Introduction to Mexico's Accelerated Examination Procedure

Currently, in Mexico's patent examination mechanism, applicants can use the following mechanisms to request accelerated examination to speed up the patent examination process so as to obtain patent authorization faster.

1. PPH

• The Mexican Intellectual Property Office (IMPI) signed its first PPH agreement with the United States Patent and Trademark Office (USPTO) in March 2011. As Mexico's main trading partner, approximately 45% of patent applications filed in Mexico in 2023 came from U.S. applicants. Applicants can use the positive examination results obtained at the USPTO to speed up the examination of Mexican patent applications.
• The review highway currently proposed in Mexico can be divided into the following PPH methods:
  • Allow applicants to use the examination results of the first application to file a request for accelerated examination at the subsequent examination office;
  • PPH Mottainai: Allows applicants to use the examination results of the first examining office to request accelerated examination at the later examining office, regardless of which office filed the first application;
  • PCT-PPH: allows applicants who have achieved a favourable outcome in the international phase of a PCT application to request expedited examination of the corresponding application at a subsequent examining office.
• So far, the national offices that have signed PPH bilateral agreements with IMPI include:
  • Pacific Alliance (Colombia, Chile and Peru)
  • Austrian Patent Office APO
  • Canadian Patent Office (CIPO)
  • China Patent Office (CNIPA)
  • Korean Patent Office KIPO
  • Spanish Patent Office OEPM
  • United States Patent and Trademark Office (USPTO)
  • French Industrial Property Institute INPI
  • Japan Patent Office (JPO)
  • European Patent Office (EPO)
  • IPOS
• In practice, IMPI's standards are usually consistent with those of the USPTO or EPO, so in most cases a Notice of Allowance is issued. This is in stark contrast to PPH requests based on patent grants made by other patent offices that have signed PPH agreements, where substantive patent examination opinions requesting further clarification are often received before a Notice of Allowance is issued.
• Conditions for participating in PPH
  • Generally speaking, to apply for a Mexican patent application to participate in the PPH agreement, the following conditions must be met:
  • The Mexican patent application must have been published, the two-month period for third-party oppositions must have expired, and substantive examination at the IMPI must not have begun.
  • The claims of the Mexican application must sufficiently correspond to the claims that the prior examining office has deemed patentable. It is possible to file a voluntary amendment at the same time as the PPH request to make the claims correspond to the patentable claims. This opportunity can also be used to amend any other part of the patent application.
  • Under the premise of sufficient correspondence, it is important to note that US patent applications often contain claims for non-patentable subject matter under Mexican patent law, such as methods of treatment or software algorithms. For software claims, they must be amended to eliminate any reference to software, computer programs, executable instructions, or applications. For methods of treatment, they should be rewritten in the format of a limited product statement or a Swiss-type statement. Otherwise, IMPI will issue a substantive examination opinion to refuse authorization.
  • Even if certain subject matter is deemed patentable in foreign patent examinations, IMPI will still analyze whether it meets the patentability requirements under Mexican law. In other words, the PPH procedure does not guarantee that a patent will be granted 100%.
  • In practice, approximately 80% of Mexican patent applications receive an examination action within three months of filing a PPH request.
• Advantages and Disadvantages of PPH
  • The PPH has significant benefits for both applicants and patent offices. For applicants, the main benefits are faster processing times and reduced examination costs. This accelerated process is critical for businesses that need timely protection to remain competitive in a rapidly changing market. For patent offices, the PPH can help manage workload by leveraging examination work already completed by other offices, promoting cooperation and consistency in patent examination.
  • However, not all patent applications can meet the conditions of PPH. For example, PPH requests are not applicable to utility models or designs. Coordination between different patent offices may require additional time and cost. Even under standardized processes, there may be inconsistencies in the determination of patentability standards by different patent offices.

2. PPG

• The PPG program aims to strengthen technical and strategic cooperation between IMPI and the USPTO or EPO, which can accelerate the patent grant process in Mexico by reusing the search and examination results of these institutions. The agreement between IMPI and the USPTO came into effect on January 28, 2020, and the agreement between IMPI and the EPO came into effect on November 15, 2019.
• PPG applies to Mexican patent applications that claim priority from US or European applications. PPG applicants do not need to submit a PPG request. Instead, participation in the program is an invitation from IMPI. When it is identified during the substantive examination that a patent application related to the Mexican application has been granted or has received a notice of grant, IMPI will issue a substantive examination opinion, requiring the patent applicant to amend the claims in accordance with the content authorized by the USPTO or EPO.
• If the applicant agrees to participate in the project, they must amend the pending claims to make them consistent with the claims approved by the USPTO or EPO. Once the examination response is submitted, IMPI will issue a grant notice in about three months. If the patentability requirements stipulated in Mexican law are not met, IMPI will issue a substantive examination opinion with a rejection opinion, and the application will proceed according to normal procedures.
• If IMPI does not invite the patent applicant to participate in the PPG program through a substantive examination opinion, the applicant can participate in the PPG program by submitting a proactive amendment to make the claims completely correspond to the claims approved by the USPTO or EPO. The proactive amendment must be made at any examination stage before the issuance of the grant notice.

3. APG

• The APG program aims to accelerate the patent granting process in Mexico through cooperation between IMPI and the USPTO, relying on the examination results of the USPTO.
• Patent applicants filing an APG request must meet the following requirements:
  • Claiming priority under the Paris Convention for a U.S. patent application, or having common priority with a corresponding U.S. patent application;
  • The corresponding U.S. patent must have been published in the USPTO Patent Gazette;
  • Ensure that all claims in the Mexican patent application are consistent with the claims in the issued U.S. patent, or amend them accordingly;
  • The APG request was filed and published in the IMPI Industrial Property Bulletin, and the two-month period for third-party public comments has expired;
  • The deadline for participating in the program is within the deadline for responding to the final third substantive examination opinion;
  • The patent applicant must respond to the examination opinion and must submit an APG request independently;
  • Utility model and industrial design applications, as well as patent applications containing non-patent subject matter, are not eligible for participation in the APG program;
  • Once the AGP request for the parent patent application is accepted, the divisional application will not automatically enter the AGP procedure. There is no limit to the number of times you can participate in the APG program, and you can submit an APG request even if substantive examination has already begun.
  • According to information provided by IMPI, since the implementation of the APG on November 13, 2023, very few patent applications have been submitted to participate in the program.

When seeking accelerated examination of divisional applications under the PPH, PPG, and APG programs, there are some additional considerations to be aware of. First, divisional applications are not automatically included in the accelerated process; the applicant must file a separate application or receive an invitation from IMPI to participate in a divisional application and meet all established conditions. For APG requests, if the patent application is a divisional application, the APG process will be suspended until the parent application receives a final examination result. This limitation is unique to the APG.

In terms of reciprocity, the PPH program allows participating patent offices to use different examination results from each other. This means that IMPI can rely on the examination results of foreign offices and vice versa. In contrast, the PPG and APG programs do not have this benefit. Although PPG and APG rely on the search and examination results of the USPTO and EPO, there is no agreement to allow foreign patent offices to use the examination results of IMPI.