Procedures to File a Request to the MyIPO (Intellectual Property
Corporation of Malaysia) for Patent Prosecution Highway Pilot
Program between the SIPO (State Intellectual Property Office of theP.R. China)
The pilot period of this Patent Prosecution Highway (PPH) pilot program will commence on July 1,
2018 for a duration of two years and ending on June 30, 2020. The pilot period may be extended
if necessary until the MyIPO and SIPO receive sufficient number of PPH requests to adequately
assess the feasibility of PPH program.
The Offices may also terminate the PPH pilot program if the volume of participation exceeds
manageable level, or for any other reason. Ex Ante notice will be published if the PPH pilot
program is terminated.

PPH using the national work products from the SIPO
Applicants can request accelerated examination by a prescribed procedure including submissionof relevant documents on an application which is filed with the MyIPO and satisfies the following
requirements under the MyIPO - SIPO PPH pilot program based on the SIPO application.
When filing a request for the PPH pilot program, an applicant must submit a request form
“Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program” to the MyIPO.

1. Requirements(a)(i)

The MyIPO application (including PCT national phase application) isAn application which validly claims priority under the Paris Convention to theSIPO application(s) (examples are provided in ANNEX I, Figures A, B, C, F, G andH),or(ii) a PCT national phase application without priority claim (example is provided in
ANNEX I, Figure I),or(iii) an application which validly claims priority under the Paris Convention to the PCTapplication(s) without priority claim (examples are provided in ANNEX I, Figure J,
K and L).
The MyIPO application, which validly claims priority to multiple SIPO or direct PCT
applications, or which is the divisional application validly based on the originally filed
application

thatisincludedin(i)1to(iii)

above,isalsoeligible.

(b)At least one corresponding application exists in the SIPO which has one or moreclaims that are determined to be patentable/allowable by the SIPO.
The corresponding application(s) can be the application which forms the basis of the priority
claim, an application which derived from the SIPO application which forms the basis of thepriority claim (e.g., a divisional application of the SIPO application or an application whichclaims domestic priority to the SIPO application (see Figure C in Annex I)), or an
SIPO national phase application of a PCT application (see Figures H, I, J, K and L inAnnex I).
Claims are “determined to be allowable/patentable” when the SIPO examiner explicitly
identified the claims to be “allowable/patentable” in the latest office action, even if theapplication has not been granted yet.
The office action may be either:(i)

Decision to Grant a Patent(ii) First/Second/Third/…Office action(iii) Decision of Refusal(iv) Reexamination Decision, and(v) Invalidation Decision(c)

All claims in the MyIPO application (for which an accelerated examination under thePPH pilot program is requested), as originally filed or as amended, must
sufficiently correspond to one or more of those claims indicated to bepatentable/allowable in the SIPO.
Claims are considered to “sufficiently correspond” where, aside from differences due totranslations and claim format, the claims in the MyIPO application are of the same orsimilar scope as the claims in the SIPO application, or the claims in the MyIPO arenarrower in scope than the claims in the SIPO.
In this regard,a claim that is narrower in scope occurs when SIPO claimis amended to befurther limited by an additional technical feature that is supported in the specification(description and/or claims).
A claim in the MyIPO which introduces a new/different category of claims to those claims
indicated to be patentable/allowable in the SIPO is not considered to sufficiently
correspond. For example, if the SIPO claims only contain claims to a process ofmanufacturing a product, then the claims in the MyIPO are not considered to sufficiently
correspond if the MyIPO claims introduce product claims that are dependent on thecorresponding process claims.

It is not necessary to include “all” claims determined to be patentable/allowable in the SIPO in an
application in the MyIPO (the deletion of claims is allowable). For example, in the case where an2

application in the SIPO contains 5 claims determined to be patentable/allowable, the application inthe MyIPO may contain only 3 of these 5 claims. Any claims amended or added after the grant of
the request for participation in the PPH pilot program but before the MyIPO first office action must
sufficiently correspond to the claims indicated as patentable/allowable in the SIPO application.
(d)

The MyIPO application must be made available for public inspection after 18 months.

(e)A “Request for Substantive Examination” must have been filed at the MyIPO either
at the time of the PPH request or previously.

(f)

The MyIPO has not begun examination of the application at the time of filing the PPH
request.

