How to accelerate patent prosecution in the Asean region

16 minute read
24 March 2022

With the ever-increasing number of new patent applications in ASEAN, innovators often wish to accelerate patent prosecutions in the region. Accelerated prosecution provides early assessment of the patentability of the invention, facilitates discussion with interested investors and licensees, strengthens the innovation company's IP portfolio, and synchronises the patent rights with the product development. This article discusses the main international, regional, and national acceleration programmes in ASEAN.

1. The ASEAN Patent Examination Co-operation (ASPEC) Programme

ASPEC was commenced in 2009 and is the first regional patent cooperation project among nine participating ASEAN Member States (AMS) IP offices of Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, Philippines, Singapore, Thailand, and Vietnam. Under ASPEC, an IP office from participating AMS (Second IP Office) is able to utilise the search and examination (S&E) results from another participating AMS IP office ("First IP Office") as referenced in its own S&E work. In addition, as of 27 August 2019, applicants can enjoy two new features under ASPEC:

  1. ASPEC Acceleration for Industry 4.0 Infrastructure and Manufacturing (ASPEC AIM) (until 26 August 2023) - a committed turnaround time of six months to receive the first office action if an ASPEC request is made for Industry 4.0 patent applications (limited to 50 applications a year); and
  2. Patent Cooperation Treaty ASPEC (PCT-ASPEC) (until 26 August 2022) - the additional choice of relying on a PCT report issued from an ASEAN International Searching Authority/International Preliminary Examining Authority (ISA/IPEA) (Currently, ASEAN ISA/IPEA refers to both the Singapore and the Philippines IP Offices. Limited to 100 applications a year.)

Further, with effect from 15 June 2021, instead of the final S&E report, applicants can also utilise written opinion (a non-final assessment of the novelty, inventive step and industrial applicability) established by the First IP Office to request ASPEC before the Second IP Office, as long as the Written Opinion acknowledges at least one allowable claim. The only exception is the Thai IP Office, which still only accepts final search and examination results in an ASPEC request. This is a welcoming change as applicants would no longer need to address the objections raised by the First IP Office (if any) and wait for the final examination report to be issued and then file an ASPEC request with the Second IP Office. Instead, they may request ASPEC with the Second IP Office at an earlier stage, with a Written Opinion from the First IP Office even if not all the claims are allowed.

It is important to note however, the Second IP Office is not obliged to adopt any of the findings or conclusions reached by the First IP Office. The Second IP Office will proceed with and conclude its S&E work as well as decide on whether to grant the patent in the manner that is in accordance with its national laws. When an ASPEC request is filed at a Second IP Office in accordance with the requirements at that Office, processes at the Office will be advanced out of turn from the time of filing the ASPEC request until grant.

The advantages of ASPEC are manifold. It accelerates patent application timelines in all the other participating IP offices in ASEAN countries by using an earlier S&E report issued by one participating IP Office, by avoiding duplicative S&E procedures. According to the statistics on ASPEC IP Portal (as of July 2021), average pendency rate to first office action after ASPEC request is 8.15 months, and the allowance rate at final decision is 94.87%. Not only applicants may benefit from expedited examination by saving time and cost (in many cases the Second IP Office will issue reduced number of office actions), the ASEAN patent offices may also have reduced workload. Another advantage is that ASPEC does not require any additional official fees at any participating AMS IP office, besides local search and examination fees in each jurisdiction. Moreover, all forms and applications for the purposes of ASPEC must be filed in English. This saves applicants money and time in preparing the various translations for different ASEAN member states.

2. Patent Prosecution Highway (PPH) Programme

An alternative route to expedite the patent prosecution is the PPH programme. PPH is a framework in which an application determined to be patentable in the Office of Earlier Examination (OEE) is eligible to have an accelerated examination in the Office of Later Examination (OLE) upon an applicant's request. Conventional PPH is a bilateral agreement between two IP offices to promote work-sharing and enable applicants to request an accelerated examination by using the work products from the other office or vice versa. Both the application at OLE for which acceleration is requested and the application at the OEE forming the basis of the PPH request shall be linked by priority, i.e. have the same earliest date (whether this is a priority date or a filing date).

The bullets below summarise the bilateral PPH programmes that some ASEAN IP offices participate in:

SG - Intellectual Property Office of Singapore (IPOS):

  • BR - National Institute of Industry Property Ministry of Economy of Brazil (INPI)
  • CN - China National Intellectual Property Administration (CNIPA)
  • MX - Mexican Institute of Industrial Property (IMPI)
  • EP - European Patent Office (EPO)

MY - Intellectual Property Corporation of Malaysia (MYIPO):

  • CN - China National Intellectual Property Administration (CNIPA)
  • EP - European Patent Office (EPO)
  • JP - Japan Patent Office (JPO)
  • KR - Korean Intellectual Property Office (KIPO)

ID - Directorate General of Intellectual Property (Indonesia) (DGIP):

  • JP - Japan Patent Office (JPO)

PH - Intellectual Property Office of the Philippines:

  • EP - European Patent Office (EPO)
  • JP - Japan Patent Office (JPO)
  • KR - Korean Intellectual Property Office (KIPO)
  • US - United States Patent and Trademark Office (USPTO)

TH - Department of Intellectual Property in Thailand (DIP):

  • JP - Japan Patent Office (JPO)

VN - Intellectual Property Office of Vietnam (IPVN):

  • JP - Japan Patent Office (JPO)
  • KR - Korean Intellectual Property Office (KIPO)

Besides bilateral PPH, Global Patent Prosecution Highway (GPPH) within the framework of multiple countries allows a request for accelerated examination to be made at any participating office based on work products, including PCT work products, from other participating offices under unified criteria. As of 6 July 2020, 27 Offices have participated in the GPPH programme, including Australian Patent Office, Canadian Intellectual Property Office, German Patent and Trade Mark Office, UK Intellectual Property Office, Japan Patent Office, Korean Intellectual Property Office, and United States Patent and Trademark Office (USPTO). The only IP office in ASEAN participating in GPPH is the Intellectual Property Office of Singapore (IPOS).

