Applying for a patent, especially where protection is sought in more than one country, can be a lengthy process. Traditionally an initial domestic patent application is followed a year later by a PCT application, then national phase entry applications in each country, with often lengthy processes of examination in each to follow.
However, in recent years a number of global agreements have come into effect which aim to reduce duplication of effort and streamline this process. Though each of these agreements are useful individually, Fisher Adams Kelly Callinans have identified a means by which, in the Asia Pacific region, these agreements can be combined in a sophisticated way to achieve unusually rapid and consistent grant of patent rights in multiple countries.
In short, by deploying the Australian expedited examination process, the Global Patent Prosecution Highway, and the ASPEC agreement, an applicant using a ‘hub’ approach to their filing can achieve rapid patent grant in up to eleven Asia-Pacific territories with consistency in those granted rights.
Launched in 2009 the ASEAN Patent Examination Co-operation (ASPEC) is an Asia-Pacific work sharing program involving Singapore, Malaysia, Indonesia, the Philippines, Thailand, Vietnam, Cambodia, and Lao PDR, as well as Brunei. Under the ASPEC scheme, a patent applicant who has received a favourable search and examination report for their application in one ASPEC member IP office can apply to have that report taken into account in the examination process for corresponding patent applications in any number of other ASPEC member states. Though the other IP Offices are not formally obliged to accept the results of the first examination process, in practice a favourable examination report in one territory will most often result in a rapid favourable examination in the others. Even if local objections are found, having the initial search and examination report to refer to makes the other Examiners’ task easier and therefore faster to complete. The entire process under ASPEC also takes place in English, preventing the need for additional translations. Finally, the examination of ASPEC requests at member country Patent Offices results in processing of those applications being advanced out of turn until grant is achieved.
Global Patent Prosecution Highway Pilot Program
From late 2014, the Intellectual Property Office of Singapore (IPOS) has joined the Global Patent Prosecution Highway (GPPH) as one of the pilot offices. The GPPH allows patent applicants who have received a favourable search and examination report in one GPPH participating office to request expedited examination in another GPPH participating country. IP Australia is also a GPPH participating office, meaning that allowance for patent applications filed in Australia can form the basis for a request for expedited examination under the GPPH in Singapore.
IPOS is a designated International Searching Authority (ISA), and International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT). The country undertakes detailed and thorough search and examination processes which can take considerable time. However, on average using the GPPH, the time from application to final decision in Singapore has been as little as 5 months, with many decisions reached more quickly than that, and with almost 90% being allowed as the first action.
Take Off – Expedited Examination in Australia
It may take more than a year for an examination report to issue in Australia following submission of the examination request. This sets a 12 month period by which time acceptance must be achieved.
However, IP Australia allows applicants to expedite examination in cases where an applicant provides a suitable commercial or other reason for accelerating the pace of examination. By requesting expedited examination the waiting time to issuance of a first examination report (FER) can be reduced to only four to eight weeks. There are no additional official fees for expedited examination.
If there is therefore any commercial reason why an applicant’s business needs a faster decision made about a patent application (or if the invention is in the field of ‘green technology’, or there are licensing or infringement considerations) expedited examination likely can be obtained. It is also valid to request it on the basis of allowance being required as a basis for a request for examination or grant in another jurisdiction, such as is proposed in this article. The IP Australia requirements are therefore not onerous and, if best efforts are made to tailor the claims to address any previously known patentability issues, acceptance can be achieved within 3-4 months.
By employing the three tools detailed above a patent application can proceed from the initial standard application in one country to granted patents throughout the Asia Pacific region in considerably less time than usual.
In short, the strategy includes filing an Australian national phase or Convention application, through an Australian agent with the capacity to work throughout the Asia Pacific region. Shortly thereafter, the applicant should consider voluntarily submitting a request for expedited examination, which additionally provides cost savings in avoiding the need for the Direction to Request Examination to be reported by the Australian agent.
Upon accelerated acceptance in Australia, the applicant then requests expedited examination of their corresponding Singaporean patent application under the GPPH. This should result in a decision, and likely allowance, in Singapore in five months or less.
Finally, upon receipt of the favourable report from IPOS, the applicant submits an ASPEC request for their corresponding patent applications filed in any of the other ASEAN territories based on the favourable outcome from Singapore. Those applications are then advanced out of turn for examination and favourable outcomes are very likely.
Using this strategy it is possible, subject to correspondence between the claims in the different jurisdictions, to proceed from examination in Australia to allowed patents in up to ten countries in little more than 12 months. This represents a substantial reduction in the average time taken to complete this process, allowing for more rapid and secure international protection and commercialisation. Clearly, streamlined examination will also provide substantial costs savings. For IP owners in, for example, the United States or United Kingdom the approach detailed above whereby the hub is structured out of Australia with the Australian agent instructing and coordinating the ASPEC request, also has the benefit of that your point of contact is a native English speaker who shares time zones with the local agents in the ASEAN countries of interest.
A further consideration, particularly relevant in the life sciences area, is that Australian practice is quite liberal in regards to the different claim formats which are considered acceptable and include claims to methods of medical treatment, Swiss style claims, use claims and the like. While not all ASEAN members will allow each of these claim formats, having allowance first achieved in Australia with incorporation of all allowable formats enables the applicant to then tailor their claims to progress with only those appropriate claim types in each ASEAN member country.
Due to our experience and hub network throughout the Asia-Pacific, Fisher Adams Kelly Callinans can advise on appropriate tailoring of claims for individual countries throughout the region to minimise the likelihood of rejections.