent ofces, such as the USPTO and EPO, they do not provide an agreement for foreign patent ofces to use IMPI's examination results.
Conclusion
Mexico's patent acceleration programmes provide valuable options for applicants seeking to shorten the time required to obtain a patent. The PPH programme, with its reciprocal nature, offers an efcient route for patents already deemed patentable in other countries. On the other hand, the PPG and APG programmes, while relying on foreign examination results, do not offer mutual benets but still provide signicant advantages in reducing prosecution times.
Understanding the specic requirements of each programme is essential for applicants to choose the most appropriate strategy. Whether through mutual agreements, technical cooperation or using foreign examination results, these programmes improve the efciency of the patent granting process in Mexico. By selecting the right programme based on the application's circumstances, applicants can better protect their innovations and secure their market positions more quickly.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.