Similar to ASPEC, PPH eases the examination burden of OLE by efficiently reusing the OEE's S&E history and utilising the optimised claim scope established by OEE. PPH also gives merits for applicants by achieving a generally accelerated patent examination ensuing reduced work, generally reduced cost to address fewer office actions, and increased grant rate. Do note, however, requesting PPH does not guarantee grant as patent laws and practices differ in countries and the OLE examiners are not bound by the conclusion in the S&E result of the OEE, but may find new prior arts from a different search database and possibly raise new objections. Yet, these additional prior arts if found would allow applicants to address the same, thus achieving a "stronger patent".

3. National Acceleration Programmes


IPOS launched the SG Patent Fast Track Programme on 4 May 2020. Patent applications across all technological sectors which are first filed in Singapore can utilise the SG Patent Fast Track programme to have the patent granted in as fast as six months (as compared to a typical period of two years or longer). No fee for acceleration will be imposed till further notice. Currently, there is a cap of five patent applications a month on SG Patent Fast Track, and each applicant is limited to ten accelerated patent applications a year. When requesting SG Patent Fast Track, applicants must state the reason(s) for requesting acceleration and the technology field to which the invention relates. Technologies that may benefit from this programme include those with a social or healthcare impact (e.g. GreenTech related to sustainable food production, and therapeutic agents to combat COVID-19), and those emerging technologies with a short product lifecycle (e.g. FinTech, Industry 4.0 and Artificial Intelligence). This initiative is so far the world's fastest application-to-grant progress of its kind, and complements Singapore's transformation to a digital economy.

If the patent cap for the SG Fast Track is reached for the month, applicants may choose to utilise the 12 Months File-to-Grant (12MG) scheme (divisional applications are not eligible). To qualify under 12MG scheme, the request for grant of patent form must be filed with the request for search and examination report on the same day, stating the reason(s) for acceleration, and the technology field to which the application relates. In addition, there shall be no deficiencies in the formalities examination. The first search and examination report needs to be favourable. Grant fee needs to be paid on the same day as filing of the request for early publication, and within two months from the notice of eligibility to proceed to the grant of the patent.

Besides these national programmes, Singapore also establishes Patent Cooperation with Cambodia and Laos, where a granted Singapore patent may be re-registered at Cambodia and Lao People's Democratic Republic (Laos), provided that such patent has a filing date on or after 22 January 2003 and 17 January 2002, respectively, and that it meets the local requirements for patentability.


An applicant who requests, or has requested, substantive examination for a Malaysian patent application can also request that the substantive examination be expedited once the application has been made available for public inspection. The request for expedited examination must be accompanied by a prescribed official fee as well as a Statutory Declaration setting out the grounds for the request (which may include national/public interest, on-going or potential infringement proceedings, the applicant has already commercialised the invention or intends to do so within two years, the invention relates to green technologies, and to meet conditions for obtaining monetary funds/benefits from the government or recognised institutions). Once the request for expedited examination is approved, the applicant will have to pay an expedited examination fee, after which an examination report is expected to be issued within four weeks. If the examination report is adverse, the applicant will have three weeks to respond and address the objections. This response deadline cannot be extended. If no response is made within three weeks, or if the response fails to overcome the examiner's objections, the application for expedited examination is deemed withdrawn. If the examination report is clear, grant of the patent can be expected within one week.

Indonesia, Thailand, the Philippines, Vietnam

We are not aware of any formal expedition process in these countries in relation to a normal substantive examination (if no ASPEC or PPH is requested). However, in Indonesia, Thailand and Vietnam, the Examiners typically would suggest in an office action that applicants adopt the claims allowed/granted in a corresponding major patent jurisdiction e.g. US, EPO, AU, JP, and KR. Thus, applicants may consider adopting such claims if available when responding to the office action to expedite further examination of the local application, provided that the amended claims comply with local practice (e.g. do not constitute added matter, and are not unpatentable subject matter).

Key Takeaways

Pleasingly, various acceleration programmes such as ASPEC and PPH are implemented in the ASEAN region to expedite the prosecution and allowance of patent applications. We highly encourage patent applicants who have business interests in the ASEAN region to leverage on these initiatives to reduce the time and costs in obtaining corresponding patents in multiple ASEAN countries. Importantly, being the only member of the GPPH that is also a member of ASPEC, Singapore plays an essential role as an IP hub in ASEAN, where a patent in Singapore (which may be expedited through GPPH programmes or other national acceleration programmes) provides a gateway to accelerated examination in the ASEAN region through the ASPEC programme.

JurisAsia LLC's IP team has extensive experience in patent drafting and prosecution, strategic advisory and litigation support. Dr. Vivian Wei Cheng, Patent Attorney of JurisAsia LLC is pleased to discuss your patent filing strategies in the ASEAN region and worldwide.

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