2. Documents to besubmitted
Documents (a) to (c) below must be submitted by attaching form “Request for
Participation in the Patent Prosecution Highway (PPH) Pilot Program”. Note that evenwhen it is not needed to submit certain documents below, the name of the documents
must be listed in the form “Request for Participation in the Patent Prosecution Highway(PPH) Pilot Program” (Please refer to the example form below for the details).
(a)Copies of all office actions (which are relevant to substantial examination forpatentability in the SIPO) which were issued for the corresponding application bythe SIPO, and translations thereof.
Either Malay or English is acceptable as translation language. Machine translation will beadmissible. If it is impossible for the examiner to understand the translated office action
due to insufficient translation, the examiner can request the applicant to resubmit
translations.

(b)

Copies of all claims determined to be patentable/allowable by the SIPO, andtranslations thereof.
Either Malay or English is acceptable as translation language. If it is impossible for theexaminer to understand the translated claims, the examiner can request the applicant toresubmit translations.

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FORM PPH1(c)Copies of references cited by the SIPO examiner
The documents to be submitted are those cited in the above-mentioned office actions. Documents
which are only referred to as references and consequently do not constitute reason for refusal do
not have to be submitted.
If the references are patent documents, the applicant does not have to submit them. When theMyIPO does not possess the patent document, the applicant has to submit the patent document at
the examiner’s request. Non-patent literature must always be submitted. The translations of thereferences are unnecessary.

(d) Claim correspondence table
The applicant requesting PPH must submit a claim correspondence table, which indicates how allclaims in the MyIPO application sufficiently correspond to the patentable/allowable claims in theSIPO application.
When claims are just literal translation, the applicant can just write down that “they are the same” inthe table. When claims are not just literal translation, it is necessary to explain the sufficientcorrespondence of each claim.
When the applicant has already submitted above documents (a) to (d) to the MyIPO through simultaneousor past procedures, the applicant may incorporate the documents by reference and does not have to attachthem.

3. Example of “Request for Participation in the Patent Prosecution Highway (PPH) Pilot
Program” for filing request of an accelerated examination under the PPH pilotprogram(a)

Circumstances
When an applicant files a request for an accelerated examination under the PPH pilot program tothe MyIPO, the applicant must submit a request “Request for Participation in the Patent Prosecution
Highway (PPH) Pilot Program”.
The applicant must indicate that the application is included in (i) to (iii) of 1. (a), and that
accelerated examination is requested under the PPH pilot program. The application number,publication number, or a patent number of the corresponding SIPO application(s) must also beindicated.
Where the application with one or more claims determined to be patentable/allowable is different
from the SIPO application(s) included in (i) to (iii) of 1. (a) (for example, the divisional application of4

FORM PPH1the basic application), the application number, publication number, or a patent number of theapplication(s) which has claims determined to be patentable/allowable and the relationship between
those applications must also be explained.

(b)

Documents to be submitted
The applicant must list all required documents mentioned in point 2. above in an identifiable way,even when the applicant is exempted from submitting certain documents.

4. Procedure for the accelerated examination under the PPH pilot program

The MyIPO decides whether the application can be entitled to the status for an accelerated examination
under the PPH when it receives a request with the documents stated above. When the MyIPO decides thatthe request is acceptable, the application is assigned to PPH Task Force for an accelerated examination
under the PPH.
In those instances where the request does not meet all the requirements set forth above, the applicant will benotified and the defects in the request will be identified. The applicant may be given opportunity to correct
certain specified defects.
If the request is not approved, the applicant may resubmit the request up to one time. If the resubmitted
request is still not approved, the applicant will be notified and the application will await action in its regular turn(refer to ANNEX I: Figure N and O)

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FORM PPH1Intellectual Property Corporation of Malaysia
Request for participation in the
Patent Prosecution Highway (PPH) Pilot ProgrammeA.

Application Data

Application Number :Filing Date:

Applicant:Title of Invention:

B.

RequestThe applicant requests participation in the Patent Prosecution Highway (PPH) pilot
program based on:
Office of Earlier Examination (OEE):OEE Application Number(National or PCT application number):OEE Work Products Type:

National/Regional Office Action(s)International Authority Action(s) (ISA, IPEA or IPER)OEE application filing/priority date:

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FORM PPH1

C.

Required documents

The following documents are attached:1.

