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Patent Prosecution Highway in Mexico

by José Ignacio de Santiago

There is good news for applicants in Mexico of patents claiming Paris Convention priority or PCT applications.  As of March 1st, 2011, the Mexican Patent and Trademark Office launched a pilot program whereby they Patent Department will accept as valid the examination carried by an Examiner of the United States Patent and Trademark Office (USPTO).

In general the Patent Prosecution Highway (PPH) is a mechanism whereby applicants are enabled to advance out of turn for examination in their local PTO, based on search and examination results from an office of first filing (OFF), always that at least one claim has been determined to be allowable/patentable.

This PPH program was first implemented between the USPTO with the Japan Patent Office, according to the accomplishment of certain rules, among which is the request to participate in the PPH program, it is not automatic.

The Mexican PPH pilot program is an attempt to accelerate the prosecution of pending applications and will help in attacking the backlog at the MPTO.  At this stage, the only examination that will be allowed is the one carried by the USPTO, but we foresee that this will become wider and reliable examinations from other offices will be allowed in the future.

In the same token, the USPTO will accept the examination carried by the Mexican examiners, when the OFF is the MPTO

Initially this pilot program will be available as of March 1st, 2011 until February 29, 2012, and could be extended for another year, if needed, to make evaluations and adjustments in a view to implement the same in a definitive basis.

It must be noted, that participation in this program although is not restrictive is not easy, as there are certain rules to participate, and of course the application should include claims that are allowable/patentable.

Source: Managing Intellectual Property Magazine, Apr 2011.