The Intellectual Property Corporation of Malaysia (MyIPO) and Japan Patent Office (JPO) recently initiated the Patent Prosecution Highway (PPH) Pilot Program on 1st October 2014, for a three-year trial period. The PPH is a program which expedites the examination process of corresponding patent applications filed in the countries involved. The PPH 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.
This PPH program between MyIPO and JPO allows both Malaysian and Japanese companies to obtain patent rights quickly in their respective countries. Both Patent Offices will evaluate the outcome of the trial period in order to determine whether the PPH should continue after three years.
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, 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 English translation;
- Copies of all claims determined to be patentable/allowable by the FPO and its English translation;
- Copies of references cited by the Examiner at the FPO;
- 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@www.kass.com.my if you need further clarification on the PPH procedures.
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