New patent prosecution highways in ASEAN for AI inventions and PCT applications

New PPH to expedite AI inventions in ASEAN: ASPEC AIM

ASPEC was launched on 15 June 2009. It is the regional patent work-sharing programme among 9 participating ASEAN Member States IP Offices of Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand, and Viet Nam. Under the ASPEC system, the member states are sharing search and examination results for corresponding patent applications at several offices, with the aim to reduce duplication of work and to accelerate the examination procedures.

According to a 2018 McKinsey & Company report, AI is expected to bring US$627 billion in gains for ASEAN.  The ASEAN Member States (AMS) have recently agreed to broaden ASPEC’s scope to prioritize applications which are related to AI, permitting first office actions within a period of six months. ASPEC AIM started in September 2019 and is limited to 50 applications a year and will run for a pilot period of two years ending on August 26, 2021.

New PPH to expedite PCT applications in ASEAN : PCT-ASPEC

PCT-ASPEC is another newly launched PPH that allows patent applicants to use their PCT reports from an ASEAN International Searching Authority (ISA : Singapore) and International Preliminary Examining Authority (IPEA: Philippines) to accelerate their patent applications in another ASEAN country. PCT-ASPEC will be limited to 100 applications a year and run for a pilot of three years ending on August 26, 2022.

Below is the table summarizing the new APEC AIM and PCT-ASPEC PPH:

 

 

ASPEC

ASPEC AIM 

PCT-ASPEC 

Features

Rely on national S&E reports issued by participating IP Offices

Prioritise AI patent applications for 1st office actions to be issued within 6 months

Broaden the use of ASPEC to rely on PCT reports issued from an ASEAN ISA/IPEA

Duration and Capacity

Since 2009

 

2-year pilot (27 August 2019 to 26 August 2021)

50 applications per year

3-year pilot (27 August 2019 to 26 August 2022)

100 applications per year

Type of Invention

All types

Inventions related to Industry 4.0

All types

Qualifying criteria

ASPEC request can be filed at any participating IP Office if you have

(i) filed a corresponding patent application for the same invention in any other participating IP Office and
(ii) S&E report issued by one of the participating IP Offices with at least one allowable claim

Scope

Applicable to S&E reports established by participating IP Offices.

If IPOS is first IP Office, results will be based on (i) a request for a search report (from Patent Form 10); or (i) a request for aS&E report (from Patent Form 11); or (i) a request for an examination report (from Patent Form 12)

Applicable if the first IP Office determines that the invention is related to AI

 

 

Applicable to PCT reports established by ASEAN ISA/IPEA but not extended to supplementary international search reports

 

Fee

No additional fee

Time period to file ASPEC request

Any time before final decision of grant or refusal

Procedures and documentation required

File the following documents in the second IP Office:

  • Completed ASPEC Request Form where applicable
  • Copy of the final S&E report of a corresponding patent application
  • Copy of claims referred to with at least one allowable claim

 

File the following documents in the second IP Office:

  • Completed ASPEC Request Form where applicable (To indicate it is an ASPEC AIM request in the ASPEC form or cover letter)
  •  Copy of the final S&E report of a corresponding patent application
  • Copy of claims referred to with at least one allowable claim

 

  with the following information:

  • Application no. from first IP Office;
  • Desired second IP Office and application no. in the Second IP Office;
  • Date of request; and
  • Applicant

 

File the following documents in the second IP Office:

  • Completed ASPEC Request Form where applicable (To indicate it is an PCT- ASPEC request in the ASPEC form or cover letter)
  • Copy of written opinion or international preliminary examination report established by an ASEAN ISA/IPEA for a corresponding patent application (International Search report should also be provided where applicable.)
  • Copy of claims referred to with at least one allowable claim

 

with the following information:

  • PCT application no;
  • Desired second IP Office and application no. in the second IP Office;
  • Date of request; and
  • Applicant.