The search and examination of patents is an activity which consumes many resources. In order to streamline the process and to reduce the turnaround time, IP offices in member states of the Association of South East Asian Nations (ASEAN) collectively launched the ASEAN Patent Examination Cooperation Programme (ASPEC). ASPEC, the first of its kind in the ASEAN region, has the primary objective of utilizing the search and examination results of the participating IP offices in the assessment of patentability. The participation has been overwhelming, given that almost all the ASEAN member states are part of this programme, with the exceptions being Myanmar, where there is no specific patent legislation, and Brunei Darussalam, where patent protection is obtained by re-registration of a granted British, European Patent Office (designating UK), Malaysian or Singaporean patent.
Key Benefits of ASPEC
With ASPEC, the search and examination results of one participating IP office may be considered by the other participating offices. Hence, corresponding patents can be obtained faster and more efficiently. This programme reduces search and examination duplication, thereby saving time and resources. Additionally, search and examination work done on corresponding applications serves as a useful reference in producing quality reports. Although the results of the search and examination carried out by one office is not binding on other offices, it is of persuasive value. The concerned office would have to conclude its own search and examination and grant a patent in accordance with its national laws. In other words, the search and examination of another member IP office only serves as a guide.
The Modalities of ASPEC
A request is filed in the “First IP Office” and examiners in that office may refer to the search and examination results of a “Second IP Office.” Below is a graphical representation of how the ASPEC ystem works. For the purposes of illustration, it represents a Corresponding Application with respect to a Singapore Application:
Options Available to Applicants and How ASPEC is Beneficial
In order to avail of this mode of examination, the ASPEC request has to be filed by a patent Applicant in the first IP office, e.g. Singapore. The Singapore patent application must claim priority from an application filed with an ASPEC member (the second IP office) or share the same priority as the application filed in the other ASPEC member state. The search and examination results established by the second IP office would then be made available to the first IP office. The search and examination report constitutes the minimum documentation required for processing, accompanied by the patent claims referred to in the report. However, cited documents and corresponding translations are not required to be submitted at the time the ASPEC request is made but may be required later. In most ASEAN countries, including Indonesia, Malaysia, the Philippines, Thailand and Vietnam, instead of merely requesting for examination, a patent applicant may file a request for examination with an indication that ASPEC is desired. The ASPEC request has to be filed at the time of filing the request for examination, together with the search and examination results established by another ASPEC member state. The Examiner may then use the available search and examination results as a guide in conducting its own search and examination. In Singapore, which has a unique search and examination system, the aforementioned procedure would apply when local search and/or examination, together with an indication that ASPEC is desired, is chosen as a form of examination. It is important to note that unlike in the aforesaid countries where request for examination is a mandatory requirement, various options are available in Singapore, i.e. local search and/or examination, local examination based on corresponding search results, reliance on corresponding search and examination results, or reliance on an International Preliminary Report on Patentability.
ASPEC confers enormous benefits. Although, prima facie, it appears as though the immediate beneficiary of the ASPEC system would be the IP offices (as they have the advantage of ‘referring’ to the search and examination results of another IP office), in reality, the ultimate beneficiary is the Applicant. Thanks to ASPEC, better quality search and examination results are churned out in a considerably shorter span of time. The Applicants must bear in mind that there is absolutely no complication involved and/or a deviation required from normal practice in order to make an ASPEC request. Following the simple procedure of indicating that ASPEC is required, confers enormous benefits to the Applicant. It is thus strongly recommended that Applicants seriously consider this option and extract maximum advantage from the ASPEC programme.