Mexican Institute of Industrial Property (IMPI)
has been focusing efforts in reducing timeframe for patent prosecution in
Mexico, considering available foreign work products, efforts, and analysis.
Increasing the possibilities for applicants to accelerate patent prosecution
time takes high relevance when considering the provision of Article 126 of
Federal Law for Protection of Industrial Property (FLPIP), in-Force since
November 2020, stating that, in the prosecution of a patent, if there are
unreasonable delays, directly attributable to the Institute that result in a
term of more than five years, between the filing date of the application in
Mexico and the grant of the patent, a complementary certificate may be granted
to adjust the term of the patent to extend the time of the validity of the
In this sense, it is highly relevant that from
the available current data of the IMPI and World Intellectual Property
Organization (WIPO) about 93% of all filed patent applications are filed by
foreign applicants and companies, which produces MX applications co-existing
with their sister parallel applications in foreign offices for a single
invention of interest. Mexican Examiners tend to be influenced by some of these
foreign results, mainly considering those issued by European Patent Office and the
United States Patent and Trademark Office (USPTO).
Considering that USPTO handles nearly one-fifth
(19.3%) of the global total filed patent application, while having the largest
number of patents In-Force, about 3.3 million, efforts has been made for
allowing Mexican applicants to take advantage of the development of parallel
patent applications in the US.
Patent Prosecution Highway (PPH) program has
been available in Mexico since 2011, now extended to June 30, 2027, allowing
applicants to use a positive examination result as a basis to accelerate the
corresponding examination in Mexico via the PPH Program IMPI-USPTO.
An additional possibility is readily available
in Mexico, via the Accelerated Patent Grant (APG) agreement, signed on August
07, 2023, with the corresponding guidelines published on November 13, 2023. This
new option provides eligible patent applicants the option of using an expedited
process for obtaining a patent grant in Mexico based on a US granted patent. APG
allows applicants, with a granted US patent, requesting IMPI to allow a parallel
patent at any time during its processing, following the publication of the
application. APG is now available for digital applications in the electronic IMPI
digital portal in case an application is still in physical format the same must
be converted to a digital application via direct request to the IMPI.
Contrary to the PPH provisions, a request based
in the APG agreement could be filed even when the in-depth analysis has already
started and could be filed for responding at most to the third in-depth official
action, filing the corresponding amendments to mirror the subject matter as
granted in the US Patent. Additionally, it is worth noting that the
corresponding APG guidelines specify that the MX application must a) validly
claim priority under the Paris Convention of the USPTO application; or b) have
a priority in common with the corresponding USPTO application; while the
in-Force PPH program examples only consider requests where the US application
with a positive result is claimed as priority in the MX application.
Considering the current in-development practice
for divisional applications in MX, it is worth noting that IMPI has noted that
if the patent application submitted to the IMPI is a divisional application,
the participation in the APG program will be suspended until the initial application
has been definitively resolved. As in other options, if the request is not
considered as valid, IMPI is able to deny the acceptance of the same, notifying
the reasoning for denial and allowing the applicant to resubmit a new request.
IMPI will not notify the applicant of the acceptance of the request, but an
accelerated allowance/office action will be issued for the application.
In this regard, it is highly relevant to
consider the differences in practice regarding treatment method claims, which
are well accepted in US but not considered as patentable in Mexico in line with
the provisions of Article 49, section IV, of the FLPIP. All subject matter
referring to methods of surgical or therapeutic treatment of the human or
animal body and the diagnostic methods applied to them, must be redrafted to an
accepted medical use format, being the EPC-2000 format the preferred one, i.e.,
compound X for use in the treatment of Y, where Y is specific disorders or
diseases for which the invention is useful.
Accordingly, APG is a new option for MX
applicants to take advantage of the performed analysis of the USPTO for
parallel application, complementing the available options provided by the
commonly used PPH program.
The increase in possibilities to reduce patent
timeframes is a positive sign for Mexican applicants to optimize patent
prosecution and improve granting processes.
Luis Fernando Granados Castro