July 1, 2012
Patent applicants in the ASEAN member countries1, except Myanmar, can look forward to obtaining stronger and yet faster patent grants in the region. In 2009, the ASEAN Patent Examination Co-operation (ASPEC) program was launched, with the objective of reducing duplication of the patent search and examination work at the patent offices of participating ASEAN member countries, thereby saving time and effort where corresponding patent filings are made in two or more member countries. The program has since been reviewed and revised. Henceforth the program will operate in English language at all of the participating patent offices.
The ASPEC aims to “spring board” the patent search and examination of second and subsequent patent filings for a same invention made in the participating member countries, and at the same time, generate a larger pool of prior art that otherwise would not be available for scrutinizing inventions.
All patent applicants are allowed to participate in the ASPEC program, if they satisfy any one of the following scenarios:
As is evident from the above schematics, the patent applications must be linked to each other by way of a priority claim as shown above.
Participation in the ASPEC program is available upon request and upon furnishing the following documents together with the prescribed ASPEC Request Form:
a copy of the search report#
a copy of the examination report
a copy of claims referred to in the examination report; and
a claim correspondence table (optional).
#Citations in the search report may only be filed upon request by the relevant patent office.
Patent applicants are not required to pay any fee for participating in the ASPEC program.
Requirement of English translation
Where the above-listed documents are not filed in English language, patent applicants may file a verified or, where required, a certified English translation of the documents with the relevant patent office (eg, Philippines). The National Office of Intellectual Property (NOIP) of Vietnam requires patent applicants to file a verified English translation only in cases “when there are contradiction(s) or doubts or the likes in the content of the ASPEC documents”.
Deadline to file request for participation
The deadline for filing the request for the participation in the program differs among member countries. Depending upon the national requirements and procedures set under the program in each member country, the request for the participation in the program may be filed:
In Singapore, Cambodia, Lao PDR, Brunei Darussalam, Malaysia and Thailand, at the time of requesting the search and examination with the second patent office or at the time of response to the adverse examination report / written opinion.
In Vietnam, at any time before issuance of the final decision of grant.
In Indonesia and the Philippines, at any time before requesting the search and/ or search and examination.
The patent search and examination reports, allowed claims, and claims correspondence table made available to the second patent office will assist the patent examiners in formulating their search criteria and strategy at a faster rate, thereby reducing the overall time expenditure on familiarizing with inventions and conducting prior art searches.
Further, the ASPEC operates within the existing patents framework in each member country. Therefore, patent applicants would still obtain patents in accordance with the national patents law in force in the member countries. The program does not force the member countries into accepting the patent search and examination results provided to it.
The documents provided merely serve as guide and, at best, play a persuasive role in the entire patent search and examination at the second patent office.
Obviously, participation in the program is pretty easy, straightforward, and yet cost effective.
One advantage of the program is that it enhances the overall quality of patent grants by enlarging the pool of prior art. Eventually, stronger patents are issued in a relatively shorter span of time. Therefore, patent applicants interested in ASEAN countries must take advantage of the efficient, yet cost effective ASPEC initiative in the region.
1As at the date of print, the member countries of ASEAN are Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Myanmar, Philippines, Singapore, Thailand and Vietnam.