February 19, 2019
From April 1, 2019, the Japan Patent Office (JPO) and the Intellectual Property Office of Viet Nam (IP Viet Nam) will double the number of target applications that the IP Viet Nam accepts under the ongoing Patent Prosecution Highway (PPH)* Program between the JPO and IP Viet Nam.
As Viet Nam has been advancing the development of business environments in recent years, many Japanese companies in the automobile, electronics and electricity and others industries are 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 Viet Nam takes three years or longer on average between acceptance of an application and issuance of the first examination results.
In light of this situation, on April 1, 2016, the JPO launched a PPH Pilot Program with IP Viet Nam (or the NOIP at the time). This effort enables an applicant whose application has been determined to be patentable by the JPO to undergo an accelerated examination in IP Viet Nam to obtain patent rights. Currently, applicants who have filed an application with IP Viet Nam with a request for the PPH Pilot Program have been receiving the first examination results from IP Viet Nam in about 10 months on average from the filing date.
However, the maximum number of requests for the PPH Pilot Program that IP Viet Nam accepts has been limited to 100 per year. Due to this limitation, requests for the PPH Pilot Program filed with Viet Nam from Japan for the past three years have reached the maximum number soon after the acceptance opened, and within two days in FY2018, and many Japanese users have been strongly urging the JPO to raise this upper limit.
PPH is a patent prosecution framework in which the Office of Second Filing (OSF) examines applications determined to be patentable by the Office of First Filing (OFF) in an accelerated manner upon request from applicants.
2. Japan-Viet Nam PPH Pilot Program from April 1, 2019
The JPO and IP Viet Nam agreed that from April 1, 2019, they will double the maximum number of requests for the PPH Pilot Program that IP Viet Nam accepts from 100 to 200 per year and that they will extend the period of the program for another three years.
In addition to this upper limit on the requests to be accepted, i.e., 200 per year, further limitations may be imposed on acceptance of such requests by IP Viet Nam, such as setting temporal and numerical limitations to such requests, e.g., XX requests over a 6 month period. Details of the requirements that must be met by applicants will be released on the JPO website soon after they are set.
For the number of requests for the PPH Pilot Program filed with the JPO, as with before, no limits are imposed.
3. Advantage for applicants in using the PPH Pilot Program with Viet Nam
If applicants file applications with IP Viet Nam with a request for the PPH Pilot Program, IP Viet Nam will examine such applications in an accelerated manner and prior to other applications. Using this program, applicants are able to acquire their patent rights in Viet Nam, a country where patent examinations often taking a longer time, in an accelerated manner.
Division in Charge
Examination Policy Planning Office, Administrative Affairs Division, JPO