ASPEC - An efficient patent prosecution strategy for South East Asia

The Association of Southeast Asian Nations (ASEAN) consists of 10 countries of vastly differing economic and social standing, namely Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, the Philippines, Singapore, Thailand and Vietnam. However, the ASEAN countries are united in that they share the common goal of accelerated growth in trade and investment. It is recognised that the protection of intellectual property rights will help achieve this goal.

To facilitate achievement of this goal, a work-sharing program - the ASEAN Patent Examination Cooperation (ASPEC) was implemented on 15 June 2009. Subsequently, a number of states, most notably Singapore, have also joined the Global Patent Prosecution Highway (GPPH).

Currently, the average pendency rate to a first office action after an ASPEC request is eight months, and 99.3% of the applications achieved allowance. This demonstrates the ASPEC program has been found to be highly successful in expediting prosecution and achieving allowance of ASEAN patent applications.

A recent improvement in the ASPEC process suggests that it is timely to review how ASPEC may be used to advantage.

ASEAN growth

According to ASEAN Key Figures 2020, the average annual GDP growth rate for the region for 2000-2019 was 5.7%. By comparison, the US in the same period grew at an average annual rate of 1.99%.

For the period 2010-2019, the average growth for patent filings for the six leading ASEAN states (Indonesia, Malaysia, the Philippines, Singapore, Thailand and Vietnam) was 155%.

This illustrates the extraordinary growth occurring in this region and the opportunity available to patent applicants.

ASEAN relationship with Australia

Australia has a free trade agreement with the ASEAN region which commenced in 2010. In addition, Australia engages with the ASEAN region through the East Asian Summit and the ASEAN Regional Forum. Australia is recognised as having a robust patent system built of globally recognised standards. Comparatively, more than double the number of patent applications were filed in Australia in 2019 as were in Singapore, which is the highest patent filing state in the ASEAN region. Australia is also a participant in the GPPH program.

Strategic use of GPPH/ASPEC

ASEAN patent applications through the ASPEC and/or GPPH programmes can streamline the prosecution of related patent applications in several, if not all, of the ASEAN countries. Understanding how to access these programmes will assist practitioners and attorneys to deliver high quality advice in an environment where Australia is proving a key gateway for international applicants seeking patent protection in the ASEAN region.

Our strategy consists of three steps, summarised below:

1. Request expedited examination in Australia.
2. Request accelerated examination in Singapore through the GPPH, and simultaneously request modified examination of the Malaysian application, based on the allowed Australian claims.
3. File ASPEC requests in Vietnam, the Philippines, Thailand, Laos, Indonesia, Brunei (and Malaysia) based on either the allowed claims of the Singapore application or the allowed claims of the Malaysian application.

Following these steps streamlines the prosecution of related patent applications in several, if not all, of the ASEAN countries.

Requesting expedited examination in Australia

Either concurrent with or subsequent to the filing of a patent application, usually achieved by entering the national phase of a PCT application in Australia, a request for expedited examination of the application is filed. IP Australia does not require any particular support in order to expedite examination.

Examination may also be expedited using the GPPH program. Under GPPH, if an applicant receives a ruling from a participating patent office that at least one claim in an application is allowable, the applicant may then request that another participating office expedite or accelerate examination of the corresponding claims in a corresponding application.

GPPH request in Singapore

Following allowance of the Australian application, a GPPH request is made so as to accelerate examination of the corresponding application in Singapore. Note that Singapore is the only member of the GPPH that is also a member of ASPEC. An application in Singapore therefore provides a gateway to expedited examination in the ASEAN region through the ASPEC program.

Modified examination in Malaysia

It may be preferred to request modified examination of the Malaysian application based on the granted Australian claims, separate to the ASPEC programme. Typically, requesting prosecution of the application via this pathway results in the most expedient examination with allowance of the application. For further information on Malaysia, please refer to How to Optimise Malaysian Patent Prosecution.

ASPEC request in Vietnam, the Philippines, Thailand, Laos, Indonesia, Brunei (and Malaysia)

Following allowance of the Singapore application, these allowed claims are used as the basis of an ASPEC request in the remaining ASEAN countries.

Detailed operation of ASPEC

ASPEC operates in the English language for all participating ASEAN Member States (AMS) IP Offices. This means all accompanying documents may be provided in English when making the ASPEC request, reducing what is often a significant barrier to seeking patent protection in multiple non-English language countries.

While an AMS IP Office is not obliged to adopt the findings or conclusions reached by the other AMS IP Office, the programme most significantly saves time in conducting original patentability searches. Then, based on any cited documents, the AMS IP Office will determine patentability in accordance with its own national laws, reducing unnecessary duplication of the searching process.

How to qualify for ASPEC

A request may be filed at any participating AMS IP Office. An applicant will qualify if it has:

1. filed a corresponding application for the same invention in any other participating AMS IP Office and the applications are linked by a Paris Convention priority claim, and
2. it has search and examination documents issued by any one of the other participating AMS IP Offices with at least one claim determined to be allowable/patentable.

In a recent improvement, from 15 June 2021 applicants can also use written opinion(s) established by participating AMS IP Offices (excluding Thailand).

A “corresponding application” is defined as:

• being linked by a Paris Convention priority claim to the patent application in the second IP Office, or vice-versa, or
• the patent applications in both the first and second IP Office have the same priority claim from another Paris Convention member country, or
• the patent applications in both the first and second IP Office are national phase entry applications from the same PCT application.

When to file an ASPEC request

ASPEC may be requested at any time before the final decision of grant or refusal of the pending application.

What to submit in an ASPEC request

You will need to submit an ASPEC request form accompanied by a copy of the search and examination documents of a corresponding patent application for the same invention issued by any of the other participating AMS IP Offices, and a copy of the claims referred to in the reports submitted. Although a copy of the cited documents is not required at the time of filing the ASPEC request, we recommend filing these to minimise prosecution delays. Citations may be provided in their original language.

An applicant must pay the filing and registration fees for the AMS IP Office in advance in order to prosecute the patent application. Thereafter, all ASPEC applications will be preferentially examined at the AMS IP Office where registration is sought. There is no additional cost associated with an ASPEC request.

Strategy for expediting prosecution in ASEAN countries based on PCT and Australian application

With the continuing economic growth of the ASEAN region, increasing numbers of applicants will be interested in seeking patent protection in these countries. Pleasingly, various work-sharing programs such as ASPEC and the GPPH have been implemented to facilitate the prosecution and expedite allowance of corresponding patent applications. Through an understanding of the intricacies of these programs, applicants can ensure they have access to reduced time and costs for related patent applications in multiple ASEAN countries.

For this reason, FB Rice offers the service of a South East Asian hub to streamline the patent process by using the ASPEC and GPPH programs for the benefits of our clients looking to file in the ASEAN region.