Is the ASEAN Patent Examination Cooperation (ASPEC) a Viable Option for Applicants in Indonesia?
For applicants looking to expedite their patent applications in Indonesia who have a corresponding application in another Southeast Asian country, the ASEAN Patent Examination Cooperation (ASPEC) Program may be a viable alternative to consider. This is particularly so if the applicant does not qualify for participation in Indonesia’s Patent Prosecution Highway (PPH) Program with the Japan Patent Office. Theoretically, the ASPEC Program seeks to increase efficiency and reduce translation costs. Yet in practice, including in Indonesia, it has not become as popular as perhaps originally envisioned despite boasting a 100% allowance rate at final decision (based on official ASEAN statistics through January 2020).
The Directorate General of Intellectual Property of the Republic of Indonesia under the Ministry of Law and Human Rights of the Republic of Indonesia (hereinafter referred to as “DGIP”) has established various procedures under which the examination of a patent application may be accelerated. Under these procedures, DGIP will advance an application out of turn for faster examination if the applicant files the following special requests through the ASPEC program, or simply by providing the examiner in charge the granted corresponding claims from other Patent Offices, such as the United States Patent and Trademark Office (USPTO), Japanese Patent Office (JPO), European Patent Office (EPO), and others.
WHAT IS AEAN PATENT EXAMINATION COOPERATION (ASPEC)?
Launched on 15 June 2009, ASPEC was the first regional patent cooperation project in Southeast Asia and remains part of the ASEAN Intellectual Property Rights Action Plan 2016-2025 to create “a more robust ASEAN IP System by strengthening IP Offices and building IP infrastructures in the region.” The Association of Southeast Asian Nations (ASEAN) consists of 10 member states that as a single economic unit had a GDP of US$9.34 trillion in 2019 and contains approximately 650 million people. Of the 10 ASEAN member-states, nine are currently participating members (“AMS”) in the ASPEC Program: Brunei Darussalam, Cambodia, Indonesia, Laos PDR, Malaysia, the Philippines, Singapore, Thailand and Vietnam; Myanmar is the lone exception.
Under the ASPEC Program, search and examination (S&E) results from one AMS can be used by an examiner at another AMS IP Office to help develop search criteria or strategy more quickly. it could also help to provide an examiner with information and/or assessment of prior art to which the examiner might not otherwise have access. By using a positive S&E result from one AMS as a reference to amend a pending application in another AMS jurisdiction, it is possible to reduce the complexity of an examiner’s work, thereby increasing efficiency and generating faster turnaround times, as well as better search and examination results. It should be noted that while the S&E results are not binding on the AMS, they can be used as a useful reference for search/examination purposes. Further, as the ASPEC Program requires English to be used for these documents, applicants may save up on translation costs.
Based on official ASEAN statistics, as of January 2020, there has been 627 ASPEC requests submitted across all participating member-states. In Indonesia, there has been 81 ASPEC requests, with 69 of those using S&E results from Singapore, followed by eight from Malaysia, and four from the Philippines.
In Indonesia, there are no official fees to request participation in the ASPEC Program. Further the request can be made at any time before grant or refusal. The requirements are as follows:
- A copy of the Search and Examination (S&E) report documents from ASPEC Member States (AMS) or the Examination report (“minimum documents”) of a corresponding application from the first IP Office;
- A copy of the claims referred to in the minimum documents submitted, with at least one claim determined by the first IP office to be allowable/patentable; and
- Table of claims correspondence.
At the time of filling the ASPEC request form, all documents mentioned above must be accompanied by an English translation if they are not originally in English. A patent applicant simply has to file a duly completed ASPEC Request Form available at respective AMS IP Offices’ websites accompanied by a copy of the search and examination documents of a corresponding patent application for the same invention issued by any of the other participating AMS IP Offices, and a copy of the claims referred to in the reports submitted.
Indonesia is one of the founding members of ASEAN and home to the ASEAN Secretariat. It is a G20 economy, and the fourth most populous country in the world, as well as being an active patent jurisdiction with around 10,000 applications filed each year. Currently, it takes approximately 2.5-3 or more years from filing to grant, assuming a smooth application process.
Such short pendency times are usually only obtained by a patent applicant that has a corresponding patent granted from a ‘developed’ jurisdiction (e.g., US, EU, Japan, South Korea, China, and/or Australia) to which the Indonesian applicant can be amended to match those granted claims. Theoretically, the ASPEC Program can be a choice for applicants in Indonesia that do not qualify for the PPH Program who have a positive examination result from another ASEAN member state. As noted above, S&E results from Singapore are the most popular to be used in Indonesia. However, the program is not yet commonly used as it is still not yet clear whether participation really does speed up examination and grant. Further, while there are no official fees, there will be agent fees as well as translation costs that must be taken into consideration. On the other hand, a 100% allowance rate at final decision is a very enticing factor for eligible applicants to consider as well.
As the member states of ASEAN work to develop into more robust and mature patent jurisdictions in accordance with the vision and mission of the ASEAN IPR Action Plan 2016-2025, there is the possibility that the usefulness and thus the popularity the ASPEC Program will grow in future.
Any individual and/or corporation looking to register their patent and other intellectual property in Malaysia and accelerate the patent grant in Southeast Asia countries via the ASPEC Program should look no further. We, Pintas Group, are your optimum selection to go for any intellectual property registration (including but not limited to trademark registration, patent registration, etc.) or any IP-related services in any ASEAN country.
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