ASPEC accepts Written Opinion in the process of expediting Patent Application

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The ASEAN Patent Examination Co-operation (ASPEC) will now be accepting written opinions issued by any participating intellectual property office under the ASPEC. This came into force on June 15, 2021. Like that of other bilateral or multilateral agreements where one country accepts others’ final search and examination results from the IP office, similarly, ASPEC allows using of the search and examination from IP offices of any of ASEAN members states for its patent application. This way by using the search and examination reports generally speeds up the whole process of grant of the patent and it applies to all the member states, Singapore, Indonesia, Malaysia, Philippines, Thailand, Vietnam, Brunei, Cambodia, and Laos.

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[Image Source: asean.org/]

Written Opinion

The recent move of accepting the written opinion in ASPEC will be applicable if there is one allowable claim, except in Thailand. Assessing the invention characteristic with regards to the applicability and inventive steps in furtherance with the grant of a patent, written opinion forms an important part of the process. Such acceptance of the written opinion will be very useful for the inventor and also for the IP offices of the respective country which will help expedite the process in the examination. Through the acceptability of this written opinion, the inventor will also be aware of the credibility of the invention and the applicability of the same. This way the inventor can decide how to move forward with the invention or request examination in other member states.

Request for ASPEC can be done at the earlier stage. In case, the inventor files for the patent in other countries, the request for ASPEC needs to be done at the early stage, before the final decision of grant or refusal of the application in the country where the application is filed. So as per the context, there is no need to wait for the final result if the written opinion of the first IP office can be shared, it becomes more suitable for the inventor to claim his invention in the second IP office. ASPEC cannot be requested at the later date. Therefore with the use of written opinion, such requests can be done at the early stage.

Nevertheless, the process can take time to run smoothly, as there can be difficulty with examiners to follow with the written opinion, more so, when there is no obligation to follow the results of a written opinion. Issues with regards to the claims in the application compared with the claims in the corresponding application are allowed as seen in the Notice of Intention to Grant. Such issues might arise with the examiners. Even with conformed claims with that of the corresponding application’s claim, there are chances that the examiner will only allow those claims which are allowed or granted. So in a written opinion where there are only one allowable claim and other claims are not, the examiner’s response to such a situation remains doubtful. This will be more doubtful, in case it is a pharmaceutical application where each country has different standards.

About ASPEC

The ASEAN Patent Examination Co-operation (ASPEC) is the first regional patent work-sharing program among nine participating ASEAN Member States (AMS) IP Offices of Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand, and Viet Nam. The program was launched on 15 June 2009.

The purpose of this program is to share search and examination results between the participating offices to allow applicants in participating countries to obtain corresponding patents faster and more efficiently. The program will potentially reduce duplication of the search and examination work done, thereby saving time and effort. Additionally, search and examination work done on a corresponding application serves as a useful reference in producing quality reports.

ASPEC operates in the English language in all participating AMS IP Offices and is free of charge to the applicant at any participating AMS IP Office. However local search and examination fees at AMS IP Offices will still apply.

Author: Saransh Chaturvedi an associate at Global Patent Filing,  in case of any queries please contact/write back us at support@globalpatentfiling.com.

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