A copy of OEE work products;
Translation of the documents in English or Malay Language; or
The office is requested to retrieve these documents via the Dossier
Access System or PATENTSCOPE or AIPN (list to be provided)2.

Copies of all claims determined to be patentable/allowable by OEE;Translations of the documents in English or Malay Language; orThe office is requested to retrieve these documents via the Dossier
Access System or PATENTSCOPE or AIPN (list to be provided)3.

A copy of non-patent documents cited in OEE work products;
Translations of the documents in English or Malay Language.

4.

Claim Correspondence Table.

5.

If any of the above mentioned documents have been submitted
before, please specify application number and date of submission.
Application number :________________________

Date of submission :________________________

D. Name and Signature of applicant or agent:
Name and signature

Date:

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FORM PPH1

Claim Correspondence Table

The claim in the
MyIPO application

The patentable claim inthe OEE application

8Remarks about thecorrespondenceANNEX I

A

A case meeting requirement (a) (i)- Paris route -SIPOapplication

Priorityclai mPatentable/Allowable

OK

MyIPO application

B

Request for PPH

A case meeting requirement (a) (i)- PCT route -

OK

SIPO
application
Priority
Claim

Patentable/Allowable

MyIPO DO application

PCT application.
.
.

DO: Designated Office

9Request for PPHC

A case meeting requirement (a) (i)- Paris route, Domestic priority -SIPO application

OKPriority claim

DomesticPriority

SIPOapplication

Patentable/Allowable

MyIPO application

DRequest for PPH

A case not meeting requirement (a)- Paris route, but the first application is from the third country -NGPriorityclaim

Priorityclaim

XX application

SIPO application

MyIPO application

Patentable/Allowable

Request for PPH

XX: the office other than the SIPO

10E

A case not meeting requirement (a)- PCT route, but the first application is from the third country -Priority claim

Priority claim

XX application

NGSIPOapplication

Patentable/Allowable

MyIPO DO application
PCT application

Request for PPH.
.
.

XX: the office other than the SIPOF

A case meeting requirement (a) (i)- Paris route & complex priority -SIPOapplication

ZZ application
Priority claim

Priority claim

Patentable/Allowable

OK
Request for PPH

MyIPO application

ZZ: any office11

(The first application is from the SIPO)

A case meeting requirement (a) (i)G- Paris route & divisional application -SIPO
application

Priority claim

Patentable/Allowable

OK
Divisional

MyIPO application

MyIPO application

H

Request for PPHA case meeting requirement (a) (i)- PCT route -OK

SIPOapplication
Priori
PCT application
tyclaim

SIPO DOapplication
MyIPO DOapplication...

12

Patentable/Allowable
Request for PPHI

A case meeting requirement (a) (ii)OK

- Direct PCT routeSIPO DO application

Patentable/Allowable.

PCT application
No priority claim.
.

MyIPO DO application
.
.
.

13

Request for PPH

A case meeting requirement (a) (iii)J- Direct PCT & Paris route -Patentable/Allowable

SIPO DO application.
.
.

Priority claim

PCT application
No priority claimMyIPO application

K

Request for PPH

A case meeting requirement (a) (iii)- Direct PCT & PCT route -No priority claim

OK

SIPO DO application

PCTapplication

OK

Patentable/Allowable.
.
.

Priority claim

MyIPO DOapplication
PCT application

.
.
.

14

Request for PPHM

A case not meeting requirement (f)- Examination has begun before a request for PPH -SIPO application

Patentable/Allowable

NG

Priority claim

MyIPOapplication

First Office Action (examination)

15

Request forPPH

NSIPOApplication

A case not meeting requirement (d)-The application has not been published at the timeof request for PPH-

Patentable/Allowable

NG

PriorityClaim

Request for PPH

MyIPO Application

OSIPO
Application

Available forpublic inspection

A case not meeting requirement (e)- The application has not entered into substantive
examination stage at the time of request for PPH -NG

Patentable/Allowable

PriorityClaimMyIPO Application

Request for PPH

16

Request for
Substantive
Examination

P

A case meeting requirement (e) (exception)- PPH request simultaneously with the Request for Substantive
Examination -OK

SIPOApplication

Patentable/Allowable

Priority ClaimMyIPO Application

Available forpublicRequest for PPH

Request for Substantive
Simultaneously

Examination

17