2/2024

Accelerated Patent Grant (APG) Program between MX and USPTO

The Mexican Institute of Industrial Property (IMPI) has implemented a new mechanism to expedite grant of patent applications based on the work products of the United States Patent and Trademark Office (USPTO): the Accelerated Patent Grant program (APG).

Through the APG, a Mexican application may proceed to allowance without a substantive examination based on a corresponding US application that has been granted. Thus, if examination has not started, the APG also implies that the application will be advanced out of turn for examination.

There are four basic eligibility requirements for participation in the APG:

• The Mexican application must claim priority to a US application or have one priority in common with a US application,
• the US application must have matured into an issued US patent,
• all the claims of the Mexican application must sufficiently correspond to those of the US patent, and
• the claims of the Mexican application must not contain matter excluded from patentability.

The procedure involves filing a request before the IMPI, within the period spanning from the lapse of the term for third-party observations (two months from publication of the Mexican application) to the deadline for responding to the third Office Action for substantive examination.

If the claims of the Mexican application are not already conformed to the US granted claims, a voluntary amendment must be filed before or concurrently with the APG request.

An APG request in a parent application will not extend to divisional applications, whereas an APG request in a divisional application will be suspended until the parent application receives a final resolution.