The PPH is an available option to expedite prosecution of Malaysian patent applications. The Intellectual Property Corporation of Malaysia (MyIPO) currently has PPH agreements with 5 foreign patent offices, namely, the Japan Patent Office (JPO), the European Patent Office (EPO), the China National Intellectual Property Administration (CNIPA), the Korean Intellectual Property Office (KIPO) and the United States Patent & Trademark Office (USPTO).

Under the PPH, a patent applicant may request accelerated examination by MyIPO based on favourable examination results of a corresponding JP, EP, CN, KR, US or PCT application (reference application) by the JPO, EPO, CNIPA, KIPO, USPTO (first Patent Office).

In order to qualify for processing under the PPH, the following conditions must be met:

• The Malaysian application and the reference application must correspond (priority relationship or common PCT application).
• One or more claims of the reference application have been indicated as allowable by the first Patent Office, either in a JP, EP, CN, KR or US application or in the first Patent Office’s capacity as a Search or Examination Authority under the PCT.
• The claims presented in the Malaysian application for examination sufficiently correspond to such allowed claims.
• Normal examination has been requested (previously or with PPH request).
• If the examination request was filed previously, examination has not yet started.

The following needs to be provided for submission when requesting PPH:

• All relevant office actions issued 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 for a PCT-based request.
• The claims deemed allowable by the first Patent Office.
• Any non-patent prior art references cited by the first Patent Office.
• English translations of the above documents, where applicable.
• Documents and their translations do not need to be submitted if available via the Advanced Industrial Property Network (AIPN), Dossier Access System (DAS) or WIPO’s Patentscope database. Applicant need only provide a list of documents to be retrieved.
• Machine translations are admissible. 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.

After the PPH request is filed, MyIPO will review the request and issue a decision (accept or reject) on the request within 2 weeks.

If accepted, the Malaysian application will be allocated to an Examiner for examination. Any office action will be issued within 3 months. The applicant must respond within 2 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. A final decision on grant should be obtainable within 6 months of submitting the PPH request.

The PPH program is bi-directional in nature so that examination at the JPO, EPO, CNIPA, KIPO or USPTO can also be accelerated based on favourable examination by MyIPO of a corresponding Malaysian application.

HENRY GOH & CO SDN BHD
Last updated 03 March 2023