Accelerating patent prosecution in Southeast Asia

The ASEAN market is becoming increasingly important and securing early patent protection for their inventions is vital for businesses to thrive. Set out below are some solutions to accelerate patent examination in the ASEAN region.

BY DENISE MIRANDAH & SHAWN ANG CHUAN HENG mirandah

Patent Prosecution Highway

The Patent Prosecution Highway (‘PPH’) is commonly used to accelerate patent examination globally through work-sharing arrangement between participating IP offices. This allows applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing. ASEAN countries have established a number of bilateral agreements with other IP offices as illustrated below.

• Indonesia (Japan)

• Malaysia (China, European Patent Office (‘EPO’), Japan, Korea) Philippines (EPO, Japan; Korea; United States)

• Singapore (Brazil, China, Mexico, EPO)

• Thailand (Japan)

• Vietnam (Japan, Korea)

Apart from bilateral PPH programmes, the IP offices of Philippines, Singapore and Vietnam are also participating in the Global Patent Prosecution Highway (‘GPPH’) programme, which has 27 participating IP offices.

ASEAN Patent Examination Co-operation

The ASEAN Patent Examination Co-operation (‘ASPEC’) is a regional patent cooperation project launched in June 2009. It is a programme for IP offices from participating ASEAN countries to utilise the search and examination results from another participating IP office when conducting their own examination. Apart from Myanmar and Timor-Leste, the other nine ASEAN IP offices (Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Singapore, Thailand, and Vietnam) are participating in the ASPEC programme. Under ASPEC, the timescale for examination is expected to be shortened since examiners can leverage on earlier works from their counterparts in the other participating patent offices.

An enhancement to the ASPEC programme is ‘ASPEC AIM’ (ASPEC Acceleration for Industry 4.0 Infrastructure and Manufacturing) that targets industry 4.0 patent applications. Under this ASPEC AIM, the participating IP offices are committed to issue a first office action within six months from the filing of the request. This programme is limited to 50 applications a year and is scheduled to expire on 26 August 2023.

Another enhancement to the ASPEC programme is ‘PCTASPEC’ (Patents Cooperation Treaty-ASPEC) where reports issued from an ASEAN International Searching Authority (‘ISA’) or an International Preliminary Examination Authority (‘IPEA’) can be used when requesting ASPEC in a participating IP office. At the moment, only the International Property Office of Singapore (‘IPOS’) and the Intellectual Property Office of the Philippines (‘IPOPHL’) are appointed as ISA and IPEA. Recently, this programme has been extended until 26 August 2025 and is limited to 100 applications per year.

National programme

In addition to the above international and regional programmes, some ASEAN IP offices offer local initiatives for expediting the patent examination process.

The IP system in Brunei has a self-assessment system where patent applications can be granted by relying on the examination report of a qualifying corresponding application. The claims of the local application are expected to match those of the elected corresponding application. The local applications are subjected to formality examination only and will be granted as long as the claims do not fall within the scope of non-patentable subject matter.

In Cambodia, patent applications can be granted via re-registration of corresponding patents issued by the EPO and IPOS. Any application must fulfil the formality requirements of the Cambodian IP Office.

In Laos, patent applications can be granted via re-registration of corresponding patents issued by IPOS. Any application must fulfil the formality requirements of the Laotian IP Office.

Malaysian IP law allows modified substantive examination wherein the examination results of a qualifying corresponding patent are considered when examining the local application. The claims of the Malaysia application have to be amended to match those of the elected patent. Under this option, the local applications are examined for novelty and statutory requirements on non-patentable subject matter only.

In Singapore, IPOS runs an SG IP FAST programme whereby straightforward patent applications can be granted in as little as six months, and within nine months for more complex cases. Patent applicants are expected to adhere to certain timelines as stipulated by IPOS with regard to office actions. This SG IP FAST programme replaces the 12MG (12 months file-to-grant) programme and has recently been extended to 30 April 2024. There is a cap of ten applications per month and not more than two requests per applicant per month.

In Indonesia, Philippines, Thailand and Vietnam, there are no official domestic programmes for expediting patent examination. However, the examiners will usually consider favourable examination reports of corresponding patents from a major jurisdictions if the claims of the local applications are amended to conform to the corresponding patent.

For ASEAN businesses and those with an interest in this region, it is advisable to consider the above programmes when planning any IP strategy. For instance, an applicant could leverage the SG IP FAST programme offered by IPOS to secure an early verdict of a patent application before further action. Other international businesses outside of the ASEAN region could also leverage the PPH programme to secure an early grant of a patent application in participating ASEAN IP offices and thereafter, request ASPEC for a patent application in other ASEAN IP offices.