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PPH programmes in Mexico

by Mauricio Sámano

The patent prosecution highway (PPH) is a programme in which the applicant enjoys an expedited examination of his patent application, leading to a considerable reduction in the time taken to obtain its possible grant. The Mexican Intellectual Property Office (IMPI) has PPH pilot programmes with the Korean Intellectual Property Office (KIPO), SIPO in China and the Spanish Patent and Trademark Office (OEPM), and permanent PPH programmes with the USPTO and the Japanese Patent Office JPO.

Under a PPH the application receives a fast-tracked study in a second filing office by adapting the set of claims to those that were granted in the first filing office. For example, a US application that has obtained grant from the USPTO (in this case the first filing office), may have a PPH examination requested before the IMPI (in this case the second filing office), as long as the set of claims filed before the IMPI corresponds to the set of claims that was granted by the USPTO. As a consequence of this, the Mexican examiner will acknowledge that the PPH application is novel, demonstrates inventive step and has industrial applicability, and thus, will only verify that the application does not claim matter that is not patentable according to the provisions of Mexican Industrial Property Law, such as treatment methods, mathematical methods or software.

A US applicant must also file its application according to the provisions of the Paris Convention or as a national phase PCT application, and in both cases the Mexican application must claim priority over the US application that has been identified by the USPTO as containing patentable matter. If the claims that were recognised as patentable by the USPTO pertain to an application that is different from that which was claimed as a priority, like a divisional application for example, the applicant must indicate the relation between the divisional and the claimed priority. Additionally, the applicant must file a table that indicates the correspondence between the claims filed in the second filing office (in this case IMPI), and the claims that were considered patentable by the first filing office (in this case the USPTO). It is important to note that the requirements for filing a PPH request in Mexico vary with the other foreign offices (JPO, KIPO, OEPM and SIPO).

Design applications and utility models are excluded from the PPH. And the PPH option must be requested by the applicant before the Mexican application enters substantive examination. The PPH is an interesting option for foreign applicants seeking to protect their inventions in Mexico, who have granted applications in the United States, Japan, Korea, Spain or China, given the reduced timeframe.

Source Managing Intellectual Property Magazine, May 2013