Through the PPH procedures, the assistance and study of a patent application that had been previously filed in one of the countries in which a cooperation agreement had been signed may be hastened.

The objective, is to eliminate the unnecessary duplication of work that exists among the different patent offices, increasing the speed, the quality and the efficiency in the doing the substantive examination of patents, through the homogenization of the granted rights, the users of the patent system of both countries obtain a benefit in virtue that both offices commit themselves to speed up the study of the application, advancing the order of attention of a PPH application to the rest of the applications that had been previously filed or at the same time that the application is being processed under the PPH program.

The processing of an application regarding a PPH program, consists on the fact that at the moment in which the owner of a Patent application that had been filed originally before the Patent office of one of the signed countries, entitled for a better understanding as "OFFICE OF FIRST FILING" OR "OFFICE OF PREVIOUS EXAMINATION" (from this point forward OFF)  obtains the notice of allowance of the patent, of at least one of the claims included in the application, can go to the office of the other contractor country, entitled as "OFFICE OF SECOND FILING" OR OFFICE OF "SUBSEQUENT EXAMINATION" (from this point forward OSF) to apply for the allowance of the same right that has been granted by OFF.

In this way PPH allows to the applicants of the involved countries to obtain corresponding patents in both countries, this implies the benefit of reducing the processing expenses at the OSF, because there is no need to respond substantive requirements regarding the mistakes or objections that had been offset in the processing before the OFF.

Minimal requirements for the process of a patent application under cover of a PPH program

  • That all the claims requested in the application filed before the OSF correspond sufficiently with the claims that had been granted by the OFF. 
  • That the substantive examination has not begun in the OSF and that no official act regarding it has been issued, in order to request that the processing of the application be carried out under PPH.
  • If any demanded claim at the OSF differs for being modified from the one granted by the OFF, the OSF must consider if it corresponds sufficiently with the granted by the OFF, otherwise, such claim may not be granted by the OSF.
  • The application of PPH may be requested to applications that were filed under the Paris Convention, as well as to the ones filed under the Patent Cooperation Treaty.
  • It is needed to submit a grid of connection of the claims, which must indicate in which way all the claims of the application filed before the OSF correspond to the granted by the OFF.
  • The applicant must submit before the OSP copy of all the official actions issued during the process made before the OFF.

PPH results highly effective and attractive for those industries of fast evolution, in which the promptness in the grant of the patent has a direct effect in business advantages, specially used in the mechanical areas, in network and communication areas and in a lower scale, but frequently used in areas such as the pharmaceutical and biotechnology.

In conclusion, we can affirm that PPH programs are useful to improve the examination procedures of each office, benefiting companies that work in both regions.

To the extent that the world becomes more globalized, speeding up the obtaining of patents, without a doubt, increases the business opportunities and market access.

Mexico has 11 PPH agreements signed and current with the patent offices of the following countries:

MEXICO

UNITED STATES OF AMERICA

MEXICO

JAPAN

MEXICO

SPAIN

MEXICO

KOREA

MEXICO

SINGAPOUR

MEXICO

CHINA

MEXICO

CANADA

MEXICO

PORTUGAL

MEXICO

EUROPEAN PATENT OFFICE

MEXICO

PACIFIC ALLIANCE (COLOMBIA, CHILE AND PERU)

MEXICO

AUSTRIA

Since 2011 (year in which the first agreement with the USPTO was signed) by 2016, the Mexican patent office has received 1188 PPH applications, of which 785 have already been granted.

Clarke, Modet & Co - MEXICO

Ciudad de México, D.F. Av. Insurgentes Sur 1647, Piso 15, Of. 1502, Col. San José Insurgentes, 03900
Tel: +52 55 5340 2300
Email: info@clarkemodet.com.mx

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.