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© South-East Asia IPR SME Helpdesk 2016 1
1. Overview: Patents in South-East Asia
2. What is ASEAN Patent Examination Co-operation (ASPEC)?
3. When should you file the ASPEC request?
4. How to file the ASPEC request – Step by Step Process
5. Take-away messages
6. Case Study
7. Glossary of terms
8. Related links and additional information
1. Overview: Patents in South-East Asia
Patents are a common type of intellectual property that are relevant to various industries, not only for technology intense industry, patents are also present in the medical device and healthcare industries, green industr ies , machiner ies , food processing, textile and smart cities to provide few examples.
A patent is an exclusive legal right granted to the applicant for a new invention which may be a product or process offering new technical solutions or providing new ways of doing something. It gives the patent owner the right to prevent others from using the patented invention for a limited length of time and it is a main legal tool for preventing innovations from being copied.
I n gene ra l , fo r an i n ven t i on t o be patentable, it must satisfy three key criteria: a. It must be novel;b. The advancement or development from
the ‘prior art’ (existing technology) must not be obvious to the average person in the re levant indust ry (commonly referred to as the invention being non-obvious); and
c. It must be industrially applicable.
Patent rights are territorial in nature. In other words, a patent granted by the European Union Intellectual Property Office (EUIPO) cannot be enforced in South-East Asia as it is not a valid registration for the countries in South-East Asia. If patent protection is required across the entire South-East Asia region, separate patent
applications must be filed in each and every South-East Asian country.
Alternatively EU SMEs can use the ASPEC programme instead of independent domestic patent registrations.
Actual filing requirements and the patent application process varies from country to country in the South-East Asian region. For example, translation of the patent specification to local language is required for Cambodia, Indonesia, Laos, Thailand and Vietnam. In addition, local examination of the patent application is not mandatory in some countries as the patent can be granted on the basis of patent grant from countries with more established patent offices such as those in the United States, Japan, South Korea and from the EUIPO.
Fu r t he rmo re , c o s t s r e l a t ed t o t he acquisition of patent rights are typically much higher than costs involved to obtain other forms of intellectual property rights such as trade marks and industrial designs, hence a good understanding of ways to reduce cost and/or time to obtain a patent will come in handy for EU SMEs as they expand into South-East Asia.
Available options for EU SMEs for patent registration in South-East Asia include, Patent Cooperation Treaty (PCT), Patent Prosecution Highway (PPH) and the ASEAN Patent Examination Co-operation (ASPEC). This ‘How to guide’ focuses on the ASPEC programme as step by step guide to learn the features and objectives of the programme specifically designed for the countries of the Association of South-East Asian Nations (ASEAN).
How to Guide for ASPEC Patent Filings
For free, confidential, business-focused IPR advice within three working days E-mail: [email protected]
Co-funded by:
European Union
Disclaimer:
The contents of this publication do not necessarily reflect the position or opinion of the European Commission. The services of the South-East Asia IPR SME Helpdesk are not of a legal or advisory nature and no responsibility is accepted for the results of any actions made on the basis of its services. Before taking specific actions in relation to IPR protection or enforcement all customers are advised to seek independent advice.
Room 2B, 15th Floor, The Landmark5B Ton Duc Thang, Ben Nghe Ward, District 1, Ho Chi Minh City, VietnamT +84 28 3825 8116F +84 28 3827 [email protected]
For more information please contact the Helpdesk:
The South-East Asia IPR SME Helpdesk provides free, confidential, business-focused advice to European Small and Medium Enterprises (SMEs) relating to Intellectual Property Rights (IPR) in South-East Asia.
Helpdesk Enquiry Service: Submit further questions to the Helpdesk via phone, email ([email protected]) or in person and receive free and confidential first-line advice within three working days from a South-East Asia IP expert.
Training: The Helpdesk arranges training on South-East Asia IPR protection and enforcement across Europe and South-East Asia, tailored to the needs of SMEs.
Materials: Helpdesk business-focused guides and training materials on South-East Asia IPR issues are all downloadable from the online portal.
Online Services: Our multi-lingual online portal (www.ipr-hub.eu) provides easy access to Helpdesk guides, case studies, E-learning modules, event information and webinars.
Download guide:
WWW.SOUTHEASTASIA-IPRHELPDESK.EU
WWW.SOUTHEASTASIA-IPRHELPDESK.EU
Project implemented by:
An initiative co-funded by the European Union
European Chamber of Commerce in Vietnam
How to Guide for ASPEC Patent Filings
For more information about Patents in South-East Asia, please refer to our Guide to Patents Protection in South-East Asia at http://www.southeastasia-iprhelpdesk.eu/en/helpdesk-guides.
For specific information about Patents registration and enforcement in each of the countries of South-East Asia, please refer to the Helpdesk’s IP Country Factsheets at http://www.southeastasia-iprhelpdesk.eu/en/country-factsheets.
2. What is ASEAN Patent Examination Co-operation (ASPEC)?
Launched on 15 June 2009, the ASEAN Patent Examination Co-operation (ASPEC) is the first ‘regional’ patent work-sharing programme among nine (9) participating ASEAN Member States (AMS) IP Offices of Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand, and Vietnam. Myanmar is the only ASEAN country not included in the ASPEC programme.
