Malaysia and Europe Fly Together

By Ilangkumanan Kashaban

The Intellectual Property Corporation of Malaysia (MyIPO) has now joined forces with European Patent Office (EPO) in establishing the Patent Prosecution Highway (PPH) Pilot Program effective from 1^st July 2017, for an initial three-year trial period.

The three-year trial period serves as duration for both the Malaysian and the European Patent Offices to assess if the initiated PPH program is actually a success and/or a failure between both parties, which subsequently may determine whether the PPH program should be sustained after the trial period.

Generally, 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 European 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 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 FP. 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.

For more information, visit kassdev.element369.com or drop an e-mail to kass@kass.com.my if you need further information 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.