On December 7, 2020 the USPTO and the Mexican Institute of Industrial Property (IMPI) announced a new cooperation program to expedite the granting of patents, the Parallel Patent Grant (PPG) Initiative.

According to the General Director of IMPI, Juan Lozano Tovar, this program as part of the USPTO-IMPI cooperation “is especially relevant for US Stakeholders that have investments in Mexico to accelerate their patent protection”.

In addition, it has been stated that “The PPG allows IMPI to leverage USPTO search and examination results when granting a counterpart MX patent” and that “The new arrangement with MX improves on the PPH model by facilitating a more streamlined approach that significantly reduces review time of a Mexican patent application as well as institutional resources”

This initiative follows the signing of the Memorandum of Understanding on Technical and Strategic Collaboration by the USPTO and IMPI (MoU) on January 28, 2020.

However, the scope of the initiative or the specific rules that US titleholders must comply with to benefit from the program and obtain their Mexican patent granted is not yet clear. This news has generated many expectations in the practitioners of both countries.

As background, the USPTO and the IMPI have maintained a Patent Prosecution Highway (PPH) program since March 2011. Like many of the PPH programs around the world, this program has a list of requirements, for example:

The Mexican patent application must claim a US priority application or be a PCT national phase with a parallel US national phase to enter the PPH program.

It is required that the substantive examination of the MX patent application has not started at the time of the PPH request.

Another requirement is that the USPTO has concluded the allowability of at least one US claim.

Likewise, all the claims in the MX patent application must sufficiently correspond to the allowable/patented claims in the US application(s).

The applicant should request the PPH before IMPI submitting certain documents in Spanish language.

Therefore, the new initiative should increase the flexibility of some of the PPH requirements or complement the PPH program to provide tangible benefits to users of the system.

The purpose of the MoU is to establish a flexible framework to facilitate development of a mutual beneficial long-term collaboration between the US and MX offices in strategic and technical areas of common interest in the field of patents.

In accordance with common cooperation objectives, among many things, the offices intend to increase the quality, efficiency and timeliness of the processing of patent application filings at the IMPI by efficiently reutilizing USPTO prior art searches and examination results on counterpart patent applications.

On this basis, some of the particularities that the PPG will bring to the well-known PPH could be, among others:

The one-way reliance on U.S. examination work product. Only the USPTO work product is the base of the PPG, not the work product of the MX office.

The MX office can take the USPTO’s work product from the counterpart issued patent, but the patent application must still conform to the national law in terms of subject matter eligibility. Therefore, the MX office will still undertake a review to ensure conformity to local patent laws.

The PPG request could be submitted even if the substantive examination in the MX has already started.

It is remarkable to mention that it has been a common practice among Mexican examiners of IMPI’s substantive examination areas to review the patent prosecution history of counterpart applications in other jurisdictions to consider such prior evaluation for the related MX case. Many times, if a patent has been granted in the US, the Mexican examiner provides the option to adapt the MX claims to those granted to speed up the process in Mexico.

Regarding the eligibility of the subject matter, the local law has particular patentability exceptions for computer programs, methods for carrying out business, essentially biological processes, surgical or therapeutic treatment methods for the human or animal bodies and the diagnostic methods. Accordingly, US applicants applying for MX patent application acceleration through PPG should consider that the claim chapter might require some modifications to actually obtain the benefit.

It is hoped that in the coming weeks, with more information on the rules and particularities of the PPG, this initiative will become a useful tool for all users of the patent system in both countries.

The press releases could be consulted in the following links:

https://www.uspto.gov/about-us/news-updates/uspto-and-mexican-institute-industrial-property-announce-launch-parallel

https://mx.usembassy.gov/uspto-and-mexican-institute-of-industrial-property-launch-new-worksharing-arrangement/

https://www.gob.mx/impi/articulos/la-uspto-y-el-instituto-mexicano-de-la-propiedad-industrial-anuncian-el-lanzamiento-de-la-iniciativa-de-concesion-paralela-de-patentes-258866?idiom=es