Updates to PPH programs with USA and Canada
With the aim of promoting innovation and its protection in the North American region, the Mexican Institute of Industrial Property (IMPI), the United States Patent and Trademark Office (USPTO) and the Canadian Intellectual Property Office (CIPO) have recently signed a Patent Prosecution Highway (PPH) Pilot Program.
The three PTOs, which already had PPH programs, seek to homogenize the application procedures in the three countries through the following specific measures:
- PPH Pilot Program between IMPI and USPTO
The existing PPH program between IMPI and USPTO will now also include the PPH-Mottainai and PCT-PPH modalities.
According to the PPH agreement between IMPI and USPTO in force since 2011, when the USPTO is the Office of First Filing (OFF) and the U.S. application contains claims that are determined to be allowable/patentable, the applicant may request accelerated examination at IMPI for the corresponding application filed with IMPI as the Office of Second Filing (OSF).
The PPH-Mottainaimodality, eliminates the OFF to OSF directional requirement of the PPH model. This flexible approach will enable the examination results of IMPI or USPTO to be used as the basis for a PPH request irrespective of which one was the office of first filing.
According to the PCT-PPH modality, an applicant may request accelerated examination based on a written opinion or examination report for a corresponding PCT application prepared by an International Search Authority that indicates at least one claim has novelty, inventive step, and industrial applicability.
The guideline for this updated PPH pilot program, which commenced on July 1, 2015, and will run for a period of one year, will be the one currently in force for the PPH Pilot Program between IMPI and CIPO.
- PPH Pilot Program between IMPI and CIPO
The PPH program already in force between IMPI and CIPO since January 6, 2014, will continue to be applied in the same conditions, since it already comprises the PPH-Mottainai and PCT-PPH modalities. Only its validity will be modified in order to match the Pilot Program. Therefore, it will be in force until June 30, 2015, instead of January 5, 2016 as initially signed.
The trial period of the PPH Pilot Program may be extended if necessary to adequately assess the feasibility of the updated PPH program.