Accelerated Examination in Patent Applications in Malaysia - ASPEC/PPH/Ordinary Accelerated Examination

When filing an invention patent application in Malaysia, you can use the following methods to request accelerated examination to speed up the examination process.

Expedited review:

After the patent application is published, the applicant may file a request for accelerated examination (Form 5H), together with a statutory declaration of reasons for accelerated examination, and pay an accelerated examination fee at the same time. The acceptable conditions for the corresponding reasons for accelerated examination under Regulation 27E(3) are:

• For national or public interest
• Infringement lawsuits exist
• The applicant has commercialized or plans to commercialize the invention
• Inventions involving green technology
• Receive funding from the government or an accredited institution
• Any other reasonable grounds

MyIPO will issue a notice for the patent application that agrees to accelerate the examination. The applicant must submit Form 5I after receiving the notice and pay the relevant fees within 5 days from the date of the notice. MyIPO will start substantive examination within 4 weeks after receiving the said documents and fees. If the applicant responds to the review report (Adverse Report) within 3 weeks, MyIPO will review again within 3 weeks and issue a final review decision; if the applicant does not respond in time within 3 weeks or the patent application still cannot meet the authorization conditions, the request for accelerated examination will be deemed to be withdrawn and return to the normal examination procedure.

The first examination opinion under the accelerated examination procedure will be issued within 2 months after the request for accelerated examination is submitted, and the patent application that meets the authorization conditions will be authorized by MyIPO within 5 working days after the Clear Report is issued.

ASPEC Project:

ASEAN Patent Examination Cooperation (ASPEC) is a program whereby an IP office of an ASEAN Member State (“AMS”) uses the search and examination (“S&E”) results of another ASEAN Member State IP office as a reference for its own S&E work. A total of 9 IP offices are participating, namely Brunei, Cambodia, Indonesia, Laos, Malaysia, the Philippines, Singapore, Thailand and Vietnam. Patent applicants are required to submit an Asia-Pacific Patent Technical Cooperation Application Form (ASPEC Request) to the second IP office and attach the following documents:

• Copies of the search report and examination report of the corresponding application issued by the First Intellectual Property Office
• A copy of the claims of the corresponding application, at least one of which is determined by the first IP office to be patentable or intended to be granted
• The ASPEC petition must be accompanied by a claim correspondence table showing the relevance of the claims in the corresponding application to the claims in the current application; a copy of the written opinion and a list of prior art
• ASPEC petitions and notifications of patentability/intention to allow may be filed at any time prior to the final examination decision.
• ASPEC projects must also meet the following conditions:
  • Linking of priority claims through the Paris Convention to patent applications filed at the second IP office and vice versa
  • Patent applications filed at the first IP office and the second IP office both have the same priority claim from another Paris Convention member country
  • The patent applications of the first and second IP offices are both national phase entry applications of the same PCT application

• Copies of reference documents are not required when making an ASPEC request. However, MyIPO may request applicants to provide copies of reference documents subsequently.
• When filing an ASPEC petition, if the supplementary documents in the petition are not originally in English, they must be accompanied by an English translation.
• MyIPO will conduct a substantive examination within 6 months of receiving the request from ASPEC.

PPH Project:

The Patent Prosecution Highway (PPH) examination is a bilateral framework agreement for sharing information between MyIPO and PPH partner offices. PPH is a framework whereby, upon the applicant's request, patent applications that have been determined patentable by an Office of Early Examination (OEE) are eligible for accelerated examination at an Office of Later Examination (OLE) through a simplified procedure. PPH allows each OLE to take advantage of the search and examination results previously completed by the OEE. The PPH program reproduces the participation conditions and requirements currently applicable to the global PPH programs, in particular the IP5 (USPTO, CNIPA, EPO, JPO and KIPO) and the Global PPH (GPPH) programs. It also reflects the PPH Global Principles developed within the framework of the PPH Working Group. PPH enables applicants whose claims have been determined patentable/allowable to file corresponding applications with PPH partner offices in an accelerated manner, while allowing the relevant offices to take advantage of existing work products. The patent offices that have signed bilateral PPH agreements with MyIPO are:

• JPO, effective October 1, 2014
• EPO, effective July 1, 2017
• CNIPA, effective July 1, 2018
• KIPO, effective December 1, 2020
• USPTO, effective February 2, 2023

An applicant may file a PPH request to request accelerated examination, including submitting relevant documents and meeting the following PPH requirements:

• a) The Malaysian application and the corresponding PPH partner office application must have the same priority date or filing date (priority relationship or joint PCT application)
• b) the corresponding application has at least one claim designated as patentable by the OEE as a PCT national search or examination authority
• c) All claims in the application participating in the PPH program must sufficiently correspond to the patentable/allowable claims in the corresponding application
• d) The patent application for which OLE is requested has not yet started substantive examination
• e) When making a PPH request, the applicant must submit an application form to MyIPO and indicate:
  • determine that the national application or PCT application has entered the national phase with a participating Office at the time of filing; or
  • The latest PCT work product issued by one of the participating Offices, such as the Written Opinion of the ISA (WO-ISA) or the International Preliminary Examination Report (IPER) (PCT-PPH).
• f) Required documents:
  • Submit a PPH request
  • Submit the claim correspondence table and claims
  • Submit all search reports or examination results from the Patent Office, or submit the latest examination opinion of the corresponding application from the OEE, including the patentability/allowability of the claims on which the PPH request is based, and submit an English or Malay translation
  • The latest work product of the international phase of the PCT application, i.e. WO-ISA or IPRP, and its English or Malay translation
  • Submit a copy of the allowable/patentable claims in the OEE application and their English or Malay translation
  • Submit all references or latest PCT work products cited in the examination report. Patent documents do not need to be submitted. Applicants will only be required to submit such documents if MyIPO has difficulty in obtaining them.
  • If the applicant has submitted these documents in the previous corresponding application for participation in the PPH program, the applicant does not need to resubmit these documents with the PPH request. The applicant only needs to refer to these documents and indicate the time when these documents were previously submitted in the request for participation in the PPH program.
  • MyIPO can obtain documents through DAS or Patentscope. Applicants do not need to submit copies of them, but must provide a list of documents to be retrieved. Machine translation of the documents will be accepted. If the machine translation is not sufficient, MyIPO may require the applicant to submit an accurate translation. If the OEE application is not published, the applicant must submit the referenced documents when submitting the PPH request.
• MyIPO will process the PPH within 3 months from the date of receipt of the PPH or PCT-PPH request, provided that the application meets the statutory requirements. If MyIPO issues an examination opinion, the applicant may respond and amend the application within 3 months of the issuance of the examination report. MyIPO will review the applicant's response within 3 months as soon as possible.