Originally, patent offices independently conduct search and examination (S&E) to assess the patentability of patent applications. There is significant duplication of the S&E work when patent applications for the same invention are applied in multiple patent offices resulting in delays in the process of patents granting and, sometimes, also in conflicting examination results.
The aim and objectives of the ASPEC programme are to reduce backlog and faster turnaround time, and to improve search and examination quality.
The ASPEC programme allows participating offices to share S&E results. Patent applicants in participating countries potentially can obtain corresponding patents faster and more efficiently through ASPEC. Additionally, S&E results from a first patent office may support the second patent office in producing quality reports.
The diagram below illustrates the basic principle of the ASPEC program, whereby the S&E result completed by a first AMS IP office is transmitted to a second AMS IP office upon filing of the ASPEC request:
ASPEC operates in English language in all participating AMS IP Offices and the request for ASPEC is free of charge, however local search and examination fees at AMS IP Offices will still apply. To further simplify the request process, a common ASPEC request form has been designed to be accepted by all AMS IP Offices.
It is important to note that ASPEC is not a substitute to local S&E at the AMS IP Office, but it is essentially a procedure to share S&E results of corresponding patent applications between AMS IP Offices. In addition, the participating IP Office is not obliged to adopt any of the findings or conclusions reached another other IP Office. It 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.
Currently ASPEC requests may be submitted directly to the participating AMS IP Offices or made electronically through the ASEAN IP Portal.
AMS (1st IP Office)
AMS (2nd IP Office)
Search and Examination (S&E) result
S&E result from the 1st IP office is made available to the Patent Examiner from the 2nd
IP office
ASPEC request
ASPEC Filing Statistics - as of February 2016
Second ASEAN member state
BN KH ID LA MY PH SG TH VN
BN
KH
ID 1 4
LA
MY 1 6 2
PH 1 1 1 2 1
SG 8 17 8 22 6
TH
VN
Firs
t AS
EAN
mem
ber
stat
e
2
How to Guide for ASPEC Patent Filings
The latest ASPEC filing statistics from the ASEAN Intellectual Property Portal (link) indicates that a total of 91 ASPEC requests have been submitted and the majority of ASPEC requests (61 requests) have been filed using final S&E results from the Intellectual Property Office of Singapore (IPOS).
In addition, 33 patent applications with ASPEC requests have since progressed to grant and the average pendency rate for the second AMS IP to issue a first office action is 5.6 months after filing of the ASPEC request.
ASPEC is a relatively new option for patent granting in South-East Asia and therefore the overall applications have been limited in number.
3. When should you file the ASPEC request?
EU SMEs that require patent protection for the same invention in several South-East Asian countries would benefit from the ASPEC program.
Note that the ASPEC request may be filed with a second AMS IP Office once search and examination of the patent application has been completed by a first AMS IP Office and at least one claim has been determined to be allowable/patentable and before the final decision of grant or refusal of the patent application at the second AMS IP Office.
4. How to file the ASPEC request – Step by Step Process
The ASPEC request may be filed by submitting the following to the second AMS IP Office:
1) A duly completed ASPEC Request Form (link);2) A copy of the search report and the examination report
of a corresponding patent application from the first AMS IP Office; and
3) a copy of the claims referred to in the minimum documents submitted, with at least one c la im determined by the first AMS IP Office to be allowable/patentable.
In addition, the ASPEC Request Form may be accompanied by a claim correspondence table showing how the claims examined in the corresponding application are related to the claims in the current application, a copy of the written opinion(s) and the list of prior art, if available.
If items 2) and 3) are not originally in English, they should be filed together with their English translations at the time of filing the ASPEC Request Form.
A sample completed ASPEC Request Form is available from the ASEAN Intellectual Property Portal (link) and the main section of the form is reproduced below:
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How to Guide for ASPEC Patent Filings
Example:
The above sample form illustrates an ASPEC request for submission to the Indonesia Patent Office (second AMS IP office) based on the completed examination result of a corresponding patent application filed with the Malaysia Patent Office (first AMS IP office).
Alternatively, the ASPEC request may simply be submitted electronically via an online submission form available on the ASEAN Intellectual Property Portal (link) as shown in the screenshot below.
One advantage of using the online submission form is that simultaneous filing of multiple ASPEC requests for the same invention may be submitted.
4
How to Guide for ASPEC Patent Filings
Practical Tips
Take advantage of the electronic ASPEC submission form on the ASEAN IP Portal when multiple ASPEC requests are to be filed.
Although the ASPEC request can be filed at any time before the final decision of grant or refusal of the patent applications, some AMS IP offices including the IP offices of Malaysia, Philippines and Thailand prefer to receive the ASPEC request at the same time the request for examination is filed.
