How To Streamline The Prosecution Process Using The Various Acceleration Routes

In summary

This article explores patent acceleration programmes in Mexico. It details the mechanisms, benefits and requirements of each programme, including how they facilitate faster patent grants by utilising examination results published by other patent offices. It also addresses the handling of divisional applications and the differences in reciprocity among the programmes. The aim is to help applicants in making informed decisions on the most effective strategies to achieve quicker patent approvals.

Discussion points

• Mexico's first PPH pilot with the USPTO began in 2011, becoming permanent in 2012
• Around 45 per cent of patent applications filed in Mexico originate from US applicants
• IMPI has signed PPH agreements with major offices, including USPTO, EPO, JPO, CNIPA and others
• Nearly 80 per cent of PPH requests (particularly USPTO/EPO-based) obtain allowance within two to three months
• Since 2020, over 4,000 applications have been processed through the PPG programme
• The APG programme, launched in November 2023, exclusively applies to USPTO patents.

Referenced in this article

• Patent Prosecution Highway (PPH)
• Parallel Patent Grant (PPG)
• Accelerated Patent Grant (APG)

In the field of intellectual property, obtaining a patent quickly and efficiently 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 specific 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.

PPH

The PPH is a cooperative initiative among several patent offices 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 office. 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 office can reduce the work needed to examine the same invention by utilising the examination result from the initial office.

This agreement has gained significant popularity in recent years because it reduces the time each office spends analysing and examining patent applications, which are increasing globally each year.

Mexico's involvement with the PPH

Mexico's involvement with the PPH began as a way to streamline patent processes and increase the efficiency of the Mexican Institute of Industrial Property (IMPI). The first PPH agreement in Mexico was signed by IMPI in March 2011 as a pilot programme with the United States Patent and Trademark Office (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 filed 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 offices over the years, reducing the time needed to grant a patent among the participating offices. 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 Office of Second Filing using the examination results from the Office of First Filing;
• PPH Mottainai: allows the applicant to request accelerated examination in the Office of Later Examination using the examination results from the Office of Earlier Examination, regardless of which office conducted the first filing; 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 Office of Later Examination.

PPH agreements signed by IMPI with each office are different, so it is necessary to consult the applicable rules for each of them.

Mexico has established PPH agreements with several foreign patent offices, including:

• Pacific Alliance (Colombia, Chile and Peru);
• Austria (Austrian Patent Office – APO);
• Canada (Canadian Intellectual Property Office – CIPO);
• China (China National Intellectual Property Administration – CNIPA);
• Korea (Korean Intellectual Property Office – KIPO);
• Spain (Oficina Española de Patentes y Marcas – OEPM);
• United States of America (United States Patent and Trademark Office – USPTO);
• France (Institut National de la Propriété Industrielle – INPI);
• Japan (Japan Patent Office – JPO);
• Europe (European Patent Office – EPO); and
• Singapore (Intellectual Property Office 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 offices with PPH agreements, where it is common to receive a substantive office action requesting additional clarifications 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 sufficiently correspond to those considered patentable by the Office 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 office. Additionally, this opportunity can be used to amend any other part of the application if necessary. In the context of sufficient 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 office action objecting to these claims, and the applicant will need to amend the claims in response to this office action.

While accelerated routes such as the PPH often lead to the issuance of a Notice of Allowance, this is not always the case. If IMPI considers that the subject matter does not fulfil the patentability requirements under Mexican law, instead of issuing a Notice of Allowance, a first substantive office action would be issued. In this scenario, the applicant is required to address the examiner's objections by filing a timely response with the necessary clarifications, amendments or arguments.

This part of the process is of utmost importance because, even though the examination route is accelerated, IMPI retains full discretion to ensure compliance with Mexican patentability standards. Consequently, the issuance of a first office action should not be seen as a failure of the acceleration route, but rather as part of the regular prosecution process in which applicants must carefully adapt their claims to align with Mexican practice.

Under Mexican practice, IMPI is entitled to issue up to four substantive office actions before either granting or rejecting an application. This means that, despite using an accelerated route, applicants should expect the possibility of further office actions being issued during prosecution.

Notwithstanding this possibility, practice shows that nearly 80 per cent of applications invoking the PPH obtain a Notice of Allowance within two to three months of filing the request, particularly when the request is based on patents granted by the USPTO or the EPO.

Finally, it should be noted that applicants may file up to two PPH requests for the same Mexican patent application. Beyond this limit, the application must continue under the regular examination process.

Benefits and drawbacks of the PPH

The PPH offers significant advantages for both applicants and patent offices. For applicants, the primary benefits 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 offices, the PPH helps manage workloads by taking advantage of examination work already done by other offices, promoting collaboration and consistency in patent examination.

However, there are also disadvantages. Not all patent applications are eligible for the PPH, and specific procedural requirements can be barriers. The PPH does not apply to utility models or industrial designs, limiting its scope. Coordination between different patent offices can require additional administrative efforts and costs. There can also be inconsistencies in how different offices 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 offices. 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 offices, 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 identified. In this case, IMPI will issue a substantive office action requesting that the claims be amended according to what was granted or allowed by the USPTO or the EPO.

If the applicant agrees to participate in the programme, they must respond to the office action by amending the pending claims to conform to the claims approved by the USPTO or the 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 office action with objections, and the application will follow its normal course.

Alternatively, if IMPI does not invite the applicant to participate through a substantive office action, the applicant can participate in the programme by submitting a voluntary amendment aligning the claims to those approved by the USPTO or the 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).

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Originally published by IAM

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.