Patent Prosecution Highway (PPH) in Malaysia- Advantages & Disadvantages

Patent Prosecution Highway (PPH) in Malaysia- Advantages & Disadvantages

 

Introduction

As the globalization of the world economy advances, the number of filed patent applications tends to increase worldwide. Patent assets may be used as leverage during business transactions (e.g. mergers, licensing, acquisitions, etc.). However, the backlog of applications awaiting examination in MYIPO and most major Patent Offices is a significant issue.

 

Although not clearly defined, the backlog of unexamined patent applications consists of all the patent applications that have been filed and still remain to be examined. The backlog was said to be 4.2 million worldwide in 2007, and as of 2009 it reportedly continues to grow.

 

The backlog of patent applications is counter-productive to legal certainty, and that has a negative effect on the innovation process. According to a 2010 study by London Economics, “the cost to the global economy of the delay in processing patent applications may be as much as £7.65 billion each year.”

 

Since 2006, a number of collaborations, known as Patent Prosecution Highway (PPH), have been set up between various patent offices, initiated to provide accelerated examination procedures by sharing information between both Patent Offices, ultimately reducing the patent backlog.

 

Effective from 1 October 2014, MyIPO and JPO will commence the PPH pilot program for a period of three years. The program will initially run for a trial period of three years until 30 September 2017, followed by an evaluation to determine whether and how the program should be fully implemented thereafter.

 

What is PPH?

Under the PPH program, if the claims of an application have been found to be acceptable by a 1st patent office, the applicant may then request accelerated examination of a corresponding application at a 2nd office. The PPH is a procedure whereby Patent Offices can make use of relevant work already conducted by another office when conducting examination.

PPH leverages fast-track examination procedures already in place among participating Patent Offices, allowing applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing.

 

The following Patent Offices are participating in the GPPH agreement:

PPH Countries

Types of Request

1) PPH

2) PCT-PPH

*PPH can be done through the PCT. With PCT-PPH, you essentially pay the same but you have a PCT application as well.

 

How does it work in Malaysia?

PPH Malaysia

 

This PPH program between MyIPO and JPO allows both Malaysian and Japanese companies to obtain patent rights quickly in their respective countries.

 

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

  • The 2nd Patent Office (SPO) patent application is in particular relationship with the 1st 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:

  • PPH application form.
  • Copies of all office actions in English.
  • Copies of allowable claims in English.
  • Copies of reference cited by JPO examiners.
  • Claim correspondence table.

 

Advantages

For Patent Offices:

– It permits each participating patent office to benefit from the work previously done by the other patent office

– Reduces duplication of efforts and decrease workload

– Improves the quality of examination worldwide

 

For Patent Applicants:

– Reduces work/ costs

– Reduces time to final disposition

– Applicants are able to streamline their patent portfolios.

– Stability of the patent rights granted.

 

Disadvantages

– Examination under the PPH is NOT a rubber stamp approval.

– Examination still takes place before both patent offices.

– Applicant must still comply with all the requirements of each jurisdiction (e.g. criteria for

patentability, formalities, duty of disclosure, etc.).

– Claims need to be strategically aligned to correspond to those allowed by the 1st Office.

– Type of claim amendments permitted may be restricted.

– Accelerated examination status obtained using the PPH is not transferred to continuation applications.

 

Conclusion

The PPH is already showing signs of success. The fact that highways exist and are successfully conveying applications is a proof that work sharing among Patent Offices is possible. Driving a patent application along the PPH can be fast and relatively inexpensive experience. The increasing use of PPH will likely add to the congestion, but with careful planning it can make for a pleasant ride.

The next major challenge for the PPH program, however, is to integrate into the multilateral patent system. In addition, the PPH has some large potholes for the unwary applicants.

Last but not least, the applicants must consider the criticality of their patent application, where patent protection is needed, the scope of subject matter to be protected, how that scope may vary across different countries, the timing for obtaining protection, and cost limitations. These factors will dictate the applicants’ choice of using the PPH or sticking to the road of traditional prosecution.

 

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Advantages of Patent Cooperation Treaty (PCT)

The PCT is open to countries that are member states of the Paris Convention, which concluded in Washington in 1970 and thereafter administered by WIPO. There are 148 contracting states until October 2013, Malaysia joined PCT on 16 May 2006 and came into force on 16 August 2006. It is an agreement for international cooperation in the filing, searching and examination of patent applications.

The Patent Cooperation Treaty (PCT) provides a savvy route for patent applicants to seek after patent protection at the same time in a different jurisdiction countries. The PCT route is represented by the extent to which they have adopted the PCT application for the international protection (select countries during application).

At the point when a PCT application is filed, it is then subjected to an international search, which carried out by ISA. The International Search Report (ISR) contains information of published documents that affect the patentability of the invention claimed, the patentability opinion also prepared by ISA. The applicant may choose to withdraw his application if opinion report is unfavorable. In case the international application is not withdrawn, the application will be published with the ISR by the International Bureau of WIPO.

 

PCT.gif

 

figure (from MyIPO)

 

PCT Advantages:

  • the applicant has more time (up to 18 months) than Paris Convention application to decide which foreign countries to apply the patent application.
  • let patent applicant to delay strategies decision.
  • provides preliminary feedback regarding the patentability of said invention.
    Applicant can evaluate the chances of his invention after ISR has been delivered.
  • allow patent applicant to present argument for patentability and amend claim prior to filing with national phase offices.
  • delay prosecution cost of filing application in multiple countries
    to prepare the translations (if required) and to pay the national fees of application.
  • the formal ground of examination of processing the application cannot be rejected by the designated office if his international application is in the form prescribed by the PCT.

 

The PCT system enables the applicant to make a single application in Malaysia (the international application) and then designate as many other countries that are involved in the PCT. Bear in mind that the PCT system is a patent filing system, not patent granting system, there is no way by paying one-time fee of PCT application that can covered international application.

Advantages of Patent Cooperation Treaty (PCT)