The Mexican Institute of Industrial Property (IMPI) is considered to be one of the main patent offices in Latin America.
Taking into account the importance for applicants of patenting in Mexico and the global tendency of reducing prosecution times and costs, in recent years the IMPI has signed Patent Prosecution Highway (PPH) agreements with some of the most important patent offices worldwide, such as the US Patent and Trademark Office, Japan Patent Office, Korean Intellectual Property Office and China’s State Intellectual Property Office, among others, which are today fully functional.
Nevertheless, the European Patent Office (EPO), from which most of the trends and criteria are taken by the Mexican authorities, was still absent in the above list. However, the IMPI and the EPO have finally launched a joint PPH pilot programme; the trial period began on January 6, 2015 and will end on January 5, 2018.
The IMPI-EPO PPH programme allows an applicant to obtain corresponding patents exploiting the work previously done by the other office, so that it is possible to file PPH requests based on the latest Patent Cooperation Treaty (PCT) work product or national work product established by the EPO, where the said product concludes that one or more claims are patentable/allowable.
The above means that the “PCT work product” published by the EPO can serve as the basis for the PPH request, for example, when the written opinion or international preliminary examination report (IPER) carried out by the EPO acting as the international searching authority or international preliminary examining authority determines one or more claims as patentable/allowable.
"it is common that the IMPI uses the results of the substantive examination carried out by the EPO for evaluating the patentability of inventions in Mexico."
Likewise, a PPH request using the “national work product” resulting from the examination carried out by the EPO during the substantive examination of a European patent application can be used by applicants to request a PPH for Mexican applications which have the same earliest date (filing or priority date) with the corresponding European patent application, or for a Mexican national phase arising from a PCT application corresponding to the related European patent application.
- The general requirements to participate in the IMPI-EPO PPH pilot programme are the following:
- The European cases and Mexican cases are legally related in their earliest date (priority or filing date);
- The Mexican application is already published;
- The six-month period after the Mexican publication for third party submissions has ended;
- The substantive examination of the Mexican case has not begun; and
- All the Mexican claims sufficiently correspond to claims determined as patentable/allowable by the EPO.
It is not necessary to submit a copy of the EPO office actions or the claims determined by the EPO as patentable/allowable when said documents are available in English in the European patent register database, or, in the case of the PCT-PPH process, when the related documents such as the written opinion or IPER are available on the World Intellectual Property Organization webpage (Patentscope).
Patent references cited by the EPO are not necessary to be submitted to the IMPI unless they are not available to the Mexican examiner. Non-patent literature must always be submitted along with the PPH request. Translations of the cited references are unnecessary.
This agreement is a significant advance for applicants trying to protect their inventions in Mexico since patent applications from EU countries are the second most numerous among the applications filed in Mexico every year.
Likewise, as it was mentioned above, the Mexican law has many similarities with the European Patent Convention and today it is common that the IMPI uses the results of the substantive examination carried out by the EPO for evaluating the patentability of inventions in Mexico. Therefore, this agreement will provide a tool for Mexican examiners to reduce the burden of their work inside the IMPI and will help applicants to obtain Mexican patents more quickly.
Jorge Juárez is an associate at Becerril, Coca & Becerril. He can be contacted at: email@example.com
Jorge Juárez, Becerril, Coca & Becerril, European Patent Office, Mexican Institute of Industrial Property, Patent Prosecution Highway,