China and Malaysia, are new patent partners!

By Ilangkumanan Kashaban

We are often posed with questions regarding the use of examination results of a corresponding Chinese patent application to expedite examination in Malaysia. Since State Intellectual Property Office of the P.R. China (SIPO) is not one of the prescribed offices under the Malaysia Patents Law use of a corresponding Chinese patent for expediting examination was not possible. Until now, when the Intellectual Property Corporation of Malaysia (MyIPO) has now joined forces with SIPO in establishing the Patent Prosecution Highway (PPH) Pilot Program effective from 1^st July 2018, for an initial two-year trial period.

The two-year trial period serves as a duration for both MyIPO and SIPO to determine whether the PPH program should be sustained after the trial period. The latter will be decided upon reflection on the following two factors:

if both the offices receive sufficient volume of PPH requests; or
if the volume of participation exceeds manageable level.

However, it is certain that this program will be terminated if the volume of participation exceeds manageable level.

In general, the PPH program provides an expedited examination procedure for corresponding patent applications filed in the countries involved, so as to allow applicants such as both Malaysian and Chinese companies to obtain corresponding patents sooner.

Simply, the PPH program allows a corresponding patent application – where the claims have been determined as patentable by a First Patent Office – to be used as a basis for expediting the patent application at a Second Patent Office.

The requirements for filing a request for PPH are as follows:

The Second Patent Office (SPO) patent application is in particular relationship with the First Patent Office (FPO) application, i.e., claims priority under the Paris Convention and/or PCT national phase;
The FPO patent application has at least one claim that was determined by the FPO to be patentable/allowable;
All the claims in the SPO patent application sufficiently correspond to the allowable/patentable claims in FPO patent applications;
The examination has not begun in the SPO at the time for request for PPH;
A request for Substantive Examination must have been filed at SPO either at or prior to the time of the PPH request.

The following are the documents that need to be filed during the filing of the request for PPH:

Copies of all FPO Office Actions and its translation in either English or Bahasa Malaysia;
Copies of all claims determined to be patentable/allowable by the FPO and its translation in either English or Bahasa Malaysia;
Copies of references cited by the Examiner at the FPO. If the references are patent document, it is not required to submit the references, unless explicitly requested by the Examiner; and
Claims Correspondence Table which identifies how all claims in the SPO sufficiently corresponds to the patentable/allowable claims in the FPO patent application.

The PPH expedites patent prosecution and enhances the search and examination results between the Patent Offices to improve the quality of examination worldwide. Please contact us at kass@kass.asia if you need further clarification on the PPH procedures.

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KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.