Mexico has signed up to a number of international patent agreements and incorporated their provisions into domestic law to ensure that applications are granted without unnecessary delays and costs. Two such regulations are those governing the Patent Prosecution Highway (PPH) and the Patent Parallel Grant (PPG).
PPH is a bilateral agreement, well known for facilitating the fast-tracking of patents applications that have been accepted by other patent offices, which have an agreement with the Mexican Institute of Industrial Property (IMPI), specifically the following:
- the Austrian Patent Office;
- the Canadian Intellectual Property Office;
- the EPO;
- the Japan Patent Office;
- Korean Intellectual Property Office (KIPO);Spanish Patent and Trademark Office (OEPM);
- the Intellectual Property Office of Singapore;
- the Pacific Alliance of Intellectual Property Offices (Colombia, Chile and Peru);
- the Portuguese National Institute of Industrial Property;
- the State Intellectual Property Office of the People’s Republic of China (SIPO); and
- the USPTO.
One of the key requisites to take advantage of PPH is that the substantive examination must not have begun for the application. The requirements for applying PPH vary from office to office since, according to the guidelines, it is possible to use the notice of allowance, granted patent and/or favourable results of the Patent Cooperation Treaty (PCT) work products. Under certain circumstances, favourable results of the PCT work products are not permissible.
Fortunately, there is another regulation that is useful when the PPH is not applicable due a patent application being under substantive examination.
The PPG is a unilateral agreement to which IMPI has signed up with other offices in order to accelerate applications and increase their probability of success if they have already achieved favourable results.
The PPG applies when a patent application is under substantive examination and, more particularly, when the examiner makes a formal invitation to use it through an office action. It is worth noting that the IMPI also accepts the PPG in a voluntary scheme and indeed in daily practice it has been mentioned and/or used when responding to an office action even when the IMPI does not request it, or through a voluntary amendment with a subsequent granting. The PPG is therefore useful, for example, when the time allowed for applying PPH has run out.
It is important that the corresponding US or European patent must claim a US or European priority to apply for a PPG request.
For now the PPG is only agreed between the IMPI, the USPTO and the EPO. However it is likely that it will be adopted by other offices and, more particularly, the patent offices that have signed up to the PPH agreement.
The PPG is grounded in Article 54 of the Industrial Property Law and Article 114 of the Federal Law of Protection to Industrial Property. Although the PPG was already available under the umbrella of Article 54, the recent agreement provides a formal status and name.
Both PPH and PPG are subject to the criteria of the IMPI, including the exclusion of patentability either under old or new law. Applications considered non-patentable include, but are not limited to:
- mathematical methods;
- schemes, plans, rules and methods for the exercise of intellectual activities for games or for economic-commercial activities or for carrying out business;
- computer programs;
- forms of presentation of information;
- plant varieties and animal breeds;
- methods of surgical or therapeutic treatment of the human or animal body, and diagnostic methods applied to them; and
- essentially biological processes for obtaining plants or animals and the products resulting from these processes.
In the case of computer programs or methods of surgical or therapeutic treatment, the applications may be revamped or reworded in order to qualify for patent status. The IMPI may also determine whether the matter lacks novelty and/or inventive step, unity of invention and so on, depending on the authority’s criteria. Although it is true that an office action will be issued, the time of response from the IMPI is faster than the normal prosecution.
Patent applicants, particularly those with existing grants, should therefore take note of both instruments as a means of saving time and money, as well as boosting the likelihood of success before IMPI.