December 17, 2020

The US and Mexico implement new Parallel Patent Grant initiative

On December 7, 2020, the United States Patent and Trademark Office (USPTO) and the Mexican Institute of Industrial Property (IMPI) announced the implementation of their brand new Parallel Patent Grant initiative, otherwise known as the PPG. It takes the form of a worksharing agreement between the two offices, allowing applicants for a Mexican patent to expedite the granting process, provided the same patent has already been granted in the US.

The introduction of the PPG is a direct result of a Memorandum of Understanding on Technical and Strategic Collaboration signed by both offices respectively on January 28, 2020. Since the signing of the MoU, the USPTO and IMPI have tested the PPG on around 200 applications. The main provision of the PPG is the possibility for IMPI to leverage USPTO search and examination results when granting a counterpart Mexican patent. The corresponding Mexican and US applications must share the earliest date of priority. Additionally, the IMPI intends to conduct complementary examination of applications requesting PPG as to compliance with national laws. It is therefore hoped to encourage a sharing of resources to expedite the granting process with a more streamlined approach.

The USPTO and IMPI have been in collaboration for many years and in various forms, with the Patent Prosecution Highway (PPH) implemented in 2011, for instance. The PPG marks another step in the development and progression of the IP field in these jurisdictions. IMPI found that approximately 11,000 Mexican patent applications filed between 2015 and 2018 may benefit from the newly initiated PPG, allowing accelerated granting for those already deemed patentable in the US. The PPG also has the propensity to benefit US stakeholders with businesses or commercial interest in Mexico, allowing for a faster grant of their patents in Mexico.

The PPG is an example of just how vital cooperation between countries can be to developing innovation around the world. An estimated 399,055 patents were granted in the US within the 2020 fiscal year, whilst statistics show that requests for accelerated registration under the PPH are around 60 times more likely to be filed in Mexico based on a patent granted in the US than in other jurisdictions. This demonstrates the need for collaboration to bridge the gap in institutional resources between these countries.

The PPG and the ongoing cooperation between the US and Mexico indicates the advantages of an international collaborative approach to innovation. This year especially has shown that a global take on innovation is needed to progress the IP field, and in turn, international agreements such as the PPG can contribute to this goal.

Author: Danielle Carvey