Divisional Applications and the Patent Prosecution Highway Program between U.S. and Mexico

The Patent Prosecution Highway (PPH) Program between the Mexican Institute of Industrial Property (IMPI) and the United States Patent and Trademark Office (USPTO) was established as a permanent program on September 1, 2012. The object of this program is to accelerate the granting of Mexican applications that have a granted U.S. counterpart, having a common claim of priority, when both the Mexican and U.S. national phase applications derive from the same PCT application.

It is important to note that in order to request PPH examination in Mexico, the following issues should be considered:

  • The Mexican application must be published in IMPI’s gazette.
  • The request for PPH examination must be filed before the start of substantive examination.
  • At least one of the claims granted in the U.S. counterpart must be included in the Mexican application.
  • The PPH request must include a comparative table between the claims granted in the U.S. application and the claims pending in the Mexican application.

There is a practice in the Mexican Patent Office in which it is possible to request PPH examination for a parent application and, at the same time, request PPH examination for one or more divisional applications. In order for this to happen, the USPTO must have identified patentable matter in the claims of both the parent and the divisional application. In other words, in a single day, an applicant may file a PPH request for the parent case, a Mexican divisional(s) application(s) and a PPH request for the divisional(s) application(s). The reason this is possible is because divisional applications are not published in IMPI’s gazette until granted.

It is important to note that the above information is not contained in the guidelines for requesting participation in the PPH program at IMPI. This information has been generated according to Olivares’ experience in filing requests for PPH examination between USPTO and IMPI.

Requests for PPH examination are an attractive option for U.S. applicants because it is possible to obtain a Notice of Allowance for a corresponding Mexican application approximately 2 to 3 months after the PPH request is filed.

This post was written by Lisa Mueller, Mauricio Samano and Jose Luis Salgado of Olivares.