Most members of the Association of Southeast Asian Nations (ASEAN) have enacted intellectual property (IP) laws either inherited from their colonial past or adopted later as part of a drive to modernise legislation. A shared desire to harmonise national laws in the region culminated in the adoption of the ‘ASEAN Framework Agreement on Intellectual Property Co-operation’ on 15 December 1995. This agreement has been followed by recent initiatives in the field of patents and designs, such as the introduction of guidelines for the ASEAN Design Filing System (ADFS) and the establishment of the ASEAN Patent Examination Co-operation Programme (ASPEC).
REGIONAL IP OFFICE OR REGIONAL IP SYSTEM?
Both ADFS and ASPEC appear to favour the establishment of a regional IP office, rather than a regional IP system, as a means of harmonising relevant legislation across member states. A regional IP office would be a centralised organisation that processes and examines applications for the registration of various ASEAN IP rights. An ASEAN registration issued by the regional office would resemble EC trade mark registration and domestic registration issued by national IP offices would continue to co-exist with any ASEAN registration. An ASEAN regional IP system, however, would establish IP laws applicable to all ASEAN member states. Under such legislation, member states would continue to issue registrations based on national IP legislation and there would be no regional registration system.
Current design law (eg filing requirements, protection requirements, examination and registration procedures, and terms of protection) varies across ASEAN member states. To integrate the design system so that ‘registration in one ASEAN member state is registration in all ASEAN member states’, guidelines have been drawn up by the ASEAN Working Group on IP Co-operation (AWGIPC) for the creation of an ASEAN Design. The ASEAN Design would be effective throughout the region and administered by a single office. Guidelines for such a system have been drawn up and an ASEAN industrial design application form has been prepared. However, it is not yet possible to file a single ASEAN Design application and no regional design office has been established. The success of an ASEAN-wide system of design registration will depend on the willingness of member states to take a step forward by setting up a regional office. The Philippines government has expressed a strong desire to host such an office.
The ASPEC commenced on 15 June 2009 and will be regularly reviewed. Participating IP offices are located in Singapore, Cambodia, Indonesia, Laos, Malaysia, the Philippines, Thailand and Vietnam. The programme is the first of its kind in the region and has two main objectives:
- reduced work and faster turnaround time; and
- improved search and examination procedures.
It is intended to be a kind of ‘patent prosecution highway’ that streamlines patent prosecution actions by sharing search and examination reports between participating patent offices. It would permit each office to benefit from work undertaken by other participating offices, with the goal of reducing examination workload and improving patent quality.The patent office that receives the first application is called the Office of First Filing (OFF), while the patent office reviewing claims allowed by the OFF is called the Office of Second Filing (OSF). Under ASPEC, the OSF may consider the search and examination documents it receives from the OFF. However, the OSF is not obliged to adopt any of the findings or conclusions reached by the OFF. The OSF will proceed with and conclude its own search and examination work, and decide whether or not to grant the patent, in accordance with relevant national laws. Under ASPEC the patent applicant would file a duly completed ASPEC request form, accompanied by a copy of the search and examination reports in respect of a corresponding application (the minimum documents), and a copy of the claims referred to in the minimum documents. The ASPEC request form must be filed on the same day as the patents request for substantive examination form or a response to a written opinion. The ASPEC request form may be accompanied by a copy of any written opinions and a list of prior art, if available. A copy of each of the documents cited in the minimum documents is not required when filing the ASPEC request form but may be required at a later stage. If not originally in English, any documents submitted at the time of filing the ASPEC request form must be accompanied by an English translation. The effects of the launch of the ASPEC are yet to be seen. It is expected, however, that ASPEC will improve co-operation between ASEAN IP offices in the fields of patent search and examination over the next few years, and this should be of benefit to patent applicants. Interestingly, on 1 July 2009, Singapore and Japan entered into an agreement in relation to the patent prosecution highway, Japan’s first agreement of this kind with an ASEAN member state.