Thought leadership from our experts

Patent development in Malaysia: MyIPO-JPO Patent Prosecution Highway (PPH)

Zaraihan Shaari, Shearn Delamore & Co, Malaysia Khoo Yee Mun, Shearn Delamore & Co, Malaysia

A. INTRODUCTION

With effect from October 1 2014, the Intellectual Property Corporation of Malaysia (MyIPO) and the Japanese Patent Office (JPO) have commenced the Patent Prosecution Highway (PPH) pilot program for a trial period of three years. This program is an initiative between MyIPO and the JPO with a view to providing accelerated examination procedures for patent applications. The underlying concept of the program is to share search and examination results between both patent offices upon which the examiners may rely during the prosecution process.

Via the PPH pilot program, the applicants may make a request for accelerated examination of a pending Malaysian patent application in the MyIPO accompied by the examination reports, search reports, certificates of grant or notice of allowance of the corresponding Japanese patent applications filed in the JPO. By doing so, the Malaysian examiners would have the opportunity to consider the favourable examination report issued by the JPO regarding the patentability of the claims of the corresponding Japanese patent applications and may, having duly considered the shared information, allow the Malaysian applications to proceed to grant, and vice versa.

For ease of reference, this article only covers the requirements for filing a request of PPH pilot program in MyIPO for pending Malaysian patent applications based on Japanese corresponding patent applications. Essentially, the requirements for filing such request in MyIPO and in the JPO are substantially the same.

B. REQUIREMENTS

Applicants who are interested in pursuing the PPH pilot program have to satisfy the following requirements:

(i) Both the Malaysian patent application for which an accelerated examination is requested via the PPH pilot program and the corresponding Japanese patent application forming the basis of the PPH request shall have the same earliest date (either priority date or filing date).

(ii) There are one or more claims in the corresponding Japanese application that are determined to be allowable or patentable by the JPO.

(iii) All claims in the Malaysian application, whether they are as originally filed or as amended, must sufficiently correspond to one or more of those claims of the corresponding Japanese application that are determined as allowable or patentable by the JPO.

(iv) That MyIPO has not begun examination of the pending application at the time of request for an accelerated examination under the PPH pilot program.

(v) A request for substantive examination in the ordinary route must have already been filed at the MyIPO before or at the time of request for an accelerated examination under the PPH pilot program.

In the event that PCT examination results are used as a basis for a PPH request, the applicant are also required to fulfill the following conditions:

(i) At least one or more claims in the PCT international application is determined to be patentable or allowable in the written opinion of the International Search Authority (ISA), written opinion of the International Preliminary Examination Authority (IPEA) or International Preliminary Examination Report (IPER).

(ii) All claims in the Malaysian national phase application, whether they are as originally filed or as amended, must sufficiently correspond to those claims in the PCT international application indicated to be allowable in the written opinion of the ISA, written opinion of the IPEA or IPER.

(iii) Examination of the Malaysian national phase application at the time of request for an accelerated examination under the PPH program has not begun.

C. DOCUMENTS TO BE SUBMITTED

The following documents are required to be submitted alongside the request for PPH made in the MyIPO:

(i) Copies of all office actions which were issued for the corresponding Japanese application by the JPO and its Bahasa Malaysia or English translation.

(ii) Copies of all the claims that are determined to be patentable or allowable by the JPO and its translation in Bahasa Malaysia or English.

(iii) Copies of references cited by the Japanese examiners.

(iv) Claim correspondence table indicating how the Malaysian applications correspond to the patentable or allowable claims in the corresponding Japanese applications.

Documents (i), (ii) and (iii) above are usually accessible via the Advanced Industrial Property Network (AIPN) of the JPO. Therefore, the applicants do not have to submit a copy of the same if the Malaysian examiners could obtain them via the AIPN. Otherwise, the Malaysian examiners would notify the applicants and request them to provide the requested documents to the patent office for prosecution purposes. Non-patent literature documents must always be submitted as they are not readily available on the AIPN.

D. CONCLUSION

Applicants are encouraged to pursue the PPH pilot program should there be a successful corresponding application in Japan. Although it is too early to gauge if the PPH pilot program receives good response from the Malaysian and Japanese patent applicants considering that it has only been in place for less than six months, the initiative is nonetheless a welcoming approach in expediting the prosecution process. As the name suggests, the PPH pilot program provides a 'highway' for the patent offices of both countries to have access to their respective search and examination results. One of the long term benefits would be that such sharing of information and prosecution results between both patent offices would result in higher quality of search and examination reports.