Japanese Patent Office (JPO) and Intelllectual Property Office of VietNam (IP VIETNAM) have mutually agreed to extend the PPH Pilot Program. The pilot program will come in effect for three years commencing on April 1, 2019 and will end on March 31, 2022.
To continue supporting clients, individuals, organizations and enterprises, especially Japanese ones, to take advantage of the benefits of the IP Viet Nam – JPO PPH program, IPHOUSE & ASSOCIATES kindly provide our clients the outline and notes on how to file a request to IP Viet Nam for PPH Pilot Program between IP Viet Nam and JPO using the national examination results of JPO.
PPH using the national examination results of JPO
Applicants can request accelerated examination by a prescribed procedure including submission of relevant documents on an application which is filed with IP Viet Nam and satisfies certain requirements under the IP Viet Nam – JPO PPH pilot program based on the JPO application (in other words, using the national examination results from JPO) as outlined below.
(a) The IP Viet Nam application (including a PCT national phase application) is
(i) an application which validly claims priority under the Paris Convention to the JPO application(s), or
(ii) a PCT national phase application without priority claim filed at JPO as receiving office (the application number begins with PCT/JP, hereafter referred to as ‘PCT/JP application‘), or
(iii) an application which validly claims priority under the Paris Convention to the PCT/JP application(s) referred to in (ii) above.
The IP Viet Nam application, which validly claims priority to multiple JPO or direct PCT applications, or which is the divisional application validly based on the originally filed application that is included in (i) to (iii) above, is also eligible.
Note: The pilot program is not applicable on the basis of JPO ‘utility model‘ application(s).
(b) At least one corresponding application exists in JPO and has one or more claims that are determined to be patentable/allowable by JPO.
The corresponding application(s) can be the application which forms the basis of the priority claim, an application which derived from the JPO application which forms the basis of the priority claim.
Claims are “determined to be allowable/patentable” and do not suffer from any defecencies related to unity, clarity, support by description when the JPO examiner clearly identified the claims to be allowable/patentable in the latest office action, even if the application is not granted for patent yet.
Note: Not all applications whose claims are “determined to be allowable/patentable by JPO examiner are also considered to be patentable in Vietnam due to the difference of law and practice between Vietnam and Japan such as, ‘second or futher use inventions‘, ‘purpose-limited product claims‘ or Swiss-type claims.
(c) All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable in JPO
The term “sufficiently correspond” means, where accounting for differences due to translations and claim format, the claims in IP Viet Nam are of the same or similar scope as the claims in JPO, or the claims in IP Viet Nam are narrower in scope than the claims in JPO.
A claim in IP Viet Nam which introduces a new/different category of claims to those claims indicated as allowable in JPO is not considered to sufficiently correspond.
(d) IP Viet Nam has not begun examination of the application at the time of request for the PPH.
(e) A “Request for Substantive Examination” must have been filed at IP Viet Nam either at the time of the PPH request or previously.
Note: Items (d)&(e) above in priciple mean that PPH request can be submitted, provided that there has not been any first office action at the time of request of the PPH.
A couple of examplary cases satisfy in accordance with the prescribed requirements of PPH Pilot Program between IP Viet Nam and JPO
2. Documents to be submitted
Documents (a) to (d) below must be submitted along with the PPH request
(a) Copies of all office actions (which are relevant to substantial examination for patentability in JPO) which were issued for the corresponding application by JPO and translations thereof
Either Vietnamese or English translation is acceptable. The applicant does not have to submit a copy of JPO office actions and translations thereof when those documents can be accessible and retrivable by IP Viet Nam examiner (for example: AIPN, a dossier access system provided by JPO). If those documents inaccessible, the applicant may be notified and requested to provide the necessary documents.
(b) Copies of all claims determined to be patentable/allowable by JPO and translations thereof
Either Vietnamese or English translation is acceptable. Similar to (a) above, the applicant does not have to submit a copy of claims indicated to be allowable/patentable in JPO, and translations thereof If those documents are accessible, otherwise notification of submitting the necessary documents may be requested.
(c) Copies of references cited by the JPO examiner
If the references are patent documents, the applicant doesn’t have to submit them because IP Viet Nam usually possesses them. Non-patent literature must always be submitted. The translations of the references are unnecessary.
(d) Claim correspondence table
The applicant requesting PPH must submit a claim correspondence table, which indicates how all claims in the IP Viet Nam application sufficiently correspond to the patentable/allowable claims in the JPO application..
3. Procedure for the accelerated examination under the PPH pilot program
The IP Viet Nam determines 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 IP Viet Nam decides that the request is acceptable, the application is assigned a special status for an accelerated examination under the PPH. In a case where the request does not meet all the requirements set forth above, the applicant will be notified and the defects in the request will be identified.
In practice, after the acceptance of the PPH request, IP Vietnam shall issue the first Office Action in 9 months from the starting date of substantive examination period (half the time of the statutory 18 month-period).
4. PPH form
When filing a request for the PPH pilot program using the national examination results of JPO (in other words, based on the JPO application), an applicant must submit a request form to IP Viet Nam as below.
IP HOUSE & ASSOCIATES is in charge of the article content.
For more details of the IP VIETNAM – JPO PPH program, please contact us at:
Dao Danh Phuoc (Mr.)
Head of Patent and Design Department – IPHOUSE & ASSOCIATES
Phone: (+84)967742458 (direct)