Accelerating Patent Examination in Malaysia with ASPEC and PPH
A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.
Before a patent can be granted, patent examiners need to first examine each patent application thoroughly, which is without a doubt a tedious and time-consuming process that requires the examiner to comb through all available databases across multiple countries to determine the novelty of each patent application. In cases where an applicant is looking for a way to expedite the examination process without going through the normal expedited process and thereby incurring additional cost, he has the option of filing a request for an accelerated examination under the ASEAN Patent Examination Co-operation (ASPEC) or the Patent Prosecution Highway (PPH) programmes. These two programmes are available in Malaysia and are free of charge.
What is ASPEC?
ASPEC is the first regional patent work sharing programme established in 2009 with 9 participating ASEAN Member States (AMS) i.e. Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, the Philippines, Singapore, Thailand and Vietnam. This programme allows a participating AMS Intellectual Property Office (IPO) to utilize and make references to earlier search and examination reports issued by another AMS IPO in the course of conducting its own examination. The idea is to ease the burden of the examiners from having to conduct the search and examination from scratch when an examiner from another AMS IPO has conducted similar research on a corresponding application for the same invention and has issued a report on the same. The earlier search report is however only persuasive and other IPOs requesting the said report are not obligated to adopt such findings or conclusions. The purpose or objective of ASPEC is mainly to reduce research work and increase efficiency of the examiner in assessing, examining and granting corresponding patents in the respective AMS.
ASPEC can be requested at any time before the grant or refusal of any patent application in Malaysia, provided the search and examination report of a corresponding patent application in another participating AMS IPO is available for the examiner’s review. Even though the Malaysian patent examiners are not bound by the search and examination report of a corresponding patent, the examination process is most definitely accelerated with ASPEC and at no additional fee.
What is PPH?
The PPH, an initiative between the Intellectual Property Corporation of Malaysia (MyIPO) and the Japan Patent Office (JPO), is another work sharing programme that permits patent applicants to request for accelerated examination. The PPH pilot programme is currently only made available for requests based on corresponding Japanese or Patent Cooperation Treaty (PCT) applications which have received positive or favourable examination reports from the JPO. Based on the data and statistics provided by the JPO, the grant rate of the relevant patents (estimated 176 patents) under the PPH route between Malaysia and Japan is 100% as at June 2016.
Under the PPH route, a patent applicant may expect a turnaround time of only 3 months for the issuance of the examination report from the filing date of the PPH request. This represents a significant acceleration of the examination process.
As ASPEC and PPH do not involve any additional official fees, applicants for patent protection in Malaysia should seriously consider these options so as to benefit from the accelerated examination processes.