ASEAN Patent Examination Co-operation (ASPEC) Procedure

Question 1
We have recently been informed about the new opportunity to apply to be part of the ASEAN Patent Examination Co-operation (ASPEC) procedure.
In that respect of:
a) how does it work, and
b) when should we apply (file the ASPEC request form)?

ASPEC is not comparable to PCT, as ASPEC in itself does not issue any examination report or written opinion. ASPEC is merely a co-operation between 8 ASEAN countries namely: Cambodia, Indonesia, Laos, Malaysia, Singapore, Thailand, the Philippines and Vietnam. Once a search and examination report is issued by any of these countries (first IP Office), the applicant may use the report to file an ASPEC Request in another member state (second IP Office), and the report from the first IP Office will be used as a reference. However, the second IP Office is not obliged to adopt any of the findings or conclusions made by the first IP Office. There is no additional fee to file ASPEC Request.

Question 2
When will the member state in which we have filed the ASPEC request, provide the search and examination documents to the other ASPEC member states?

Answer 2
The search and examination report will be issued by the first IP Office, and subsequently during the normal course of patent prosecution the applicant has to submit the ASPEC Request Form together with the report to the second IP Office.

Question 3
What are the advantages or disadvantages of that ASPEC process?

Answer 3
The advantages that are as per the objectives of ASPEC:
- reduced work and faster turnaround time
- better search and examination as some IP Offices might have better access to databases unavailable to the other IP Office.
There is no particular disadvantage that we are able to pin point at the present time.

Question 4
Should we use this process only for certain type of Patent applications or for any type of patent application?

Answer 4
This program can be used for all types of patent applications, which is applicable in the particular member state (e.g. divisional application and utility innovation).

Question 5
Is there any risk?

Answer 5
We are not aware of any risk. In any case, this program is still in its infancy stage, so the actual risk factor (if any) might only surface after some time.

Question 6
What is your current experience with this new ASPEC process?

Answer 6
Please see our concluding remark below.

Question 7
Is there any advantage for the patent applicant e.g. acceleration of the grant procedure, or id the benefit only for the ASPEC Patent Offices?

Answer 7
This program may result in faster prosecution of the patent application, however please bear in mind that the receiving IP Office is not obliged to adopt any of the findings or conclusions reached by the other IP Office.

Question 8
Is there any advantage to file the ASPEC request form in one or other ASPEC member states (faster or more efficient office?).


Answer 8
There is no significant advantage, as the efficiency level of the each ASPEC member states is comparable.

Question 9
In which country(ies) would you advice us to file the ASPEC request form.

Answer 9
No particular preference, as each country has their provision of rules and regulations, and is independent from one another.

Question 10
What is the role of the first IP Office (ASPEC member state) were the ASPC Request Form is filed.

Answer 10
To provide the search and examination report to the applicant, and the applicant will later submit the ASPEC Request Form to the second IP Office.

Question 11
Can we provide the search report and examination report of any corresponding Patent Office e.g. European Patent Office.

Answer 11
Yes you can. However, in this instance the applicant need not file a request for ASPEC, wherein they might just submit the search report to the individual country directly.

CONCLUSION:
The feedback from the Malaysian Patent Office is that an application under ASPEC has not been filed to date. However, the infrastructure is in place to accept such request. We further checked with Singapore Patent Office, and there are only 3 such applications on record. We do not believe there has been significant progress in any of the other ASEAN countries relating to ASPEC process. This program is new and given that the ASEAN countries do not have a sophisticated Search & Examination processing body, we do not anticipate this process to be active at this time. In all likelihood, the Registrar will still await the outcome of corresponding cases in the more matured patent territories like US, EP, JP, KR, AU and GB.