What to Expect When Filing a Patent in Mexico?

When an applicant decides whether to file a patent in Mexico with the Mexican Patent Office (MPTO), it is important to consider that often times a granted US application will go right on through without further objection from the Mexican Patent Office, however, unlike in Canada, there is no extended deadline to file the request for examination, so most likely the US version will have not been granted yet, fortunately, the examination can take up to over three years to begin and generally does not start within the first two years.

When to file an amendment for a patent in Mexico?

In Mexico, the original claims should be filed, prior to the amended set of claims which can be filed later upon the Examiner's first technical opinion.

What are the PPH (Patent Prosecution Highway) requirements for a patent in Mexico?

In Mexico, a request for PPH can be made 2 months after the publication.

In order to request the PPH the corresponding conditions should comply:

• Mexican Patent Application should claim priority from an application filed in any of PPH membered offices.

• Evidence of allowance or granting should exist in said priority application.

• Mexican claims should conform to the allowed subject matter and avoid claiming non-statuary subject matter in Mexico, i.e., therapeutic method, computer programs, and business methods should be excluded.

When to file a divisional patent in Mexico?

In Mexico the examiners usually adhere either to what the EPO says or what the USPTO says and, if there is an equivalent, they grant the same. In most cases, the examiner will ask to copy what was granted in the US or Europe, at which time a divisional can be filed for what is of interest.

Divisional applications are something that in Latin American countries are handled differently than in the USA or the EPO. They are designed exclusively to solve problems of lack of unity of invention pointed out by the office. The most appropriate way to proceed is to enter the complete text and additional pending claims, and the examiners are the ones who point out if it is required to make amendments or file divisional applications.