The Intellectual Property Corporation of Malaysia (MyIPO) and the European Patent Office (EPO) have initiated a Patent Prosecution Highway (PPH) pilot program lasting three years from 1 July 2017. This adds to the PPH agreement Malaysia already has in place with Japan.
PPH allows examination of an application in one of a pair of countries to be accelerated based on a positive examination report (where at least one claim has been deemed allowable) of a corresponding application in the other country. While the agreement is bidirectional, examination reports tend to be issued more quickly by the EPO compared to MyIPO, so the majority of PPH requests are likely to assist in accelerating the prosecution of Malaysian applications. The agreement covers PCT national phase Malaysian applications where the International Search Authority was the EPO, such that the international search report and written opinion may be also used for a PPH request in Malaysia.
Normally the first examination report in Malaysia takes several years to be issued. However, based on our experience with the Japan-Malaysia PPH agreement, we would expect requests under the EPOMalaysia PPH agreement to reduce this time to around six to nine months.
Notwithstanding the above it should be noted that Malaysia still provides for a Modified Examination system whereby a Malaysian application may be granted based on bringing the same into conformity with a corresponding patent granted by a prescribed office (including the EPO), and as this is about the same speed and more cost-effective than PPH, it still tends to be the preferred option where possible.