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Mexico: New Evaluation Procedure for Voluntary Amendments and PPH Requests

When the Patent Prosecution Highway (PPH) Pilot Program was signed with the United States Patent and Trademark Office (USPTO) on 2011, the main objective of the Mexican Institute of Industrial Property (IMPI) was to obtain as many requests from Applicants and, in retribution, allow their Mexican patent applications in a brief period of time.

Now that the PPH Program is a permanent procedure, all the PPH requests that used to be allowed on an average period of 20 working days, are being evaluated based on the IMPI´s workload and new timeframes and requirements have been recently applied.

On June of 2010 the Mexican Law of Industrial property (LIP) was amended in order to introduce a new article, 52 BIS, allowing third parties to file observations and any relevant information or documentation that could be useful for the Examiners during the substantive examination of said patent application, said observations period has a duration of six months counted from the publication of the patent application.

Until mid-2013, without any kind of notification, the IMPI started to delay the allowance of the applications, having a pending PPH requests, based on art. 52 BIS indicating that said 6-month observations period had to be over in order for the PPH request to be studied and, if applicable, to allow the patent application.

This criteria has been extended to all kind of Voluntary Amendments, leaving the chance to the Applicants only to perform amendments until the observations period is over, in order to ensure the documentation to be treated appropriately; otherwise, the amendments are docketed and are reviewed until it’s their turn; therefore, the opportunity given by the PPH for obtaining earlier allowance has been dramatically reduced.

Carmen Sánchez-Puelles