New Accelerated Patent Granting Agreement between the USPTO and the IMPI

Recently, the United States Patent and Trademark Office (USPTO) and the Mexican Institute of Industrial Property (IMPI) announced the implementation of a collaborative initiative aimed at facilitating the expedited grant of Mexican patents to holders of U.S. patents.

This initiative allows a patent applicant who has been granted a U.S. patent the option to choose expedited granting of a patent for a Mexican patent application at any point during its processing by the IMPI.

Guidelines to be followed

The Accelerated Granting Program (APG) encompasses a set of basic requirements for requesting expedited granting, which are as follows:

1. Having a corresponding application in the USPTO that has been granted.
2. Applying only to patent applications granted by the USPTO.
3. Being eligible for request even if the technical examination has already started at the IMPI.
4. Amending and aligning the claims with those granted by the USPTO.
5. Providing the patent number granted by the USPTO, which has been published in the official gazette, a translation of the claims into Spanish, and a comparative table of correspondence between claims.

Requirements for accelerated grants

Additionally, there are guidelines to be considered for the APG program, including:

a) The application must claim priority from a USPTO application or share common priority with a USPTO application (in the case of a national phase of the PCT).

b) The corresponding U.S. patent application must have been determined as patentable by the USPTO, and the granted patent must have been published in the USPTO Patent Gazette.

c) The Mexican application filed with the IMPI must be published in the gazette, having complied with the established legal formalities.

d) Claims must be “sufficiently corresponding”, meaning that claims at the IMPI must have the same scope as the claims of the patent granted by the USPTO, or they can have a narrower scope.

e) In case amendments to the claims at the IMPI are necessary, government fees must be paid.

f) The APG procedure can be requested within two months from the date provided for the corresponding technical examination. This includes an additional two-month period according to the same legal provisions to respond, at most, to the third set of requirements resulting from the substantive examination.

g) For divisional applications, the processing and participation in the accelerated granting program will be suspended until the processing of the initial application is definitively resolved.

h) The applicant will be notified if the request for the Accelerated Granting Program (APG) is not accepted, and the defects/deficiencies in the request will be identified.

i) The applicant has the opportunity to reapply for the APG procedure within the established timeframe in item f).

j) The IMPI will not issue any notification to the applicant regarding the acceptance of the APG program; however, knowledge of the acceptance or rejection will be determined through the issuance of the corresponding Technical Action as a result of the substantive Examination.

k) Utility model and industrial design applications, as well as patent applications containing claims with non-patentable subject matter, are not eligible for participation in the APG program.

l) The acceptance of a participation request in an initial patent application will not transfer to a divisional application. Therefore, the applicant must submit a new request for the APG program for the divisional application.