1. Patent Prosecution Highway Program
The Patent Prosecution Highway (PPH) is a set of initiatives for providing accelerated patent prosecution procedures by sharing information between some patent offices. It also permits each participating patent office to benefit from the work previously done by the other patent office in a manner of maximizing mutual exploitation of search/examination results among the offices, with the goal of reducing examination workload and improving patent quality.
The PPH enables an application whose claims have been determined to be patentable in the Office of First Filing (OFF) to undergo an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon a request from an applicant on the basis of bilateral office agreements.
The purpose of the PPH is to facilitate an applicant’s acquisition of a patent at an early stage worldwide and to enhance the utilization of search and examination results between the IP Offices so as to reduce the burden of examination and to enhance the quality of examination worldwide.
2. Background of IP VIETNAM – JPO Patent Prosecution Highway (PPH) Pilot Program
As Viet Nam has been advancing the development of business environments in recent years, many companies including Japanese ones are interested in embarking on business in the country. As one of the approaches to smoothly advancing business in the country, these companies need to make use of their patent rights. However, the examination procedures for patent applications filed with Viet Nam often take a significant period of time. In particular, the IP VIETNAM takes three years or even longer on average between formal acceptance of an application and issuance of the first office action of substantive examination.
The Japan Patent Office (JPO) and the Intellectual Property Office of Viet Nam (IP Viet Nam) commenced the PPH pilot program on 1 April 2016. Due to the limitation of volume, requests for the PPH Pilot Program filed with IP Viet Nam from Japan for the past three years have reached the maximum number soon after the acceptance opened, and within two days in Fiscal Year 2018. Following a review of the effectiveness of the PPH program for the period 2016-2018, IP Vietnam and JPO have agreed to renew the pilot program for the next 3 years. The requirements and procedures for extended PPH programme are substantially the same as before.
3. IP VIETNAM – JPO Patent Prosecution Highway (PPH) Pilot Program from April 1, 2019
The JPO and IP VIETNAM agreed to extend the PPH Pilot Program from April 1, 2019.
Applicants will continue to be able to make use of the Program to request accelerated examination by a prescribed procedure including submission of relevant documents on an application which is filed within IP Viet Nam and satisfies prescribed requirements under the IP Viet Nam-JPO Patent Prosecution Highway (PPH) program based on the JPO application. When filing a request for the PPH pilot program, an applicant must submit a request form to IP Viet Nam. The Office may terminate the PPH pilot program if the volume of PPH request exceeds 200 per year (in which up to 100 PPH requests for the period from 1st April to 30th September and the rest out of 200 PPH requests for the period from 1st October to 31st March of the Calendar year), or for any other reason. The PPH pilot program will come in effect for three years commencing on April 1, 2019 and will end on March 31, 2022. However, the pilot program may be extended after a joint IP Viet Nam-JPO review and assessment of the program implementation.
4. Procedures and timeline under VN-JP-PPH program
IP Vietnam will review and decide if the application is qualified for the PPH. The applicant is given the opportunity to provide missing documents when informed by IP Vietnam. Even if IP Vietnam says that an application does not meet the requirements of the PPH programme, the applicant can apply again if the maximum number of requests is not reached in the prescribed time period.
Currently, IP Vietnam issues the first Office Action in 9 months from the starting date of substantive examination period (half the time of the statutory 18 month-period).
5. Advantage for applicants in using the PPH Pilot Program with Viet Nam
If applicants file applications with IP VIETNAM with a request for the PPH Pilot Program, IP VIETNAM will examine such applications in an accelerated manner and prior to other applications. Using this program, applicants are able to speed up acquisition of their patent rights in Viet Nam, a country where patent examinations often taking a longer time, in an accelerated manner.
For more details of the PPH program, please contact us at:
Dao Danh Phuoc (Mr.)
Head of Patent and Design Department – IPHOUSE & ASSOCIATES
Phone: (+84)967742458 (Direct)