On November 13, 2023, the Mexican Institute of Industrial Property (Mexico’s patents authority, known as IMPI, its acronym in Spanish) published the implementing guidelines of a new collaborative procedure with the U.S. Patent and Trademark Office (USPTO) called the Accelerated Patent Grant (APG) initiative. The initiative was created to offer patent applicants the opportunity to obtain, through an expedited process, a patent in Mexico on the basis of a previously granted patent in the United States.

Under the APG framework, patent applicants that received a patent from the USPTO have the option to request that Mexico’s IMPI grant a corresponding Mexican patent without the need for a substantive and duplicative examination.

Some of the main requirements for the APG expedited process under the IMPI guidelines include:

1.  That the corresponding USPTO patent application has been determined to be patentable by the USPTO and the granted patent has been published in the USPTO Patent Gazette.

2.  That all the claims in the patent application filed before the IMPI are sufficiently corresponding, or are amended to be, with respect to the claims of the patent granted by the USPTO.

3.  That the patent application filed before the IMPI has covered [additional applicable formalities as provided by Mexico’s patent law].

With regard to point number 2 mentioned above, the claims are considered to be “sufficiently corresponding” when, considering the differences due to the translation or format of claims, the claims before the IMPI have the same scope as the claims of the patent granted by the USPTO, or the claims before the IMPI are narrower in scope than the claims granted by the USPTO.

In addition to the APG guidelines, Mexico’s IMPI has also published on its official website a user guide for interested parties.

This initiative complements other collaborative efforts between the USPTO and Mexico, such as the Parallel Patent Grant arrangement, through which the IMPI is allowed to use, ex officio, examination work previously done by the USPTO when issuing a counterpart Mexican patent in order to streamline its approval.

Prepared by Martina Perez Blanco, Law Library Intern, under the supervision of Gustavo Guerra Foreign Law Specialist, Law Library of Congress

March 13, 2024.

Read more Global Legal Monitor articles.

Content Source