Example notice - Intellectual Property Office of Singapore



Patent Cooperation Treaty (PCT) - ASEAN Patent Examination Co-operation (ASPEC) Procedures

1 Summary

1. The ASEAN Patent Examination Co-operation (“ASPEC”) Taskforce is entrusted to discuss and propose a pilot programme for the inclusion of work products from the Patent Cooperation Treaty (“PCT”) by ASEAN International Searching Authorities/International Preliminary Examination Authorities (“ISA/IPEAs”)[1] for the ASPEC programme. This initiative shall be termed PCT-ASPEC.

2 Background

2.1 Since its inception, the ASPEC programme has relied on national work products by its participating AMS IP offices to achieve the objectives of the programme.

2.2 The broadening of scope to include PCT work products was deliberated extensively by the ASEAN Member States (“AMS”). Following the 13th ASPEC Taskforce (“TF”) Meeting in Tokyo, Japan held from 16 - 17 October 2018, a formal recommendation for a PCT-ASPEC pilot program was put forth to the ASEAN Working Group on Intellectual Property Cooperation (“AWGIPC”). The recommendation was subsequently endorsed at the 57th AWGIPC held in Siam Reap, Cambodia from 27 – 30 November 2018.

3 ASEAN Patent Examination Co-operation (ASPEC)

3.1 ASPEC is the first regional patent cooperation project. It is a programme for IP Offices from participating AMS to utilise the search and examination (“S&E”) results from another participating AMS IP Office as reference in its own S&E work.

3.2 There are 9 participating AMS IP Offices and they are from Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand and Viet Nam.

3.3 The participating AMS IP Office may consider the S&E documents it receives under the ASPEC. It is not obliged to adopt any of the findings or conclusions reached by the 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.

3.4 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.

3.5 The objectives of the programme are:

• Reduced work and faster turnaround time. Reference to earlier work could help an examiner to develop his search criteria or strategy more quickly, reduce searching and/or assist the examiner to understand the claimed invention faster. Faster prosecution of the patent application is, therefore, possible.

• Better search and examination – The other patent authorities might have access to databases unavailable to the examiner (e.g. specific technical databases, local databases, databases in other languages). Therefore, the opportunity to refer to these search and examination results could provide the examiner with information on and assessment of prior art which he or she would otherwise not have access to.

4 Patent Cooperation Treaty (PCT)

4.1 PCT is a multilateral arrangement which facilitates the prosecution process of patent protection internationally. This is effected through the filing of one international patent application under the PCT system to simultaneously seek protection for an invention in a myriad of member countries.

4.2 As of 10 January 2019, there are 152 Contracting States to the PCT system. All 9 participating AMS IP Offices of the ASPEC programme are also Contracting States to the PCT system.

4.3 PCT work products offer a patentability assessment of the patent application by ISA/IPEAs. A written opinion on the invention’s patentability is also established in the process.

4.4 As of 10 January 2019, there are 23 ISA/IPEAs recognized by the International Bureau of WIPO. The Intellectual Property Office of Singapore (“IPOS”) is one of the ASPEC participating IP offices which is also an ISA/IPEA. The Intellectual Property Office of the Philippines (“IPOPHL”) had also operationalised as ISA/IPEA on 20 May 2019.

5 Requirements for PCT-ASPEC

5.1 Request for the usage of PCT-ASPEC will only be valid for PCT work products from ISA/IPEAs which are also participating AMS IP Offices of ASPEC, namely IPOS and IPOPHL (“ASEAN ISA/IPEA”). Future ISA/IPEAs from the participating AMS IP Offices will also be included for PCT-ASPEC.

5.2 PCT-ASPEC will follow the requirements of ASPEC request in (i) definition of corresponding application; (ii) provision of cited documents; (iii) translations; and (iv) relevant modes of submission.

5.3 In addition to the standard requirements of an ASPEC request, applicants are also required to

a) Indicate on the ASPEC request form the request for PCT-ASPEC or submit a cover letter indicating the intent to use PCT-ASPEC pilot for offices where ASPEC request form is not mandatory; and

b) email the monitoring authority (aspec@.sg) and PCT-ASPEC focal point of the requisite details:

I. PCT application no;

II. Desired 2nd AMS and application no. in the 2nd AMS;

III. Date of request;

IV. Title of invention;

V. Applicant.

List of PCT-ASPEC focal point is in Annex 1.

5.4 Failure to comply to 5.3 will result in an invalid PCT-ASPEC request.

5.5 A non-exhaustive list of scenarios for PCT-ASPEC is provided in the Annex 2.

6 Duration and capacity of PCT-ASPEC

6.1 PCT-ASPEC shall commerce on a pilot basis for a period of three years starting from 27 August 2019.

6.2 AMS shall review the merits of the PCT-ASPEC pilot and its continuation in the third year of the pilot.

6.3 The number of eligible PCT-ASPEC requests shall be capped at 100 per year starting from the implementation date of PCT-ASPEC stated in 5.1.

