The Patent Prosecution Highway (PPH) pilot program between the United States Patent & Trademark Office (USPTO) and the Intellectual Property Corporation of Malaysia (MyIPO) commenced on 2 March 2023. The pilot program will run for a period of three (3) years, ending on 1 March 2026.
This international program is designed to expedite and streamline the examination of patent applications filed in different participating countries or regions. When an applicant receives a positive examination result from the initial participating patent office, they can request fast-tracked examination of corresponding claims in a related patent application pending in a second patent office.
Applicants with application(s) that fulfill the requirements under the MyIPO-USPTO PPH pilot program can request accelerated examination of their patents through the program.
Eligibility
1. A Malaysian application is
- an application which claims priority under the Paris Convention to the USPTO application(s)
- a PCT national phase application without a priority claim
- an application which claims priority under the Paris Convention to the PCT application(s) without a priority claim
2. A Malaysian application which claims priority from multiple USPTO or direct PCT applications, or which is a division application based on the originally filed application that is included in (a) to (c) above is also eligible.
3. At least one corresponding application exists in the USPTO which has one (1) or more claims that are determined to be patentable/allowable by the USPTO.
4. All claims in the Malaysian application, as originally filed or as amended, must sufficiently correspond to one (1) or more of those claims indicated to be patentable/allowable by the USPTO.
Claims are considered to sufficiently correspond where:
- Claims are of the same or similar scope
- Claims are narrower than in scope than the claims in the corresponding application(s)
5. The Malaysian application must have been published).
6. A "Request for Substantive Examination" must be filed before or at the time of the PPH request.
7. Examination has not commenced at the time of filing the PPH request.
Documents Required
- Copies of all office actions
- Copies of all claims determined to be patentable/allowable by USPTO
- Copies of references cited by USPTO examiner
- Claim correspondence table
The Asia Pacific region represents over a third of the world's population and presents a wealth of opportunities for businesses. With its vast consumer base, emerging middle class, and rapid digital adoption, companies can tap into this market's potential for growth and expansion.
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DCC Advanz are a strong local team with more than 20 years' experience offering a full suite of intellectual property services before the Intellectual Property Corporation of Malaysia.
DCC's extensive Asia Pacific footprint allows us to assist our local and overseas clients in this important and growing market. We offer more than 140 years experience and on-the-ground expertise across the region.
For information on filing requirements throughout the region, click here to view our Asia Pacific Patent and Trademark Filings Guides.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
