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Patent Prosecution Highway (PPH)

(MyIPO - KIPO)

Patent Prosecution Highway (PPH): MyIPO - KIPO

17 December 2020

The Patent Prosecution Highway (PPH) pilot program between the Intellectual Property Corporation of Malaysia (MyIPO) and Korea Intellectual Property Office (KIPO) has been launched on 01 December 2020. The program is anticipated to commence for a period of three (3) years and will end on 30 November 2023.

Applicants with application(s) which fulfills the requirements under the MyIPO-KIPO PPH pilot program can request for accelerated examination under the program. Applicant can either request for PPH based on national work from KIPO or by using PCT international work from KIPO.

PPH using National Work from KIPO

Requirements

  1. Both the MyIPO application on which PPH is requested and the KIPO application(s) forming basis of the PPH request shall have the same earliest date (whether this be a priority date or filing date).

  2. At least one corresponding application exists in the KIPO which has one or more claims that are determined to be patentable/allowable by the KIPO.

    • Claims are “determined to be allowable/patentable” when the KIPO examiner explicitly identified the claims to be “allowable/patentable” in the latest office action, even if the application has not been granted yet.

  3. All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated to be allowable in the KIPO.

    • Claims are considered to “sufficiently correspond” when claims in the MyIPO application are of the same, similar or narrower than the scope of the claims in the KIPO application.

  4. A “Request for Substantive Examination” must be filed at the MyIPO either at the time of the PPH request or previously.

  5. The MyIPO has not begun examination of the application at the time of filing the PPH request.

Documents Required

  1. Copies of all office actions (which are relevant to substantial examination for patentability in the KIPO) which were issued for the corresponding application by the KIPO, and their Bahasa Malaysia or English translations.

  2. Copies of all claims determined to be patentable/allowable by the KIPO, and their Bahasa Malaysia or English translations.

  3. Copies of references cited by the KIPO examiner

  4. Claim correspondence table

PPH using PCT International Work from KIPO

Requirements

  1. The latest work product in the international phase of a PCT application corresponding to the application (“international work product”) indicates at least one claim as patentable/allowable (from the aspect of novelty, inventive steps and industrial applicability).

    • International work products can be Written Opinion (WO) of International Search Authority (ISA), Written Opinion (WO) of International Preliminary Examination Authority (IPEA) or the International Preliminary Examination Report (IPER).

    • The ISA and IPEA which issued the WO is limited to KIPO. However, if there is a priority claim, it can be to an application in any Office.

  2. The relationship between the application and corresponding international application satisfies at least one of the following:-

    • The application is a national phase application of the corresponding international application

    • The application is a national application as a basis of the priority claim of the corresponding international application

    • The application is a national phase application of an international application claiming priority from the corresponding international application

    • The application is a national application claiming foreign priority from the corresponding international application

    • The application is the derivative application (divisional application and application claiming domestic priority etc.) of the application which satisfies one of the above four (4) requirements.

  3. All claims on file, as originally or as amended, for examination under the PCT-PPH must sufficiently correspond to at least one (1) claim indicated as allowable in the latest international work product of the corresponding international application.

    • Claims are considered to “sufficiently correspond” when, apart from differences due to translations and claim format, the claims in MyIPO application are of the same, similar or narrower in scope as claims indicated as allowable in the latest international work product.

    • Any claims amended or added after the grant of the request for participation in the PCT-PPH pilot program need not sufficiently correspond to the claims indicated as allowable in the latest international work product.

  4. The MyIPO has not begun examination of the application at the time of request for the PCT-PPH.

  5. A “Request for Substantive Examination” in the ordinary route must be filed when the request for PCT-PPH is being filed or earlier.

Documents Required

  1. A copy of the latest international work product which indicates the claims to be patentable / allowable and their Bahasa Malaysia or English translations.

  2. A copy of a set of claims which the latest international work product of the corresponding international application indicated to be patentable / allowable and their Bahasa Malaysia or English translations.

  3. A copy of references cited in the latest international work product of the international application corresponding to the application.

  4. A claims correspondence table which indicates how all claims in the application sufficiently correspond to the patentable / allowable claims.

Procedure

Benefits

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).