6.4 Singapore will serve as the monitoring authority in tracking the cap limit of PCT-ASPEC pilot. The monitoring authority shall periodically update the usage of PCT-ASPEC through the ASEAN IP Portal.

ANNEX 1

List of focal points to direct PCT-ASPEC requests

|Country |Email |

|Brunei Darussalam |shahrinah.yusofkhan@.bn |

| |muiz.ramlee@.bn |

| |janet.stori@.bn |

| |adibah.rosli@.bn |

|Cambodia |chheanpiseth@ |

| |rein_bbu@ |

|Indonesia |miayusanti@.au |

| |masnugroho@ |

| |nandie93@ |

| |thomy_ryan@ |

|Lao PDR |aphivath@ |

| |s.solasin@ |

| |xsompasong@ |

|Malaysia |aspec@.my |

|Philippines |aspec@.ph |

|Singapore[2] |aspec@.sg |

|Thailand |napapatchai@ |

|Viet Nam |khoanguyen76@ |

ANNEX 2

Scenarios for PCT-ASPEC

Scenario (1): The second AMS application (“2nd AMS NP application”) is a national phase entry of the PCT application. The PCT application is being relied upon for the PCT-ASPEC request and it is examined by an ASEAN ISA/IPEA.

[pic]

Scenario (2): There are two PCT applications, the second application validly claiming priority from the first application. The second AMS application (“2nd AMS NP application”) is a national phase entry of the second PCT application. The second PCT Application is being relied upon for the PCT-ASPEC request and it is examined by an ASEAN ISA/IPEA.

Scenario (3): There is a first application filed in any IP office. The PCT application validly claims priority from the first application. The second AMS application (“2nd AMS NP application”) is a national phase entry of the PCT application. The PCT application is being relied upon for the PCT-ASPEC request and it is examined by an ASEAN ISA/IPEA.

Scenario (4): The PCT application validly claims priority from the second AMS application (“2nd AMS application”). The PCT application is being relied upon for the PCT-ASPEC request and it is examined by an ASEAN ISA/IPEA.

Scenario (5): There are two PCT applications, the second application validly claims priority from the first application. The second AMS application (“2nd AMS NP application”) is a national phase entry of the second PCT application. The first PCT application is being relied upon for the PCT-ASPEC request and it is examined by an ASEAN ISA/IPEA.

[pic]

Scenario (6): The second AMS application (“2nd AMS application”) validly claims priority from the PCT application. The PCT application is being relied upon for the PCT-ASPEC request and it is examined by an ASEAN ISA/IPEA.

Scenario (7): The second AMS application (“2nd AMS application”) is a divisional application of another second AMS application (“2nd AMS NP application”) that is a national phase entry of a PCT application. The PCT application is being relied upon for the PCT-ASPEC request and it is examined by an ASEAN ISA/IPEA.

[pic]

Scenario (8): The second AMS application (“2nd AMS application II”) is a divisional application of another second AMS application (“2nd AMS application I”). The PCT application validly claims priority from 2nd AMS application I. The PCT application is being relied upon for the PCT-ASPEC request and it is examined by an ASEAN ISA/IPEA.

[pic]

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[1] Written opinion of the International Search Authority (ISA), Written opinion of the International Preliminary Examining Authority (IPEA), or International Preliminary Examination Report issued within the PCT framework.

[2] For the avoidance of doubt, email for monitoring authority and Singapore’s focal point are the same.

-----------------------

PCT application

Request for PCT-ASPEC

ASEAN ISA/

IPEA

2nd AMS NP application

NP

application

WO/ISA

WO/IPEA

IPER

WO/ISA

WO/IPEA

IPER

First PCT application

2nd AMS NP application

Priority

claim

Request for PCT-ASPEC

ASEAN ISA/

IPEA

Second PCT application

NP application

NP application

PCT application

WO/ISA

WO/IPEA

IPER

Application in any IP office

2nd AMS NP application

Priority

claim

Request for PCT-ASPEC

ASEAN ISA/

IPEA

Request for PCT-ASPEC

2nd AMS application

WO/ISA

WO/IPEA

IPER

Priority

claim

ASEAN ISA/

IPEA

PCT application

Request for PCT-ASPEC

Second PCT application

2nd AMS NP application

NP application

First PCT application

ASEAN ISA/

IPEA

WO/ISA

WO/IPEA

IPER

Priority

claim

WO/ISA

WO/IPEA

IPER

2nd AMS application

PCT application

Request for PCT-ASPEC

ASEAN ISA/

IPEA

Priority

claim

PCT application

Request for PCT-ASPEC

ASEAN ISA/

IPEA

2nd AMS NP application

NP application

WO/ISA

WO/IPEA

IPER

2nd AMS application

Divisional

PCT application

Request for PCT-ASPEC

ASEAN ISA/

IPEA

2nd AMS application II

WO/ISA

WO/IPEA

IPER

2nd AMS application I

Priority Claim

Divisional

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