Patent prosecution strategy in the ASEAN region: Understanding the ASPEC and GPPH programmes

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.

We discuss herein our three main recommendations for filing multiple applications in the ASEAN region:

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; and
3. file ASPEC requests in Vietnam, the Philippines, Thailand, Lao PDR, Indonesia, Brunei Darussalam, (and Malaysia), based on the allowed claims of Singapore application.

The Association of Southeast Asian Nations (ASEAN) consists of 10 countries of vastly differing economic and social standing, namely Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Myanmar, 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, and it is recognised that the protection of intellectual property rights will help achieve this goal.

As a consequence, several work-sharing programmes exist to expedite the prosecution of a patent application through to grant – primarily the Global Patent Prosecution Highway (GPPH) and the ASEAN Patent Examination Cooperation (ASPEC).

ASPEC

ASPEC, implemented on 15 June 2009, is the first regional patent work-sharing programme of its kind among participating ASEAN Member States (AMS) IP Offices. The objective of the ASPEC programme is to provide an applicant seeking patent protection in multiple ASEAN countries, with substantial time and cost savings. ASPEC also operates in the English language for all participating 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.

As at 31 August 2016, the average pendency rate to a first Office Action after an ASPEC request was 5.7 months, and 100% of the applications achieved allowance. This demonstrates that the ASPEC programme is highly successful in expediting prosecution and achieving allowance of ASEAN patent applications.

How to qualify for ASPEC

To qualify for the ASPEC programme, a request can be filed at any participating AMS IP Office. An applicant will qualify if it has (i) 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 (ii) 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 practice, this means a proposed patent application which runs through a participating AMS IP office, can rely on an original or corresponding patent application of an AMS IP office, where search and examination documents have already been issued.

Fees

An applicant must pay the filing and registration fees for the AMS IP Office in advance in order to prosecute the patent application, and 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.

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 request

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

What to submit

To make an ASPEC request, the applicant is required 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. A copy of the cited documents is not required at the time of filing the ASPEC request. However, the Office may later request that citations are provided and practitioners and attorneys are therefore prudent to ensure this documentation is easily accessible if not already filed. Citations may be provided in their original language.

The AMS IP Office is not obliged to adopt the findings or conclusions reached by the other IP Office. It will determine patentability in accordance with its own national laws.

Using ASPEC to expedite examination

In most instances, an applicant’s first complete application will be a PCT application. The Applicant then designates those countries in which it wishes to pursue patent protection.

1. Request expedited examination in Australia

Upon entering national phase in Australia, the Applicant can request expedited examination of the application. Such a request can be made any time after filing and prior to the issuance of a first examination report.

A request for expedited examination is filed in writing, and will be granted provided the Commission is reasonably satisfied that (a) it is in the public interest, or (b) there are special circumstances that make it desirable. Consequently, the Commissioner requires reasoning to accompany the request. IP Australia provides the following examples of reasons that may justify expedited examination:

• it is in the field of “green technology”;
• commercialisation considerations;
• infringement proceedings; and
• licensing reasons.

Generally speaking, expedited examination is a relatively low threshold to satisfy, and expedited examination will be granted.

It is also possible to request accelerated examination in Australia through the Global Patent Prosecution Highway (GPPH) programme. Under the 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.

Participating GPPH countries include Canada, Denmark, Finland, Hungary, Iceland, Israel, Japan, Korea, Norway, Poland, Portugal, Russia, Singapore, Spain, Sweden, United Kingdom, United States, Germany and Estonia. Further, a ruling from the European Patent Office can be used to expedite examination of an Australian patent application through the IP Australia-EPO PPH pilot programme.

Therefore, claims allowed or granted in any of these countries that correspond to one or more claims in an Australian application, may be used as the basis of a GPPH request for accelerated examination of that corresponding Australian application.

2a. Request accelerated examination in Singapore through the GPPH

Following allowance of the Australian application, a GPPH request may be made to accelerate examination of the corresponding application in Singapore.

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 programme.

2b. Simultaneously request modified examination of the Malaysian application, based on the allowed Australian claims

It may be preferred to request modified examination of the Malaysian application based on the granted Australia 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.

It is also possible to request expedited examination in Malaysia based on corresponding claims allowed in the United States, Japan, Korea, United Kingdom, and Europe.

3. File ASPEC request in Vietnam, the Philippines, Thailand, Lao PDR, Indonesia, Brunei Darussalam, (and Malaysia), based on allowed claims of Singapore application

Allowed claims in Singapore can be used as the basis of an ASPEC request in the remaining ASEAN countries.

Expedited examination in ASEAN countries based on a Japanese application

Alternatively, it is also possible to request expedited examination of an invention in several of the ASEAN countries based on an allowed Japanese application for a corresponding invention. Such a request is separate from both GPPH and ASPEC programmes, and has been established based on bilateral agreements between Japan and the individual countries.

Therefore, if the client is not seeking patent protection in Singapore or even Australia, it is still possible to request expedited examination in several of these countries based on an examined Japanese application.

Similarly, it is possible for an examined Japanese application to form the basis of a GPPH request in Australia and/or Singapore.

Possible 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 attracted to seek IP protection in these countries. Pleasingly, various work-sharing programmes 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 programmes, practitioners and attorneys can ensure that clients 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 programmes for the benefits of our clients looking to file in the ASEAN region.