The Patent Prosecution Highway agreement between the USPTO and Mexico’s IMPI was set to expire this year, and the status of the program going forward was uncertain. But on January 28, the Offices announced a new, even more streamlined agreement.
For the past several years, the patent offices in the United States and Mexico have operated under a type of patent examination fast-tracking and work-sharing agreement known as a Patent Prosecution Highway (PPH). This agreement between the United States Patent and Trademark Office (USPTO) and the Mexican Institute of Industrial Property (IMPI) was set to expire in June of this year, and the status of the program going forward was uncertain.
But on January 28, the Offices announced a new agreement that promises to improve upon the PPH system by creating an even “more streamlined approach” to obtaining a Mexican patent once a corresponding U.S. patent is granted than that presently offered under the PPH.
PPHs have been one of the most important developments in the practice of multi-national patent prosecution over the last decade. These are multilateral cooperation arrangements or bilateral agreements entered by patent offices around the world with the goal of fast-tracking examination of presumably meritorious patent applications and avoiding work duplication. PPH programs allow a patent applicant to request expedited consideration in participating countries once the applicant has received a favorable patentability decision in another. By allowing the examiners in the offices of later examination to use the search results and analysis of the examiner from the earlier country, administrative efficiencies are created, and the applicant may be able to reduce the time and expense necessary to receive the global patent protection it seeks.
PPH programs have been useful in justifying the filing and prosecution of applications in countries where manufacturers may have otherwise been reluctant to expend the necessary resources to seek patent protection. The efficiency and predictability of a PPH request might alter such a client’s cost-benefit analysis to justify an application in a market that would otherwise have been deemed to be too small or in a jurisdiction where the difficulties of enforcing a patent are greater.
Over the past decade, statistics on the results of PPH requests reflect a bit of a mixed bag. Once PPH requests started to catch on among practitioners, the grant rates for applications eligible for the PPH program shot up in many countries to 90% or greater, including in some key jurisdictions like Canada, Australia, and Mexico. The average pendency time once a PPH request was filed also showed strong evidence that patent offices in these jurisdictions were truly placing these applications on the fast track to grant.
However, the statistics for many countries known for highly rigorous examinations showed only marginal improvements in grant rates and pendency times after the filing of a PPH request. Jurisdictions like the United States, Japan, Korea, and Germany appeared to still rely on independent prior art searching and a rigorous application of local patent regulations prior to allowance, even if the patent was granted in another country. While grant rates and pendency time statistics showed some improvement over cases not qualifying for the PPH in these few countries, such results may just be a function of the fact that applications qualifying for PPH were, actually, more likely to be patentable.
As a result, an allowance in a jurisdiction like the United States or Japan was more likely to be used as a jumping off point for PPH requests in other countries. Thus, for example, approximately 60 times more PPH requests are filed in Mexico based on a grant in the United States than the other way around. Indeed, the United States and Japan lead the world, by far, in being the most frequent so-called “office of earlier examination” for PPH requests, while Mexico’s IMPI is about 50 times more likely to receive a PPH request than to be the basis for a PPH request in another country globally.
Patent Prosecution Super-Highway on the Horizon?
This background returns us to the relationship between the USPTO and the IMPI. These patent offices have had a bilateral PPH agreement in place since 2011. As discussed above, the grant rates and pendency times in Mexico after receiving a U.S. patent have been favorable under the PPH. However, the PPH agreement between the offices was set to expire this year.
But the January 28 announcement by the USPTO and IMPI indicated that the Offices will enact a new work-sharing agreement that will improve upon the PPH. The specifics of this new program have not yet been announced, and, of course, only time will tell if it will have its intended effect. But when announcing the agreement, officials remarked that it represented the type of cooperation on intellectual property that is envisioned under the United States-Mexico-Canada Agreement (USMCA), which was approved by the Senate and signed into law by the President in late January, and promises to make North America the world’s most competitive and dynamic economic environment for business. Thus, the new patent agreement between the USPTO and the IMPI—which one might call the Patent Prosecution Super-Highway—represents a welcome step in the right direction to unifying the North American marketplace for innovative manufacturers.
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