To expedite prosecution of a National Phase application filed at the Malaysia Intellectual Property Office (MyIPO), a request for Patent Prosecution Highway in Malaysia can be filed, as long as the latest work product in the international phase of a PCT application corresponding to the application indicates at least one claim as patentable/allowable (under the criteria of novelty, inventive step and industrial applicability).
The PCT-PPH route can only be taken if the Malaysian application has at least one corresponding application in Japan through the Japan Patent Office (JPO).
To file a request for Patent Prosecution Highway in Malaysia, the following documents must be submitted:
(a) A copy of the Written Opinion of the International Search Authority together with its English Translation.
(b) A copy of a set of claims which the latest international work product of the corresponding international application indicated to be patentable/allowable and their English translations if they are not in English.
(c) A copy of references cited in the International Preliminary Report on Patentability of the corresponding international application.
(d) A claims correspondence table which indicates how all claims in the application sufficiently correspond to the claims indicated to be patentable/allowable (please complete the table below)
Should documents (a), (b) and (c) be available – together with corresponding English translations – at WIPO, only document (d) needs to be provided.
Procedure for filing a request for PPH
A request for Substantive Examination (Form 5) must be filed at MyIPO either at the time of the PCT-PPH request or earlier.
A request for PCT-PPH attached with the relevant documents must also be filed, and applicants must await the issuance of an examination report from MyIPO.
For Malaysian applications whereby a PPH request is made based on a granted Japanese patent, we expect to receive the first examination report within 3 months from the PPH request date.
For Malaysian applications whereby the PPH request is made based on a pending Japanese patent application/ combination of several Japanese patents, we expect to receive the first examination report within 3 – 6 months from the PPH request date.