Cooperation between South East Asian nations has made possible a network of patent prosecution highways across the region since 2009. This article explores how these highways can save you time in pushing your South East Asian patent applications through to grant.
ASPEC Quick Facts
What is ASPEC?
The ASEAN (Association of Southeast Asian Nations) Patent Examination Co-operation – a multilateral agreement for sharing patent search and examination results.
Which are the participating countries?
Indonesia, Malaysia, Philippines, Singapore, Thailand, Vietnam, Brunei, Darussalam, Cambodia, Lao PDR.
How do two patent applications qualify as being corresponding?
One application claims priority from another, or both applications claim priority to the same basic application.
What language is used in an ASPEC request?
When can I file an ASPEC request?
Typically when filing a request for examination and, in some countries, when filing a response or before the patent office makes a decision of grant or refusal.
Does the ASPEC programme replace national search and examination?
No, but national examiners may formulate more relevant patent search strategy based on an earlier search and examination opinion.
The South East Asian region is among other popular destinations for patent protection. Recent WIPO statistics1 name four South East Asian countries in the top 20 jurisdictions for national/regional phase entries in 2011 -- Singapore was ranked the 12th most entered country via the PCT, followed closely by Indonesia (15th place), Malaysia (16th place) and Vietnam (19th place). Further, a 70 to 90% majority of national phase applicants in these countries are foreign-based.
There could be a multitude of reasons for this popularity, ranging from manufacturers looking to set up a manufacturing base, businesses exploring the potential in expanding their export market, to hi-tech companies seeing the region as a R&D hub. Regardless of the reasons, there is a growing pressure on patent offices in the region to more quickly process patent applications without sacrificing quality of the granted patents.
The ASEAN (Association of Southeast Asian Nations) Patent Examination Co-operation, or ASPEC, is a regional patent cooperation programme for sharing patent search and examination results. The primary objective of the programme is to provide faster turnaround and better-quality results of patent search and examination.
The ASPEC programme can be thought of as a regional network of patent prosecution highways (PPHs). Those regularly seeking patent protection should be familiar with PPHs as referring to usually bilateral agreements between two patent offices. In comparison, the ASPEC programme is a multi-lateral one – It involves 9 ASEAN patent offices2, every one of which will happily accept an ASPEC request supported by search and examination opinions issued by any of the other 8 patent offices.
You may benefit from the ASPEC programme if you have corresponding patent applications in two or more ASEAN states. Two applications are considered corresponding if one application claims priority from another one, or if both applications claims priority from the same basic application.
The procedure for making use of the ASPEC programme is relatively simple. When requesting examination, an applicant is to submit an ASPEC Request Form, a copy of the search and examination opinion issued by another participating patent office, and a copy of the claims that have been searched and examined on. Some participating patent offices generously allow the ASPEC request be filed when responding to an adverse report and, in Vietnam, even any time before a final determination of grant or refusal.
The time saved by submitting an ASPEC request primarily arises from the shortened time that an examiner would otherwise require to fully grapple with the invention, conduct relevant documentary searches, and then examine the located documents. Rather, the examiner may re-use the earlier opinion if deemed appropriate to avoid work duplication, or formulate better search strategy to uncover more relevant prior art.
The multilateral nature of the ASPEC programme means that one set of search and examination opinions could potentially be referred to by up to 8 other participating patent offices. This will have a significant impact for applicants seeking protection in a large number of ASEAN states.
Further, the ASPEC programme has been operating in English since 20123. Therefore, once an English search and examination opinion is obtained (either issued directly by one of the participating patent offices or via translation), there is no need for translation (or re-translation) into the different official languages used by the various ASEAN patent offices.
Quality searches and examination
Any time saving would of course have to be met by quality searches and examination in the first instance issued by competent patent examiners. To this end, IP Australia is heavily involved in training patent examiners in the South East Asian region4 to raise the standards in patent searches and examination. This in turn provides confidence to patent holders in the validity and consistency of their patent rights in the region.
While the ASPEC programme aims to reduce duplication of work, participating patent offices are not bound by the earlier search and examination opinion accompanying an ASPEC request. Patent examiners may refer to the earlier opinion, or may well conduct their own searches if the earlier opinion is deemed insufficient.
In summary, the ASPEC programme does not replace the national search and examination procedure. The programme aims to improve turnaround and to produce consistent examination results and quality patents across the region. See our ASPEC Quick Facts for a summary of key features of the ASPEC programme.