Malaysia’s Patent Prosecution Highway (PPH) Initiative Extends to Europe and China

by Pua Siau Kee

 

Further to its collaboration with the Japan Patent Office, the Intellectual Property Corporation of Malaysia (MyIPO) has launched the Patent Prosecution Highway (PPH) program with the European Patent Office (EPO) effective 1 July 2017. The program with the EPO will run for a trial period of three years until 30 June 2020. This will enable applicants from Europe and Malaysia to obtain patents more quickly and efficiently through an accelerated examination process, thereby boosting business and innovation in both regions.

MyIPO has also joined efforts with the State Intellectual Property Office of China (SIPO) to participate in the PPH scheme. The pilot period for this program is two years and will run from 1 July 2018 to 30 June 2020. This will be followed by an evaluation to determine whether the program is sustainable based on whether the respective IP offices receive sufficient volume of requests and whether such requests are manageable.

The PPH is a work sharing initiative between some patent offices that allows an applicant to request for accelerated examination if it has a corresponding patent application in a participating country whereby the claims have been determined as patentable by the First Patent Office (i.e. the Office of Earlier Examination). If so, the corresponding application will be used as a basis for expediting the patent application at the Second Patent Office (i.e. the Office of Later Examination). This will allow partner patent offices to share their existing search and examination results to promote quicker and more efficient patent examination since existing findings can be used as references to reduce work time and shorten the examination process.

Some of the general requirements to be able to utilise PPH are:

  • The Second Patent Office application is related to the First Patent Office application e.g. both applications originate from the same PCT application or have a common priority claim;
  • The examination of the Second Patent Office application has not begun at the time the PPH request is made;
  • A request for Substantive Examination must have been filed at the Second Patent Office either at or prior to the time the PPH request is made.
  • The First Patent Office application has at least one claim that was indicated as allowable/patentable by the First Patent Office;
  • The claims of the Second Patent Office application sufficiently correspond to the allowable/patentable claims in the First Patent Office application; and
  • The request for PPH has to be accompanied with copies of examination documents from the First Patent Office application. Translations may be required if the documents are not in the language used by the Second Patent Office.

As the PPH scheme does not involve any additional official fees, patent applicants in Malaysia are advised to consider this option to benefit from the accelerated examination process if they have corresponding applications in Japan, Europe or China which have been allowed or determined as patentable.