ASEAN PATENT EXAMINATION CO-OPERATION (ASPEC) - INTRODUCTION & LATEST DEVELOPMENTS

1. ASEAN PATENT EXAMINATION CO-OPERATION (ASPEC) - INTRODUCTION & LATEST DEVELOPMENTS SANDRA LYNN MERINDA Senior Assistant Director, Registry of Patents Intellectual Property Office of Singapore 14 December 2011 Bangkok, Thailand

2. What is ASPEC? ASPEC is a work-sharing initiative among ASEAN IP Offices in the area of patent work. Launched on 15 June 2009. 8 participating ASEAN countries:- • Cambodia • Indonesia • Lao PDR • Malaysia • Philippines • Singapore • Thailand • Viet Nam

3. Objectives of ASPEC

4. Key Features of ASPEC • Patent applicant in one ASEAN Member Country (AMS) is allowed to submit the first available search & examination (S&E) documents in any participating AMS. • The AMS receiving such S&E documents will take that document into consideration as a reference source in its S&E work. • No obligation to accept the results from another jurisdiction. • No changes to legislation is required.

5. ASPEC Eligibility AMS = ASEAN MEMBER STATES Claim priority ASEAN MEMBER STATE ASEAN MEMBER STATE “first IP Office” “second IP Office” Another Paris Convention member Claim priority Claim priority ASEAN MEMBER STATE ASEAN MEMBER STATE “first IP Office” “second IP Office”

6. Corresponding Application What is a corresponding patent application ? Scenarios of corresponding patent applications for the purposes of ASPEC, if the ASPEC Request Form is filed with IPOS: ASPEC request is filed in SG and SG examiners may refer to the S&E results of the MY application Scenario 1 S&E results SG MY (corresponding application) (claiming priority) Scenario 2 AU ASPEC request is filed in SG and SG examiners may refer to the SE results of the PH application (claiming priority) (claiming priority) S&E results SG PH (corresponding application)

7. ASPEC requirements in SG: In a nutshell

8. ASPEC requirements in SG: In a nutshell

9. Developments in ASPEC • ASEAN Technical Meeting on ASPEC Implementation was held in Philippines in April 2010. • AWGIPC in 2010 approved the ASPEC Task Force Terms of Reference. • Task Force was thereafter created and a meeting was convened in Philippines in May 2011 to discuss, among others,: • Procedures & Operations of ASPEC • Challenges & Possible Solutions • Way Forward • The ASPEC Rules of Procedures were revised and adopted at the recent Special AWGIPC Meeting in Nov 2011.

10. Revised ASPEC Concepts • Step 1: APPLICANT SUBMITS : • ASPEC Request Form • Search & Exam Report from AMS “first IP Office” • Copy of claims referred to in (b) filed in Step 3 (ii): AMS “second IP Office” arranges to accept translation of reports into English directly from the AMS “first IP Office” AMS “second IP Office” No Applicant approaches AMS “first IP Office” for translation (and verification) to English Step 2: Are AMS “first IP Office” reports in English? No Step 3 (i): Applicant arranges for translation (and verification) of reports into English according to requirements of AMS “second IP Office” Applicant bears the cost of translation (and verification) to English Yes Step 4: Are ASPEC documents complete? No Applicant informed to file complete set of documents All documents submitted are to be in English, and if not originally in English, may need to be accompanied by an English translation. The English translation of any document may need to be verified according to the requirements of the AMS “second IP Office”. Yes AMS “first IP Office” Can Refer Step 5: Patent Examiners in AMS “second IP Office” Not Bound by reference Search & Exam Reports Step 6: Patent Examiners Complete ASPEC Survey Form

11. THANK YOU