With ASEAN experiencing significant growth in manufacturing investment and becoming a favoured choice for OECD investors, it continues to attract multinational corporations across various sectors from prominent economies such as the US, China, Japan, South Korea and Europe. The figure below shows the comparison of top applicants seeking patent protection in South-east Asia from 2013 to 2017 versus 2018 to 2022.

In ASEAN member states, patent prosecution often takes a significant amount of time. At present, only the patent offices in Singapore, Vietnam and the Philippines are capable of conducting independent patent searches and examinations. Consequently, securing a patent in ASEAN can take years, which prevents applicants from utilising their patents while they are still under examination. Therefore, it is crucial to have a comprehensive understanding of the acceleration programmes and implement strategies to expedite patent prosecution in the region.

Patent Prosecution Highway (PPH) programmes between ASEAN and major jurisdictions

One option to accelerate patent prosecution of a patent application is the Patent Prosecution Highway (PPH) programme. The PPH is a worksharing programme that provides accelerated examination of a patent application by referencing examination results from an Office of Earlier Examination (OEE). This programme allows an application deemed patentable by the OEE to qualify for an accelerated examination at an Office of Later Examination (OLE) on an applicant’s request. The traditional PPH operates as a bilateral agreement between two intellectual property offices, facilitating work-sharing and allowing applicants to request accelerated examinations based on the findings from the other office or vice versa. For a PPH request to be valid, there must be a connection between the application at the OLE and the application at the OEE, meaning they should share the same priority date, whether it is a priority date or a filing date.

The following bilateral acceleration programmes are available in the following ASEAN member states.

Singapore (Intellectual Property Office of Singapore) (IPOS)

• China – China National Intellectual Property Administration (CNIPA);
• Mexico – Mexican Institute of Industrial Property;
• Europe – Europe – European Patent Office (EPO);
• Saudi Authority for Intellectual Property; and
• National Institute of Industrial Property of France (INPI France).

Malaysia (Intellectual Property Corporation of Malaysia)

• China – CNIPA;
• Europe – EPO;
• Japan – Japan Patent Office (JPO);
• South Korea – Korean Intellectual Property Office (KIPO); and
• United States Patent and Trademark Office (USPTO).

Indonesia – Directorate General of Intellectual Property (Indonesia)

Philippines – Intellectual Property Office of the Philippines

• Europe – EPO;
• Japan – JPO;
• South Korea – KIPO; and
• United States – USPTO.

Thailand – Department of Intellectual Property in Thailand (DIP)

Vietnam – Intellectual Property Office of Vietnam

• Japan – JPO; and
• South Korea – KIPO.

Other than the bilateral PPH programme, Singapore is the only ASEAN member state that is a member of the Global Patent Prosecution Highway (GPPH) programme. This allows an applicant to request for accelerated examination to be made at any participating IP office based on work products, including PCT work products, from other participating offices under unified criteria. There are now more than 27 IP offices in the GPPH programme, including China, Japan, Korea, United States and the European Patent Office.

It is notable that among the six ASEAN member states there is no one common IP Office with which the ASEAN member states have a bilateral agreement. However, with Singapore being a member of the GPPH programme, this means that applicants with a favourable search and examination result from the Japan Patent Office will have an advantage to accelerate patent examination across the six ASEAN member states.

Applicants should also note the eligibility requirements to qualify for PPH in the ASEAN member state. To qualify for PPH, the OEE must be an IP office of a country or region that has a bilateral agreement with the ASEAN member state. Additionally, OEE application must have received a favourable examination result indicating the allowance of at least one claim. Also, the claims in the OLE application must sufficiently correspond to those in the OEE application. This means that the claims submitted to the ASEAN member state should be of the same or narrower scope.

