NewsLetter
September 2013
There are two information regarding the examination process of patent application in Indonesia which may benefit the patent applicants in terms of speed and cost i.e., the PPH (Patent Prosecution Higway) Pilot Program and the ASEAN Patent Examination Co-operation (ASPEC) programme.
I. THE PPH (PATENT PROSECUTION HIGWAY) PILOT PROGRAM
As from June 1, 2013, the PPH (Patent Prosecution Highway) pilot program was started between Indonesia and Japan as a bilateral cooperation in Intellectual Property Rights field particularly patent under the Joint Statement of Intent.
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) with a simple procedure upon an applicant’s request.
The basic concept of the PPH pilot program is that where the Office of the First Filing (OFF) has determined that one or more claims of a patent application is/are allowable, the applicant will be entitled to the benefit of an accelerated examination before the Office of the Second Filing (OSF) for the corresponding, subsequent application, provided that certain conditions are met, including the sufficient correspondence of claims between the two applications and that work results of the OFF are made available to the OSF.
The benefits of PPH program for the Applicants are:
- High Predictability à PPH applications tend to be granted by OLE because they were already decided to be patentable by the OEE.
- High Speed à accelerated examination before the OSF.
- Low Cost à decrease in the number of office actions reduces applicant costs (e.g. attorney and translation fees).
Requirements, Required Documents and Fee of PPH
- Requirement:
1-1. The examination has not begun in the DGIPR
1-2. The DGIPR application is in particular relationship with the JPO application.
Ex.) The DGIPR application is an application which validly claims priority under Paris Convention to the JPO application.
1-3. JPO application has at least one claim that was determined by the JPO to be allowable.
1-4. All the claims in DGIPR application sufficiently correspond or are amended to sufficiently correspond to the allowable/patentable claims in JPO applications.
- List of Required Documents for PPH:
2-1. A copy of all claims and its translation*1
2-2. A copy of the JPO office actions and its translations *1
2-3. Copies of all cited documents *2
2-4. Claims Correspondence Table
Note:
*1 Applicants do not have to submit these documents, if the DGIPR can obtain these documents by Dossier Access System (AIPN).
*2 Applicants do not have to submit these documents, if the documents are patent document.
- PPH petition fee is free in most offices.
Requirements, Required Documents and Fee of PCT-PPH
Basically, the requirements, required documents of PCT-PPH are very similar to the normal PPH.
- Requirement:
a) The examination has not begun in the DGIPR.
b) Relationship between the application and the corresponding PCT application.
c) PCT application has one or more claims that are indicated as allowable.
d) All the claims of the application must sufficiently correspond to the allowable claims in the PCT application.
- List of Required Documents for PCT-PPH:
- A copy of the claims*1 from the corresponding PCT application which are indicated as patentable/allowable, and a translation thereof if they are not in English.
- WO/ISA, WO/IPEA or IPER*1 which forms the basis for the PCT-PPH request and a translation*1 thereof if there are not in English.
- Cited documents*2
- Claims Correspondence Table
Note:
*1 Applicants do not have to submit these documents, if these documents are available via “PATENTSCOPE”
*2 Applicants do not have to submit these documents, if the documents are patent document.
II. ASEAN PATENT EXAMINATION CO-OPERATION (ASPEC)
The ASEAN Patent Examination Co-operation (ASPEC) is the first regional patent co-operation project between ASEAN member states (“AMS”) namely, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand, and Vietnam which was commenced on 15 June 2009. Further, Brunei Darussalam has since joined the program on 1 January 2012.
ASPEC 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.
The objectives of the ASPEC 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.
Requirement for requesting ASPEC:
- Has a corresponding patent application
- Linked by Paris Convention Priority Claim
- Meet the IP office AMS requirement
The patent application in the participating AMS IP Office where the ASPEC Request Form is filed (“first IP Office”) has a corresponding patent application in the other participating AMS IP Office (“second IP Office”). The ASPEC Request relies on S&E documents of this corresponding application. A patent application in the second IP Office is a corresponding application if it is linked by a Paris Convention priority claim to the patent application in the first IP Office, and vice-versa.
When to file ASPEC in Indonesia:
On the same day as filing the request for substantive examination
Procedures for requesting ASPEC:
The patent applicant is to file a duly completed ASPEC Request Form and it shall be accompanied by the following documents:
(a) a copy of the search report and the examination report (“minimum documents”) of a corresponding application; and
(b) a copy of the claims referred to in the minimum documents submitted.
A copy of the form can be obtained at: http://www.dgip.go.id.
(Source: DGIPR and Japan Patent Office)
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