On December 7, 2020, the official launch of the Parallel Patent Grant or PPG program, was announced.
The program is a new working agreement between the Mexican Institute of Industrial Property (IMPI) and the US Patent and Trademark Office (USPTO), through which it is intended to “increase the quality, efficiency and opportunity of processing patent applications filed before IMPI”, by using the favorable search and examination results carried out by the USPTO in the analysis and eventual granting of patents in Mexico.
The agreement is unilateral, as it only works to speed up procedures in Mexico.
The Memorandum of Understanding governing this program was originally signed in January 2020 and since then, the program has been implemented as a pilot in about 200 patent applications, which have been effectively processed and granted by the IMPI. Now, with the program’s official implementation, it has been established that around 11,000 Mexican patent applications would be eligible to benefit from the PPG program.
The fundamental requirement for benefitting from the PPG is that the Mexican application must be equivalent to the US patent, that is, they must share the same priority date. Additionally, it is required that the matter claimed in the Mexican application is the same (or, where appropriate, of a lesser scope) than that granted by the USPTO. Unlike the well-known PPH program, the PPG does not require an active request from applicants, nor does it require any payment; the use and where appropriate, the communication is established between offices.
It is important to note that the PPG runs automatically once an eligible Mexican application has completed its formal examination, has been published, and the third-party observation period has elapsed.
Therefore, the program supposes a direct streamlining of the procedures filed by applicants in Mexico with an equivalent US patent, while it is intended that Mexican applicants benefit indirectly from the PPG, since the examiners at the IMPI would then focus in examining and resolving local applications.
The PPG is already implemented to expedite the prosecution of applications currently in process, however, applicants are recommended to review and if applicable make the corresponding amendments to the matter claimed when submitting new applications, as well as review their budgets since with this program a significantly swift favorable resolution after filing an application in Mexico can be expected.