John Walker, from Dennemeyer & Associates, examines Patent Prosecution strategies in the Asian region including the use of Australia as a platform, the judicious use of the PPH and the consideration of regional treaties.

Although this article and the principles contained herein have a broad international application, it is directed more particularly at Patent Prosecution strategies in the Asian region. In the context of the patent lifecycle, it aims to address the prosecution component where “commoditization” has not progressed at the same rate as other lifecycle components such as annuities and filings. In particular, the use of Australia as a platform for this prosecution strategy is addressed, as well as the judicious use of Patent Prosecution Highway (PPH) mechanism(s) and the consideration of regional treaties, are discussed. Use of these in a coordinated manner can provide a cost-effective approach for patent applicants with significant Asian portfolios. Before looking at these three elements of an Asian patent strategy, a few patent strategy concepts are introduced, as well as providing the overall economic role of Asia in a patenting context.

Patenting strategy overview

As a precursor to identifying specific Patent Prosecution mechanisms, one needs to be cognizant that all patent applicants will have a range of preferred patenting strategies, which are directly influenced by their broader strategies. These might include business decisions such as the likelihood of foreign competition, the size of foreign markets, as well as foreign manufacturing and/or licensing strategies. This option will also be influenced by technical decisions like the nature of the technology (as it relates to the applicant’s business – core, peripheral, stage of development, life span of the invention, etc.). These issues are more “why file?” questions. Also, one needs to consider the “where to file?” and “when to file?” questions. The “where to?” decision will address local factors such as market size, population, GDP/capita, nature of the industry, technical capabilities, etc., as well as the patenting conditions (like standards, costs, and enforceability). The “when to?” (both for filing and prosecution) is taken, in this article, to be as soon as possible – provided cost considerations are addressed.

However, it needs to be recognized that, in some cases, the preference might be to defer costs for as long as possible. Deferring the cost associated with grant and validation of a European patent is a good example. However, in this article, and as will be discussed later, it is assumed that the applicant’s filing – but more particularly prosecution – strategy is to obtain grant (and thus certainty) as early as possible, and all within a coordinated and cost-effective framework.

Asia – A broad overview

Asia can be conveniently broken down into four geographic regions:

(a) Northern Asia which comprises three large economies – China, Japan and South Korea, as well as Taiwan;
(b) Western Asia, which includes the large economy of India, as well as Sri Lanka and Bangladesh;
(c) The ASEAN 10 or South East Asia – Singapore, Malaysia, Indonesia, Thailand, Philippines, Vietnam, Brunei Darussalam, Cambodia, Laos and Myanmar;
(d) Oceania – including Australia and New Zealand.

As a total grouping, and based on IMF 2016 figures, Asia contains three of the world’s largest 10 economies (China, Japan, and India) and 12 of the largest 50. If the ASEAN 10 (Association of South East Asian Nations) were combined, it would represent the 7th largest economy and is predicted to be the 4th largest by 2050.

From a patent perspective, Asia includes three of the IP5 – China, Japan, and South Korea. Further, and based on WIPO 2016 figures, Asia contains 12 of the top 20 patent filing destinations. Again, aggregating the ASEAN 10 results in Patent Filing numbers just outside the IP5. Another interesting statistic for the ASEAN 10 shows local filings represent only 12% of total filings, and clearly, strategies to focus on filings from foreign applicants need to be a major focus in this particular region.

Australia as a platform for the strategy

As a general rule, the time to commence the Patent Prosecution stage is largely determined by the individual Patent Office. In some jurisdictions, the Patent Office simply issues an Examination Report at a time, often dependent upon examiner workload, technology expertise and the like – the USPTO and EPO being examples. Other jurisdictions, like Canada and Japan, require the applicant request examination within five years and three years respectively of the filing date. Another variation is in Australia (and New Zealand) where a specified period (five years in each case) is stipulated, but if the Patent Office issues a direction to the applicant to request examination, then it must do so within three months (AU) and two months (NZ) of receiving the Direction. These “standard” procedures set the fundamental framework for commencing prosecution. However, if one is to fast track, expedite or accelerate this prosecution phase, then one must identify suitable and cost-effective mechanisms in particular jurisdictions to achieve the desired benefits. By itself, seeking a more rapid examination of an application in a particular jurisdiction does no more than speed up examination and, ultimately, the grant. In some jurisdictions, additional fees are necessary to utilize this advantage. However, if “fast-tracked” examination can be suitably combined with Patent Prosecution Highway options (see below), this can lead to greater certainty and potential cost savings to the applicant across its entire portfolio. Seeking a more rapid examination is given different names depending on jurisdiction.