ASPEC and PPH: Cooperative Efforts for an Effective and Efficient Patent Protection
In order to keep up with the globalization of the world economy, DGIPR is working on further enhancing their significant role in cooperative efforts in the field of patents. There is an increasing necessity to adequately cope with the ever growing number of internationally filed patent applications and therefore efforts made are to emphasize on the importance of efficiency and effectiveness.
Backlog and duplication of work seem to be the critical area where efforts need to focus on in order to establish a speedy and inexpensive patent protection for applicants. Hence, it is important that cooperation focuses on “work-sharing”, most importantly in terms of examinations and new technologies.
ASEAN Patent Examination Co-operation (ASPEC) Program
ASPEC is the first regional patent cooperation project. It is a program for IP Offices from participating ASEAN member states to utilize the search and examination results from another participating ASEAN member states’ IP Office as reference in its own search and examination work.
The program commenced on June 15, 2009, participated by IP Offices from Singapore, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Thailand and Vietnam.
In the context of this cooperation, the participating IP Offices may consider the search and examination documents that it receives under the ASPEC, however not under any obligation to adopt any of the findings or conclusions reached by other IP Offices. They proceed and conclude their search and examination work, and decide on the patent in the manner that is in accordance with their respective national laws.
Requirements for ASPEC
The patent application in the participating IP Office where ASPEC is requested has a corresponding patent application in the other participating IP Office. The ASPEC request relies on the search and examination documents of this corresponding application. A patent application is a corresponding application if linked by a Paris Convention priority claim to the patent application where ASPEC is initially requested, and vice versa.
Having fulfilled the requirements for ASPEC, a complete ASPEC Request Form is to be filed and followed by:
- Copy of Search and Examination Report (minimum documents) of corresponding application from the first IP Office;
- Copy of the Claims referred to the minimum documents submitted.
The program is aimed to reduced work and faster turnaround time and as a result, supporting a faster prosecution of patent applications. This cooperation also provides patent authorities access to databases, which may be unavailable to examiners, and therefore promotes better search and examination of patent applications.
Patent Prosecution Highway (PPH) – a Pilot Program between JPO and Indonesia’s DGIPR
As part of Japan Patent Office (JPO)’s efforts to intensifying intellectual cooperation with rapidly growing ASEAN Countries, on April 13, 2013, JPO entered into an agreement with the Indonesian Directorate General of Intellectual Property Rights (DGIPR) based on which the two states have set their agreement to launch a Patent Prosecution Highway (PPH) pilot program on June 1, 2013.
Patent Prosecution Highway (PPH) is a framework whereby patent applicants, whose applications have been determined patentable by an earlier examination at a patent office are entitled to request, through a simple procedure, an accelerated examination of the corresponding applications in another patent office.
Indonesia is the third partner in ASEAN region that have concluded a PPH with the JPO, after Singapore and the Philippines. The consideration underlying such cooperation is the significant increase in demand for patent protection as a result of economic globalization. The spirit is to ensure high quality patent protection, effectively and inexpensively.
In the context of JPO and DGIPR’s cooperation, through utilizing the PPH, Japanese applicants will be able to acquire patent rights through an accelerated procedure in Indonesia. JPO shall act as the competent International Search Authority (ISA) and International Preliminary Examining Authority (IPEA) for PCT international applications filed with the DGIPR. Consequently, JPO will be able to conduct international searches and international preliminary examinations for PCT international applications filed with the DGIPR and thereby be able to conduct international searches for all of ASEAN.
Requirements for PPH
Applications that are eligible to request for PPH are applications, which have not undergone substantive examination and filed to DGIPR with particular relationship with JPO , i.e:
- The application validly claims priority under the Paris Convention to the corresponding JPO application(s);
- The application is a PCT national phase application without priority claim (direct PCT application);
- The application validly claims priority under the Paris Convention to the PCT application(s) without priority claim.
The applications shall also be determined as patentable, where at least one corresponding application must exist in the JPO and must have one or more claims that are determined to be allowable/patentable in the latest office action by JPO.
PPH is free in most offices, though the following documents are required to be submitted along with a PPH Request Form:
- A copy of all claims determined to be allowable by the JPO, and translations thereof. Though this is not required if these are available via the JPO dossier access system;
- A copy of all office actions of the JPO, and translations thereof (also not required if available via the JPO dossier access system);
- Copies of all documents cited by the examiner at JPO; and
- Claims correspondence table, listing all claims filed to DGIPR and JPO with comments in terms how they correspond to each other.
PPH for PCT International Applications
In regard to PPH for PCT international applications, the requirements and documents are actually very similar to the normal PPH. Of course, the application should be in a particular relationship with the PCT application and has been indicated as “allowable” in the international phase as indicated in WO/ISA, WO/IPEA or IPER. Cooperation amongst IP Offices, either at the regional or even international level is concluded in account of their benefits, for businesses of all sizes, small and medium enterprises and importantly for all inventors in the participating member countries in acquiring patent protection for their inventions.
Patent protection is a key element for fostering technological innovation and accelerating development. In order to keep up with the increasing demand for patent protection, DGIPR has been in active cooperation, including JPO and IP Offices in ASEAN, to support the development of its IP infrastructure. For DGIPR in particular, cooperation like PPH and ASPEC would not only improve its examination ability, but also promote a more expeditious and inexpensive patent protection process where workloads and unnecessary duplication of works are reduced significantly.
Our hope is for this to be enough to attract global business activities in Indonesia. The number of Japanese applicants, for example, are amongst the highest in DGIPR and we expect the number to increase as they are now able to acquire a more stable rights in the country and therefore, able to develop their businesses more smoothly in the country.