On 1st July 2018, the Patent Prosecution Highway (PPH) pilot program between Intellectual Property Corporation of Malaysia (MyIPO) and State Intellectual Property of the People's Republic of China (SIPO) has been launched. The pilot program in anticipated to commence for a period of two (2) years, ending on 30 June 2020.
Applicants with application(s) which fulfills the requirements under the MyIPO-SIPO PPH pilot program can request accelerated examination under the program.
To know if your application is eligible for PPH and how to apply for it, read below for further information.
The MyIPO application (including PCT National Phase application) is:- (a) (i) an application which validly claims priority under the Paris Convention to the SIPO application(s) (ii) a PCT national phase application without priority claim (iii) an application which validly claims priority under Paris Convention to the PCT application(s) without a priority claim The MyIPO application which validly claims priority to multiple SIPO or direct PCT applications, or which is the divisional application validly based on the originally filed application that is included in (i) to (iii) above, is also eligible.
Some examples of the requirements listed above are illustrated below:
(b) At least one corresponding application exists in the SIPO which has one or more claims that are determined to be patentable / allowable by SIPO. Claims are "determined to be allowable / patentable" when the SIPO examiner explicitly identified the claims to be so in the latest office action
(c) All claims in the MyIPO application, as originally filed or as amended, must sufficiently correspond to one or more of those claims indicated to be patentable / allowable in SIPO. Claims are considered to "sufficiently correspond" where, aside from differences due to translations and claim format, the claims in MyIPO application has same or similar scope as the claims in the SIPO application, or narrower.
(d) The MyIPO application must be made available for public inspection after 18 months
(e) A "Request for Substantive Examination" must be filed at MyIPO either at the time of PPH request or previously
(f) MyIPO has not begun examination of the application at the time of filing of PPH request
We will require the following documents/information in order to request for accelerated examination using PPH:-
(a) Copies of all office actions (which are relevant to substantial examination for patentability in SIPO which were issued for the corresponding application by SIPO, and either Malay or English translations thereof).
(b) Copies of all claims determined to be patentable / allowable by SIPO, and either Malay or English translations thereof
(c) Copies of references cited in office actions by the SIPO examiner
(d) Claim Correspondence Table
Procedure of the PPH Request is as below:-
Some of the advantages of PPH are as follows:- (i) Significantly accelerates examination of patent application (ii) Increases grant rate of application with just 1 examination report (iii) Reduces prosecution costs and time as examination is based on allowable claims
Get in touch with us if you have any questions or need guidance with the Patent Prosecution Highway (PPH).