Accelerating your Patent Prosecution in Mexico

In the last few years, prosecution of patent applications all over the world has been benefitted by an accelerating mechanism which minimizes efforts and helps worldwide patent prosecution.

In our country, the Mexican Patent Office (IMPI) initially signed Patent Prosecution Highway (PPH) programs with: USPTO Spanish Patent and Trademark Office (OEPM) Japan Patent Office (JPO) Korean Intellectual Property Office (KIPO) State Intellectual Property Office of the People's Republic of China (SIPO) Canadian Intellectual Property Office (CIPO) Intellectual Property Office of Singapore (IPOS) Portuguese National Institute of Industrial Property (INPI) European Patent Office (EPO)

Most recently, the Pacific Alliance strengthened relationships between Patent Offices from Colombia, Chile, Peru and Mexico, giving as a result the respective PPH programs between said Latin America countries.

Mexico is part of an international PPH cooperation with some Asian countries like China, Japan, Korea and Singapore, and as stated before, our country has also a respective PPH cooperation with the corresponding APEC (Asia-Pacific Economic Cooperation) countries in Latin America, that is, a PPH cooperation with Chile and Peru, due to the above-mentioned Pacific Alliance.

Talking about requirements, formal and material requirements are very similar in all PPH programs. The basics are: At least one claim must be found to be allowable by patent office A. A PPH request can be filed with patent office B requesting allowance of this claim also by patent office B for the corresponding patent family member. The allowable claim or claims, and the corresponding office actions, must be filed with the PPH request. The cited prior art must be provided. The respective claims correspondence table must be filed, clearly demonstrating the correspondence between the claims found allowable by patent office A and the claims that are to be allowed by patent office B. Patent office B must not yet have issued a first office action in connection with an in-depth examination.

Now, talking about Mexican Patent Applications… Now, talking about Mexican Patent Applications…. Publication of a Mexican application takes place about 18 months either after filing the corresponding application in our country, or from the filing date of the claimed priority

According to Mexican Practice, publication can take place around 8 months after filing the National Phase application at the Mexican Patent Office (IMPI) Even though a PPH request can be filed prior to publication of the Mexican application, a good option for filing the PPH request is once the application has been published, that is, once formalities have been completed.

At this point, it is worth noting that in Mexico, a PPH request can be filed anytime before the corresponding in-depth examination starts Accordingly, if a patent or a Notice of Allowance has been obtained in any of the involved PPH Legislations, or if an Office Action has been issued stating that at least one claim is patentable in the corresponding foreign country, PPH may be requested at the Mexican Patent Office (IMPI), provided that in- depth examination has not started for the Mexican Patent Application

According to Mexican Practice, IMPI needs to prove that there is a relation between the Mexican application and the granted foreign patent For said goal, in the PPH request the Mexican attorney needs to clearly indicate the relationship between the Mexican application and the foreign patent.

-Following PPH programs goals, patentable claims must be "sufficiently corresponding“ -Claims must be amended to contain the same technical features which are novel and inventive over the prior art -Mexican attorney needs to provide IMPI with a claim relationship table, wherein each filed claim needs to be correlated with a claim that was previously filed -Finally, and if the request does not comply with all the requirements, IMPI provides only a second opportunity to re-file the PPH request.

Tips when filing a PPH request in Mexico Tips when filing a PPH request in Mexico... -Frequently, the best option to obtain a patent is by letting allowable subject matter grant, and filing a divisional application to pursue a broader scope or non-pursued subject matter -Then, if a PPH request is filed in Mexico and granted please bear in mind that a divisional application may be filed for the non-prosecuted subject matter -According to Mexican Practice a divisional application can be filed prior to paying the corresponding granting fees of the respective parent case.

Additional tip, Mexico has several non-inventions, among them: -Methods for carrying out mental processes -Playing games or doing business -Computer programs -Methods of surgical, therapeutic or diagnostic treatment applicable to the human body and to animals In this situation, amend these claims, or request the Mexican attorney to amend these claims into an allowable format.

•“… selected from the group consisting of…” Allowable Subject Matter: Markush claims •“… selected from the group consisting of…” • The group is usually related but cannot be defined in one term –Avoids the need for multiple independent claims “… an alkali metal selected from the group consisting of lithium, sodium, and potassium.”

Thank you for your kind attention Dr Thank you for your kind attention Dr. Manuel Lopez Robles mlopez@uhthoff.com.mx