New Parallel Patent Grant (PPG) Agreement between the USPTO and the Mexican Patent Office (IMPI).
January 20, 2021
Andrei Iancu (Director of the USPTO) and Juan Lozano (Director of IMPI) have officially announced the launch of a new agreement between these two offices. This new PPG agreement contemplates the possibility of obtaining an expedited grant in Mexico based on a published US patent.
The idea is to expedite the issuance of Mexican applications that already have an issued US counterpart and in this way, reduce the backlog which is currently between 3 to 5 years between the filing date in Mexico to grant.
There are other tools that have proved effective such as the PPH agreement between the USPTO and IMPI. However, the PPH has the limitation of needing to be requested by the applicant before the issuance of a first office action, whereas invitation to participate in the PPG is sent by IMPI to the applicant. In case the applicant agrees, he answers that he will pledge to claim the same matter that issued in the corresponding US patent. On the other hand, the director of IMPI has left open the possibility of having the applicant request participation in said PPG program. The specific mechanisms on how IMPI or the applicant would request participation in the PPG program are yet to be determined.
Needless to say that in case non-patentable subject matter is detected in the claims that issued in the US, they should have to be redrafted in a format that is acceptable by IMPI, or otherwise eliminated.
Lastly, it is important to clarify that in the practice, Mexican Examiner’s already request applicants to adapt the claims of the Mexican application to those that issued in the corresponding US patent. This agreement would formalize this practice and guarantee an expedited issuance (around 2 months) if the applicant decides to participate in this PPG program.
The patent team at OLIVARES will keep you informed on any new developments on this PPG agreement.
This newsletter is intended only as a general discussion of the addressed issues, and should not be regarded as legal advice.
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