Global Patent Prosecution Newsletter - October 2020: Protecting Innovation in Asia

Sterne, Kessler, Goldstein & Fox P.L.L.C.
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Sterne, Kessler, Goldstein & Fox P.L.L.C.

Business factors typically drive many strategy decisions in terms of patent prosecution in foreign jurisdictions. Factors that influence these decisions might include the likelihood of foreign competition, the size of foreign markets, as well as foreign manufacturing and/or licensing strategies. Typically, the nature of the technology and local factors such the nature of the industry, and costs and enforceability of patents also play a key role. Thus, a great deal of information should be taken into account when considering filing strategies in Asia.

Asia can typically be broken down into four major geographic regions: (1) Northern Asia – which includes China, Taiwan, Japan and South Korea; (2) Western Asia – which includes  Bangladesh, India, and Sri Lanka; (3) the ASEAN 10 or South East Asia – which includes Singapore, Malaysia, Indonesia, Thailand, Philippines, Vietnam, Brunei Darussalam, Cambodia, Laos and Myanmar; and (4) Oceania – which includes Australia and New Zealand. Importantly, Asia includes 3 out of the top 10 world economies, and 14 of the top 50, so it is important to recognize the continent’s potential economic impact.

What then are best practices to effectively protect innovation in Asia? Utility models are an attractive options for protection in China, for example. Utility model patents, which have a 10-year term, are not substantively examined and are granted after a formal examination, which generally takes about one year. Unfortunately, only a small number of foreign applicants take advantage of utility models, but it is used extensively by Chinese applicants. It is important to note that filing utility model patents does not preclude filing of a utility patent and a good practice would be to include filing both utility and utility model applications.

Australia also offers an excellent way to accelerate prosecution and provides a potential springboard to accelerated prosecution globally. The Australian Patent Office provides for a expedited examination mechanism that requires no additional fees, in comparison to the USPTO. Since 2013, eligibility criteria for seeking expedited examination in Australia have been tightened, but criteria ultimately depend on the circumstances of the invention, as well as “commercialization considerations”, “infringement proceedings” or “licensing reasons.” For example, “green technologies” have been especially amenable to acceleration. Satisfactory reasons need to be set out in writing. Importantly, the accelerated grant can then be used to accelerate examination in a country where Australia has a patent prosecution highway arrangement. And since Australia is a member of the Global Patent Prosecution Highway, an Australian grant can be a springboard to acceleration in Austria, Canada, Denmark, Estonia, Finland, Germany, Hungary, Iceland, Israel, Japan, Norway, Poland, Portugal, Russia, Singapore, Spain, South Korea, Sweden, the United Kingdom, the United States, New Zealand, Colombia, Peru, and Chile.

Moreover, the ASEAN Patent Examination Cooperation (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 Vietnam. Launched in 2009, ASPEC is an arrangement where a patent applicant that receives a favorable search and examination report in one ASPEC country can request that report be taken into account when examining the application in any of the other ASPEC member Offices. While not guaranteed in practice, the favorable report will most likely result in a favorable examination in the others. The program will potentially reduce duplication on the search and examination work done, thereby saving time and effort. ASPEC operates in the English language in all participating AMS IP Offices and is free-of-charge to the applicant at any participating IP Office.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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