New Accelerated Patent Grant (APG) Program Enhances Opportunities for U.S. Entities

On November 13 2023, the Mexican PTO (“IMPI”) released guidelines for the Accelerated Patent Grant (“APG”) Agreement. This is a patent work-sharing arrangement allowing qualifying USPTO patent holders the option of expediting prosecution for a corresponding Mexican patent application. The USPTO has been partners with Mexico through the Prosecution Highway (“PPH”) since 2010. PPHs are bilateral agreements among participating nations allowing qualifying patent applicants from one patent office to request expedited prosecution in a participating office. PPH programs have successfully reduced examination time and costs for clients by allowing examiners in later examining offices to utilize the search results from the earlier examiner. While the USPTO has a PPH partnership with IMPI, the APG Program is a new program giving USPTO applicants another opportunity to expedite a counterpart application in Mexico.

Information about the APG program’s eligibility criteria, application process, and fee structure is below and compared with the already familiar, PPH.

Criteria for Eligibility

Applicants are eligible for the APG program if their Mexican patent application sufficiently corresponds to a USPTO application. This means the Mexican patent application claims must have, or be amended to have, the same or narrower scope than those of the USPTO patent. An applicant cannot request for APG unless the corresponding USPTO patent has been published in the USPTO Patent Gazette and the IMPI patent application has been published in the Industrial Property Gazette. Additionally, an application for APG cannot be submitted until after the Mexican patent application has received observations from third parties.

There are fewer criteria for PPH eligibility. A USPTO application is eligible for PPH after receiving an indication that at least one claim is allowable. Similar to the APG program, claims submitted to later examining patent offices must have the same or narrower scope than those submitted to the earlier office. At the time of requesting PPH, substantive examination must not have begun on your USPTO application.

The key difference in eligibility for the APG program and PPH is the stage at which an applicant becomes eligible. APG bases eligibility on a granted USPTO patent whereas PPH bases eligibility on a positive examination result.

Application Process

To obtain an APG, the applicant must fill out a form with information about the Mexican patent application and the corresponding USPTO patent application. The application process will also require documentation of the corresponding USPTO patent number, a translation of the USPTO claims into Spanish, and a correspondence table comparing the USPTO claims to the Mexican application claims showing sufficient correspondence.

To apply for PPH, a qualifying applicant must submit a request form through the country of interest’s website. The request form will ask for information such as which participating office was the office of earlier examination and verification that both applications will have the same priority date. These requests are much simpler than required in a request for APG.

Fee Structure

The request for APG will be free. However, fees will incur if the applicant amends claims to satisfy the sufficient correspondence requirement. Fees for claim amendments are set in Article 13 of the Rate for the services provided by the IMPI.

By Matthew Dicke and Sydney Duncan