Patent Prosecution Highway with USPTO

On February 22nd, 2011, the Mexican Industrial Property Institute (IMPI) announced the establishment of the first Pilot Program for the Patent Prosecution Highway (PPH) with the United States Patent and Trademark Office (USPTO), aiming to expedite and streamline the patent system in Mexico.

The Patent Prosecution Highway (PPH) enables an application whose claims have been determined to be patentable in the Office of First Presentation (OPP) may undergo an expedited review in the Office of Second Filing (OSP) with a simple procedure at the request of the applicant.

As such, each of the Offices win benefits from previous work, avoiding duplication of efforts and speeding the procedure for granting patents, resulting in a reduction in the examination workload and an improvement in quality of patents.

This Pilot Program which became operational on March 12, 2011, provided an expiration date on February 29, 2012. The program was then extended and the current expiration date is August 31, 2012.

In order to enter the PPH program, the original priority application should have already been granted or allowed. A copy of the claims as granted must be submitted, as well as copies of all relevant office actions issued relating to the patentability of the application. A claims correspondence table, showing the relationship between the granted claims and the claims submitted in the Mexican application must also be submitted.

Please note that the request must be submitted before the in-depth examination at the Mexican Patent Office begins. Therefore, once the notification has been received indicating that the application has passed the formal examination phase, the request to enter the PPH should be submitted.

Please contact us if you are an applicant or you represent an applicant that is interested in proceeding with the PPH program in any patent application filed in Mexico, so that we may provide further information.