Effective 01 July 2017, the Intellectual Property Corporation of Malaysia (MyIPO) and the European Patent Office (EPO) have commenced a Patent Prosecution Highway (PPH) pilot program. The program will initially run for a trial period of three years until 30 June 2020, followed by an evaluation to determine whether and how the program should be fully implemented thereafter.

Under this PPH program, an applicant that has a pending Malaysian patent application may request accelerated examination by MyIPO based on favourable examination by the EPO of a corresponding European or PCT application (hereafter collectively called the “reference application”). In order to qualify for processing under the PPH program, the following conditions must be met:

• The Malaysian application and the reference application examined by the EPO must correspond – this is defined in terms of a priority relationship between the applications or a common PCT application.
• One or more claims of the reference application have been indicated as allowable by the EPO, either in a regional EP application or in the EPO’s capacity as an International Searching Authority or International Preliminary Examining Authority under the PCT.
• The claims presented in the Malaysian application for examination under the PPH sufficiently correspond to such allowed claims.
• A request for normal examination has been filed with MyIPO (either previously, or with the PPH request).
• If the examination request was filed previously, MyIPO has not yet started the examination.

A request for PPH processing is made by submitting the following documents:

• An official request form.
• A claim correspondence table that shows the relationship between the pending Malaysian claims and the claims deemed allowable by the EPO.
• All relevant office actions issued by the EPO or, where applicable, the latest office action containing the allowable claims on which the PPH request is based, or the Written Opinion or IPRP issued by the EPO for a PCT-based request.
• The claims determined to be allowable by the EPO.
• Any non-patent prior art references cited by the EPO Examiner.
• English translations of the above documents if they are not in English.
• Documents and their translations do not need to be submitted if they have already been filed in the EP application or are available to the MyIPO Examiner via the Dossier Access System (DAS) or WIPO’s Patentscope database. In that case, the applicant need only provide a list of the documents to be retrieved.
• Machine translations are admissible in the first instance, though MyIPO may request an accurate translation if the machine translation is insufficient.
• If the reference application has not been published, the documents must be submitted with the PPH request.

Upon filing a PPH request together with the required documentation, MyIPO will review it within two weeks and either accept or reject the request. Once accepted, an application will be allocated to an Examiner for accelerated examination. Any office action will be issued within three months. The applicant must respond within two months. Provided the application as filed with the PPH request, or as amended in response to the office action, meets all requirements, the application will proceed to grant. Thus, a final decision on grant should be obtainable within six months of submitting the PPH request.

The above description focuses on using the program to accelerate examination at MyIPO. In fact, the program is bi-directional in nature so that examination at the EPO can also potentially be accelerated based on favourable examination by MyIPO of a corresponding Malaysian application.