The Patent Prosecution Highway (PPH) pilot program between the United States Patent & Trademark Office (USPTO) and the Intellectual Property Corporation of Malaysia (MyIPO) has commenced on 02 March 2023. The pilot program will run for a period of three (3) years, ending on 01 March 2026.
Applicants with application(s) that fulfill the requirements under the MyIPO-USPTO PPH pilot program can request accelerated examination of their patents through the program.
Eligibility
1. A Malaysian application is
(a) an application which claims priority under the Paris Convention to the USPTO application(s)
(b) a PCT national phase application without a priority claim
(c) an application which claims priority under the Paris Convention to the PCT application(s) without a priority claim
2. A Malaysian application which claims priority from multiple USPTO or direct PCT applications, or which is a division application based on the originally filed application that is included in (a) to (c) above is also eligible.
3. At least one corresponding application exists in the USPTO which has one (1) or more claims that are determined to be patentable/allowable by the USPTO.
4. All claims in the Malaysian application, as originally filed or as amended, must sufficiently correspond to one (1) or more of those claims indicated to be patentable/allowable by the USPTO.
Claims are considered to sufficiently correspond where:-
a. Claims are of the same or similar scope
b. Claims are narrower than in scope than the claims in the corresponding application(s)
5. The Malaysian application must have been published.
6. A “Request for Substantive Examination” must be filed before or at the time of the PPH request.
7. Examination has not commenced at the time of filing the PPH request.
Documents Required
1. Copies of all office actions
2. Copies of all claims determined to be patentable/allowable by USPTO
3. Copies of references cited by USPTO examiner
4. Claim correspondence table
If you have any questions regarding the MyIPO-USPTO PPH, please do not hesitate to reach out to us.
Thank you.