ASEAN Patent Examining Cooperation (ASPEC) programme

Launched on 15 June 2009, ASPEC is a collaborative regional patent work-sharing programme involving nine ASEAN member states (AMS), with Myanmar currently not participating. It is the first regional patent cooperation project among the nine participating ASEAN member states. In this programme, applicants may use the search and examination results of participating IP Offices to accelerate the patenting process in any one of the other participating IP Offices. For example, if a first ASEAN member state prepares a search and examination report, an applicant can request to use the ASPEC programme by requesting the second ASEAN member state to accelerate examination based on that report. The qualifying criteria for filing a request under ASPEC are that the corresponding patent application for the second ASEAN member state must be for the same invention and the Written Opinion or final examination issued by the first ASEAN member state should have at least one allowable claim.

ASPEC AIM

The ASPEC Acceleration for Industry 4.0 Infrastructure and Manufacturing is a programme launched from 27 August 2019 that provides patent applications that can be categorised as an Industry 4.0 application with a committed turnaround time of six months to receive a first office action. This pilot has been extended to August 2025 with a cap of 50 patent applications per year. Examples of Industry 4.0 patent applications allowed are provided by IPC codes in the infrastructure, analytics, hardware, connectivity and manufacturing sectors.

There are several advantages of utilising ASPEC. The first is that ASPEC requests can be filed at any time before the final decision on granting or refusing the ASEAN patent applications, whereas PPH examination requests typically have stricter timing requirements that require applicants to submit the request before the respective examination deadline applicable in the ASEAN member state. The second advantage is that applicants no longer require to use the final search and examination report to file an ASPEC request, and can instead rely on a written opinion that acknowledges at least one allowable claim. This gives applicants the option of filing an ASPEC request once a written opinion is issued with at least one allowable claim instead of having to address the objections in the written opinion and to await the final search and exam report.

It also accelerates patent application timelines in all the other participating IP offices in ASEAN member states by avoiding duplicative search and examination procedures. According to statistics on the ASPEC IP Portal, ASPEC has significantly accelerated patent prosecution, with an average pendency rate to the first office action of just 9.31 months after the request, indicating a quicker response compared to PPH. The overall allowance rate for patent applications under ASPEC is impressive at 98.32 per cent, suggesting a high likelihood of successful patent grants compared to PPH programmes.

An additional advantage is that ASPEC does not require any additional official fees at any participating ASEAN member state, besides the local search and examination fees imposed in each jurisdiction. As all forms and applications for filing ASPEC are in the English language, this also saves applicants time and money in preparing translations for ASEAN member states that do not normally accept filed documents in English.

National acceleration programmes

Singapore

SG IP Fast Track programme

Launched on 1 May 2020, the SG Patent Fast Track programme allows patent applications in all technological fields that are initially filed in Singapore to be granted in as little as six months, compared to the usual period of two years or more. The programme was renamed SG IP Fast Track programme and expanded on 1 September 2020 to allow applicants to include the acceleration of their related trademark and registered design applications. The SG IP Fast Track programme is available until 31 December 2024.

The programme is limited to 10 patent applications per month, with a cap of two patent applications per entity, up to a maximum of 10 accelerated applications per year. When applying for the SG Patent Fast Track, applicants must provide reasons for seeking acceleration and specify the technology sector related to their invention.

This programme is particularly suited for technologies with social or healthcare benefits, such as GreenTech for sustainable food production and therapeutic agents for covid-19, as well as emerging technologies with short product life cycles, such as fintech, Industry 4.0 and artificial intelligence. This initiative is recognised as the fastest application-to-grant process in the world of its kind and supports Singapore’s transition to a digital economy. Straightforward patent applications can be granted in as fast as six months, and non-straightforward patent applications can be granted in as fast as nine months.

Collaborative Search and Examination with Vietnam

Considered a first in ASEAN member states, the Collaborative Search and Examination (CS&E) is a programme between the IP offices of Singapore and Vietnam to speed up the patent search and examination process for innovators who wish to file patents in both countries. The pilot programme was launched on 1 March 2023 and has been further extended to 28 February 2027.