According to the published statistics available as of February 2016, amongst the nine (9) AMS IP Offices, S&E of patent applications are typically completed faster at the Singapore Intellectual Property Office of Singapore (IPOS). Applicants that wish to obtain regional patent protection in South-East
Asia may wish to ensure that their patent application is filed in Singapore so that ASPEC requests may be filed using the S&E results from IPOS. This strategy can be observed from the ASPEC filing statistics whereby more than 67% of ASPEC requests were filed using S&E results from IPOS (IPOS is the 1st AMS IP Office).
5. Take-away messages
Applicants that make use of the ASPEC request can expect a reduction of time to complete examination of patent applications in South-East Asia. In addition, when an ASPEC request is filed at a participating AMS 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.
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How to Guide for ASPEC Patent Filings
1 Source: "ASEAN Patent Examination Co-operation (ASPEC)", Intellectual Property Office of Singapore website: www.ipos.gov.sg
7. Glossary of Terms
AMS ASEAN member states, namely Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, The Philippines, Singapore, Thailand and Vietnam.
Corresponding application
A patent application from another ASPEC participating country is a corresponding patent application if:
(a) It is linked by a Paris Convention priority claim to the patent application of which ASPEC is requested for, and vice versa, or;
(b) It shares the same priority claim with the patent application of which ASPEC is requested for, from another patent application of a Paris Convention member country.
Claims priority from the application filed in 1st IP office
AMS (1st IP Office)
AMS (2nd IP Office)
Claims priority from the application filed in a foreign IP Office
Claims priority from the application filed in a foreign IP Office
Foreign IP Office
AMS (1st IP Office)
AMS (2nd IP Office)
6. Case Study
Unicharm Corporation, a major manufacturer of health care products ranked #14 in Forbes World’s Innovative Companies 2013, became the first applicant of the ASPEC program.
In early 2013, Unicharm Corporation filed a patent relating to disposable baby diapers with IPOS. The examination of the Singapore application was completed in four months and a patent was granted within the same year of the application. A patent for the same invention was subsequently filed in Vietnam and the ASPEC request was filed for the Vietnam patent application using the examination results from IPOS.
The patent application was accepted by Vietnam within a quick turnaround time of seven days with substantive examination request advanced out-of-turn, resulting in the issuance of the first examination report from Vietnam patent office within six months1.
6
How to Guide for ASPEC Patent Filings
• Links to all participating ASEAN Member States:
Brunei Darussalamwww.brunei-patents.com.bn
Cambodia cambodiaip.gov.khwww.mih.gov.kh
Indonesia www.dgip.go.id
Lao PDR www.aseanip.org
Malaysia www.myipo.gov.my
The Philippineswww.ipophil.gov.ph
Singapore www.ipos.gov.sg
Thailand www.ipthailand.go.th
Vietnam www.noip.gov.vn
8. Related links and additional information
• Visit our Guide to Patents Protection in South-East Asia – http://www.southeastasia-iprhelpdesk.eu/en/content/helpdesk-guides.
• Visit the Country Factsheets of South-East Asia countries – www.southeastasia-iprhelpdesk.eu/en/country-factsheets
• Visit other publications at South-East Asia IPR SME Helpdesk website – www.ipr-hub.eu
• Visit the Helpdesk blog www.yourIPinsider.eu for related articles on IP in South-East Asia and China
• Visit the ASPEC page on the ASEAN Intellectual Property Portal – www.aseanip.org/Services/ASEAN-Patent-Examination-Co-operation-ASPEC/What-is-ASPEC
7
Co-funded by:
European Union
Disclaimer:
The contents of this publication do not necessarily reflect the position or opinion of the European Commission. The services of the South-East Asia IPR SME Helpdesk are not of a legal or advisory nature and no responsibility is accepted for the results of any actions made on the basis of its services. Before taking specific actions in relation to IPR protection or enforcement all customers are advised to seek independent advice.
Room 2B, 15th Floor, The Landmark5B Ton Duc Thang, Ben Nghe Ward, District 1, Ho Chi Minh City, VietnamT +84 28 3825 8116F +84 28 3827 [email protected]
For more information please contact the Helpdesk:
The South-East Asia IPR SME Helpdesk provides free, confidential, business-focused advice to European Small and Medium Enterprises (SMEs) relating to Intellectual Property Rights (IPR) in South-East Asia.
Helpdesk Enquiry Service: Submit further questions to the Helpdesk via phone, email ([email protected]) or in person and receive free and confidential first-line advice within three working days from a South-East Asia IP expert.
Training: The Helpdesk arranges training on South-East Asia IPR protection and enforcement across Europe and South-East Asia, tailored to the needs of SMEs.
Materials: Helpdesk business-focused guides and training materials on South-East Asia IPR issues are all downloadable from the online portal.
Online Services: Our multi-lingual online portal (www.ipr-hub.eu) provides easy access to Helpdesk guides, case studies, E-learning modules, event information and webinars.
Download guide:
WWW.SOUTHEASTASIA-IPRHELPDESK.EU
WWW.SOUTHEASTASIA-IPRHELPDESK.EU
Project implemented by:
An initiative co-funded by the European Union
European Chamber of Commerce in Vietnam
Guide Last Updated 2018Guide developed in collaboration with Kelvin Chia Partnership in October 2016
