Accelerated Patent Grant (AGP) agreement between IMPI-USPTO as a new complement for optimizing patent prosecution in Mexico.
Mexican Institute of Industrial Property (IMPI) has been focusing efforts in reducing timeframe for patent prosecution in Mexico, considering available foreign work products, efforts, and analysis. Increasing the possibilities for applicants to accelerate patent prosecution time takes high relevance when considering the provision of Article 126 of Federal Law for Protection of Industrial Property (FLPIP), in-Force since November 2020, stating that, in the prosecution of a patent, if there are unreasonable delays, directly attributable to the Institute that result in a term of more than five years, between the filing date of the application in Mexico and the grant of the patent, a complementary certificate may be granted to adjust the term of the patent to extend the time of the validity of the Patent.
In this sense, it is highly relevant that from the available current data of the IMPI and World Intellectual Property Organization (WIPO) about 93% of all filed patent applications are filed by foreign applicants and companies, which produces MX applications co-existing with their sister parallel applications in foreign offices for a single invention of interest. Mexican Examiners tend to be influenced by some of these foreign results, mainly considering those issued by European Patent Office and the United States Patent and Trademark Office (USPTO).
Considering that USPTO handles nearly one-fifth (19.3%) of the global total filed patent application, while having the largest number of patents In-Force, about 3.3 million, efforts has been made for allowing Mexican applicants to take advantage of the development of parallel patent applications in the US.
Patent Prosecution Highway (PPH) program has been available in Mexico since 2011, now extended to June 30, 2027, allowing applicants to use a positive examination result as a basis to accelerate the corresponding examination in Mexico via the PPH Program IMPI-USPTO.
An additional possibility is readily available in Mexico, via the Accelerated Patent Grant (APG) agreement, signed on August 07, 2023, with the corresponding guidelines published on November 13, 2023. This new option provides eligible patent applicants the option of using an expedited process for obtaining a patent grant in Mexico based on a US granted patent. APG allows applicants, with a granted US patent, requesting IMPI to allow a parallel patent at any time during its processing, following the publication of the application. APG is now available for digital applications in the electronic IMPI digital portal in case an application is still in physical format the same must be converted to a digital application via direct request to the IMPI.
Contrary to the PPH provisions, a request based in the APG agreement could be filed even when the in-depth analysis has already started and could be filed for responding at most to the third in-depth official action, filing the corresponding amendments to mirror the subject matter as granted in the US Patent. Additionally, it is worth noting that the corresponding APG guidelines specify that the MX application must a) validly claim priority under the Paris Convention of the USPTO application; or b) have a priority in common with the corresponding USPTO application; while the in-Force PPH program examples only consider requests where the US application with a positive result is claimed as priority in the MX application.
Considering the current in-development practice for divisional applications in MX, it is worth noting that IMPI has noted that if the patent application submitted to the IMPI is a divisional application, the participation in the APG program will be suspended until the initial application has been definitively resolved. As in other options, if the request is not considered as valid, IMPI is able to deny the acceptance of the same, notifying the reasoning for denial and allowing the applicant to resubmit a new request. IMPI will not notify the applicant of the acceptance of the request, but an accelerated allowance/office action will be issued for the application.
In this regard, it is highly relevant to consider the differences in practice regarding treatment method claims, which are well accepted in US but not considered as patentable in Mexico in line with the provisions of Article 49, section IV, of the FLPIP. All subject matter referring to methods of surgical or therapeutic treatment of the human or animal body and the diagnostic methods applied to them, must be redrafted to an accepted medical use format, being the EPC-2000 format the preferred one, i.e., compound X for use in the treatment of Y, where Y is specific disorders or diseases for which the invention is useful.
Accordingly, APG is a new option for MX applicants to take advantage of the performed analysis of the USPTO for parallel application, complementing the available options provided by the commonly used PPH program.
The increase in possibilities to reduce patent timeframes is a positive sign for Mexican applicants to optimize patent prosecution and improve granting processes.
Bibliography
https://www.gob.mx/cms/uploads/attachment/file/870256/131023_User_Guide_APG.pdf
https://www.uspto.gov/about-us/news-updates/new-uspto-mexico-accelerated-patent-grant-arrangement-expands-opportunities#:~:text=Under%20the%20APG%20process%2C%20an,Industrial%20Property%20Gazette%2C%20subject%20to
https://www.wipo.int/edocs/statistics-country-profile/es/mx.pdf
https://www.wipo.int/pressroom/es/articles/2021/article_0011.html
https://www.uspto.gov/patents/basics/international-protection/patent-prosecution-highway/patent-prosecution-3
By: Luis Fernando Granados Castro