Applicants can now request accelerated examination of their Vietnamese patent applications by participating in the National Office of Intellectual Property (NOIP) and the Japanese Patent Office (JPO) Patent Prosecution Highway (PPH) Pilot Program.
The pilot program, which came into effect on 1 April 2016, will run for three years initially and the number of such requests is limited to 100 per year.
It is expected the PPH pilot program will lead to shorter examination periods for patents.
In order to be eligible for this PPH pilot program, the following requirements must be met:
- the Vietnamese patent application is (i) an application which validly claims priority under the Paris Convention to the Japanese patent application(s), or (ii) a national phase application of a PCT application without priority claim filed at the JPO as receiving office (the application number begins with PCT/JP), or (iii) an application which validly claims priority under the Paris Convention to the PCT/JP application(s) referred to in (ii)
- at least one corresponding Japanese application exists and has one or more claims that are determined to be patentable/allowable by the JPO
- all claims on file, as originally filed or as amended, for examination under the PPH pilot program must sufficiently correspond to one or more of those claims indicated as allowable by the JPO
- the NOIP has not begun examination of the application at the time of the PPH request
- a “Request for Substantive Examination” must have been filed at NOIP either at the time of the PPH request or previously
Each PPH request (in a prescribed form) must be accompanied by the following documents:
- a) copies of all office actions relevant to patentability which were issued for the corresponding Japanese application by the JPO
- b) copies of all claims determined to be patentable/allowable by the JPO
- c) copies of references cited by the JPO examiner
- d) a claim correspondence table
It should be noted that the documents in items a) and b) above can be in Vietnamese or English, and the NOIP examiner may have access to the Japanese documents. Also, the prior art references in item c) may not be required if they are patent documents. Non-patent literature must always be submitted.
A more comprehensive guide, including the PPH request form and examples of eligible cases, can be found here.
The NOIP-JPO PPH pilot program, in addition to the existing ASEAN Patent Examination Cooperation (ASPEC) program, is a commendable effort by the NOIP to leverage on the work performed by a partner patent office to accelerate examination of patent applications in Vietnam. Should you have any queries on how you can make use of this program, please do not hesitate to contact us.