Written Opinions Are Now Accepted under the ASEAN Patent Examination Co-operation (ASPEC) Programme

The ASEAN Patent Examination Co-operation (ASPEC) Programme is a work sharing initiative between participating Patent Offices in the ASEAN region. The participating Patent Offices are the Patent Offices of Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand and Viet Nam. The Programme allows a patent applicant to use corresponding search and examination results issued by a first participating Patent Office (“the first Patent Office”) for consideration in a second participating Patent Office (“the second Patent Office”), with a view to accelerating search and examination in the second Patent Office.

Prior to 15 June 2021, only the final search and examination results of a corresponding patent application may be used in an ASPEC request. Now, with effect from 15 June 2021, it is acceptable to use a Written Opinion (i.e. non-final search and examination results) for an ASPEC request, as long as the Written Opinion is issued with at least one allowable claim. The only exception is the IP Office of Thailand, where final search and examination results are still required to be submitted in an ASPEC request.

If a Written Opinion is used, in addition to submitting the documents which should accompany the ASPEC Request Form (i.e. a copy of the Written Opinion, a copy of the claims referred to in the Written Opinion and a claim correspondence table, where required by the second Patent Office), patent applicants must also email the following information to the monitoring authority, [email protected], and to the second Patent Office ASPEC focal point:

1. the application number of the corresponding patent application filed with the first Patent Office;
2. the name of the second Patent Office and the application number of the patent application filed with the second Patent Office;
3. the date of the ASPEC request;
4. an indication of reliance on a Written Opinion or Written Opinions (more than one Written Opinion may be relied upon); and
5. the name of the patent applicant.

Do get in touch with us for further details on the above changes and on patenting strategies in view of these changes.

This article is produced by our Singapore office, Bird & Bird ATMD LLP, and does not constitute legal advice. It is intended to provide general information only. Please contact our lawyers if you have any specific queries.