The Mexican Institute of Industrial Property (IMPI) has implemented a new mechanism to expedite grant of patent applications based on the work products of the United States Patent and Trademark Office (USPTO): the Accelerated Patent Grant program (APG).

Through the APG, a Mexican application may proceed to allowance without a substantive examination based on a corresponding US application that has been granted. Thus, if examination has not started, the APG also implies that the application will be advanced out of turn for examination.

This new accelerated pathway emerges in the framework of a Joint Statement of Intent between the intervening Patent Offices and was made available through IMPI’s electronic filing portal on November 13, 2023, together with corresponding Guidelines that set forth the requirements and procedure.

Eligibility requirements

There are four basic eligibility requirements for participation in the APG:

1. The Mexican application must claim priority to a US application or have one priority in common with a US application,
2. the US application must have matured into an issued US patent,
3. all the claims of the Mexican application must sufficiently correspond to those of the US patent, and
4. the claims of the Mexican application must not contain matter excluded from patentability.

Procedure

The procedure involves filing a request before the IMPI, within the period spanning from the lapse of the term for third-party observations (two months from publication of the Mexican application) to the deadline for responding to the third Office Action for substantive examination.  

If the claims of the Mexican application are not already conformed to the US granted claims, a voluntary amendment must be filed before or concurrently with the APG request.

An APG request in a parent application will not extend to divisional applications, whereas an APG request in a divisional application will be suspended until the parent application receives a final resolution.

Differences with alternative accelerated pathways

Together with the currently standing Patent Prosecution Highway program (PPH) and Parallel Patent Grant program (PPG), the APG is the result of endeavors of cooperation and sharing of work products between the IMPI and the USPTO, to simplify and expedite procedures.

As compared to the IMPI-USPTO PPH, APG provides an increased likelihood that the Mexican application will receive allowance. After all, PPH is a mechanism to expedite the beginning of examination, and not necessarily to expedite allowance (even if this is frequently the outcome). Also, APG is applicable even if substantive examination has started, whereas PPH is not. Lastly, APG requires an issued US patent, while PPH can be based on allowed claims in a US application or a favorable patentability opinion in the PCT application.

On the other hand, PPG is authority-driven by design, as it materializes once the IMPI requests applicants to conform to the claims of an allowed or granted US application, and does not foresee applicant requests, whereas APG is completely applicant-driven. In addition, under PPG, only Mexican applications claiming priority to a US application are eligible, whereas APG also allows third-country priority applications in the corresponding US and Mexican applications.

Overall, the APG seems to be an attractive option for patent applicants having a granted US patent, that should be considered when devising a prosecution strategy in Mexico.

For further information, please contact info@clarkemodet.com.mx.