Modern trades of patent legislation are recognized and incorporated into Mexico’s patent prosecution. Yes, we apply the Patent Prosecution Highway so to be a part of those countries that seek measures to reduce time for the granting of patents.
Since March 1, 2011, the Mexican Institute of the Industrial Property (IMPI) established a new pilot program called as Patent Prosecution Highway (PPH) with the United States Patent and Trademark Office (USPTO) in order to expedite patent prosecution procedures based on favorable results issued by USPTO. Fortunately, the program was a success and consequently it was renewed on April 23, 2013, including the classic PPH and the addition of new types PCT-PPH and PPH Mottainai.
It is worth noting that due the success of the program among both offices, Mexico agreed similar pilot programs in full force with:
- Austrian Patent Office (APO) until November 30, 2018;
- European Patent Office (EPO) recently renewed until January 5, 2020;
- Portuguese National Institute of Industrial Property (INPI) until October 23, 2018;
- Canadian Intellectual Property Office (CIPO) until July 6, 2018,
- State Intellectual Property Office of the People’s Republic of China (SIPO) signed for an undetermined period of time;
- Spanish Patent and Trademark Office until July 30, 2020;
- Japan Patent Office (JPO) signed for an undetermined period of time;
- Korean Intellectual Property Office (KIPO) until June 30, 2020;
- Intellectual Property Office of Singapore (IPOS) until April 14, 2020; and
- Pacific Alliance Intellectual Property Offices from Colombia, Chile and Peru until June 30, 2019.
Although there are distinct pilot programs signed between the previous Patent Offices and Mexico, the fact is that statistically speaking the most requested to expedite patent prosecution procedures based on favorable results are those signed between USPTO-IMPI, EPO-IMPI, JPO-IMPI and CIPO-IMPI. It is remarkable, that the agreement between EPO and IMPI was firstly signed on January 5, 2015 with a positive acceptance and an upwards growth in a short period of time positioning it within what it could be considered as a “top four” and due the success thereof a recently renewal.
Concerning the pilot programs excluded from the “top four”, it is possible that such pilot programs require more time and/or a higher promotion to increase their numbers in Mexico, but they are present and available for its use in Mexico.
Common Exceptions of the PPH in Mexico.
Taking into account that the Industrial Property Laws of each country are distinct, there have been some exceptions when using the favorable results of the previous Patent Offices due there is subject matter permissible in such offices but non-permissible under Mexican Industrial Property Law.
USPTO-IMPI common exceptions.
While the treatment, surgical and/or diagnosis methods are susceptible of protection under US legislation, the fact is that under Mexican Law said subject-matter will immediately rejected despite the favorable results issued by USPTO. Further exceptions correspond to subject-matter directed to computer programs, methods for carrying out a business and essentially biological processes.
Although there are other exceptions of patentability according to Mexico local laws, the most common are those previously stated which are restrictive when promoting a patent application using the agreement signed between USPTO and IMPI.
Notwithstanding, it does not mean all is over and indeed there are some strategies to adapt the claims according to what is permissible by IMPI based on local Industrial Property Law and the Mexican practice. Also, it is worth noting that in some cases adapting the claims according to Mexican Law and practice is not a simple task due the nature of the subject-matter.
EPO-IMPI common exceptions.
Even though, the European Industrial Property Laws are more identical to Mexican Industrial Property Laws there are some exceptions when using the positive results issued by EPO, e.g., lastly the EPO has been granting subject-matter containing computer programs definitively banned in Mexico and consequently the favorable results may have a restriction. Fortunately, there are some strategies to overcome such restrictions focused to adapt the claims according to what it is permissible in Mexico.
The EPO accepts EPC 2000 claims which format is “Compound X for use in a method of treating a disorder Y”. At this point, it is important to mention that IMPI should accept such claims when using the positive results of EPO, but lastly there are some Divisions within IMPI which consider such claims as exceptions of patentability. For example, in our practice and experience said EPC 2000 claims are generally acceptable by the Biotechnology Division, while the Pharmaceuticals Division has a divided opinion concerning such claims.
Fortunately, there are strategies which reduce the risk of a rejection of the positive results of EPO which are applicable in Mexico depending on the case.
An update of PPH between USPTO-IMPI.
The first Agreement signed between the USPTO and IMPI was limited to the issue of Notices of Allowance and/or granted patents. However, during the last renewal of such PPH agreement among both offices, the inclusion of PCT-PPH and PPH Mottainai were agreed. Therefore, now the favorable results of the Written Opinion of International Search Authority, the Written Opinion of International Preliminary Examination Authority or the International Preliminary Examination Report are allowable to expedite patent prosecution procedures via USPTO-IMPI.
Unfortunately, the Agreement signed between both offices has a deadline which expires next April 22, 2018 and it is difficult to establish the future thereof in light of the talks between Canada, USA and Mexico regarding the renewal of the North American Free Trade Agreement (NAFTA).
Notwithstanding, in our opinion, taking into account the advantages of the Agreement signed between USPTO and IMPI and the implicit benefits of expediting patent prosecution procedures in a country, the Agreement should be renewed in the near future.
In conclusion, the program pilots signed between IMPI and other Patent Offices to expedite the patent prosecutions procedures have arrived for staying a long time. It is possible that at this moment some Agreements have better numbers in Mexico, but it is just an affair of time in order that most of the Agreements start to increase their numbers despite the exceptions of patentability proper of each country.