To participate in the programme, an applicant must request for the Collaborative Search and Examination (CS&E) when filing the request for examination at the office of earlier filing. There are no additional fees imposed on the applicant other than the usual search and examination fees. The programme provides an enhanced prior art search and examination results through the combined expertise of both IP Offices. A first office action on the patentability of the invention will be issued within 10 months of filing the request for search and examination by the office of earlier filing. This will provide the applicant an opportunity to make an informed decision as to whether to proceed to file the patent application in the office of later filing. It also enables the applicant to determine their go-to-market strategy at an earlier time.

If the applicant decides to proceed to file a patent application in the office of later filing, the applicant will then file the patent application in the other ASEAN member state, and to make a subsequent filing for a claim of right of priority to the earlier patent application and to request for examination. The office of later filing, upon receiving the request for examination, will prioritise the patent application and the patent application will undergo accelerated examination as long as the claims referred to in the CS&E report issued by the office of earlier filing sufficiently correspond with the claims filed in the office of later filing.

Patent cooperation with Cambodia and Laos

Singapore has also formed patent cooperation agreements with Cambodia and Laos. Under these agreements, a patent granted in Singapore can be reregistered in Cambodia and the Lao People’s Democratic Republic (Laos), as long as the patent has a filing date of 22 January 2003, or later for Cambodia and 17 January 2002, or later for Laos, and complies with the local patentability requirements.

Malaysia

An applicant who has requested substantive examination for a Malaysian patent application can also seek to expedite that examination after the application has been made available for public inspection. This request for expedited examination must include the required official fee and a statutory declaration outlining the reasons for the request. These reasons may encompass national or public interest, ongoing or potential infringement issues, commercialisation of the invention or plans to do so within two years, relevance to green technologies, or the need to meet criteria for obtaining financial support from the government or recognised institutions.

Once the expedited examination request is approved, the applicant must pay an expedited examination fee, and an examination report is typically issued within four weeks. If the report contains negative findings, the applicant has three weeks to respond to and resolve the objections, and this deadline cannot be extended. If no response is submitted within this time frame, or if the response does not address the examiner’s concerns, the expedited examination request is considered withdrawn. However, if the examination report is favourable, the patent grant can be expected within one week.

Thailand

In 2022, Thailand initiated the Target Patent Fast-Track system to hasten the review process of patent applications in the healthcare domain, including medical products, processes, materials, accessories or equipment that are beneficial to public health solutions. The subsequent year, 2023, saw the inception of the ‘Target Patent Fast-Track: Future Food’ project, which became operational from 1 January 2024.

The Future Food project is centred around innovative products and processes in the food sector, divided into four primary categories:

• Novel food: This category is associated with new food items and the application of new processes for the production, storage and/or preservation of food.
• Health supplements.
• Organic food: This category is concerned with organic farming methods but does not incorporate genetically modified organisms.
• Medical food: This category includes products that can serve as replacements for medicines or nutritional supplements under the guidance of a medical professional.

Under the above programme, a patent application can be examined within 12 months of the date of participation in the programme. Applicants who would like to join this programme are required to submit a request with supportive evidence such as a commercialisation plan that is limited to not more than four pages, and the said request must be submitted to the Thailand IP Office (DIP) between the 1st and 10th of each month. The DIP will select only five applications per month to benefit from this programme and each applicant is allowed to apply to participate in this programme only once a month.

Summary

Depending on the applicant’s target markets, nature of the business and invention, and its business objectives, applicants are encouraged to leverage on the above programmes to reduce time and costs in obtaining patents in multiple ASEAN member states.

When seeking patent protection for inventions in ASEAN member states, applicants need to weigh the pros and cons of the various acceleration programmes and develop a holistic patent strategy that is aligned with the business strategy while remaining cost-effective.

Singapore plays an important role as an IP hub in the ASEAN region. A patent filed in Singapore can provide a gateway to accelerated examination in several ASEAN member states through various programmes, such as the Global Patent Prosecution Highway programme, ASPEC programme and CS&E programme.

It is also important to stay updated with changes in patent examination procedures due to the continuing developments in patent examination procedures across ASEAN member states to streamline processes and reduce pendency periods.

Endnotes