Patent Prosecution Highway Pilot Program And Patent Information Data Exchange Between Vietnam And Japan.
Legal News & Analysis - Asia Pacific - Japan - Vietnam - Intellectual Property
5 October, 2016
Today’s blog post has been kindly drafted for us by our IPR experts Mr. Max Ng and Ms.Amira Nabila Budiyano from the Gateway Law Corporation,who will discuss the Patent Prosecution Highway Pilot Program between Vietnam and Japan. The Patent Prosecution Highway Pilot Program is important as it can accelerate the examination of patent applications in Vietnam. The experts will explain how the Patent Prosecution Highway works and how SMEs from Europe and around the world can benefit from the program.
One of the problems currently faced by the National Office of Intellectual Property of Vietnam (“NOIP”) is the increasing backlog of patent applications, which is one of the main reasons for the delayed examination of patent applications in Vietnam. This may adversely affect the quality of patent examination, as the bigger the backlog, the less time the examiners would have for reviewing the patent applications. The backlog of patent applications may further hinder the innovation process of the country while also posing a real concern to foreign businesses and investors wanting to venture into the Vietnam market. The Patent Prosecution Highway Pilot Program between the NOIP and the Japan Patent Office (“JPO”), which came into effect on 1 April 2016, is therefore a much welcomed move by the NOIP to cope with the increasing backlog and accelerate examination of patent applications in Vietnam.
Patent Prosecution Highway Pilot Program
The Patent Prosecution Highway Pilot Program allows applicants to request for accelerated examinations for their patents.
An applicant must satisfy the following requirements before making a request for accelerated examination under the Program (“PPH Request”):
The NOIP application, including a PCT national phase application, is:
- an application which validly claims priority under the Paris Convention from one or more JPO application(s); or
- a PCT national phase application without priority claim filed with JPO as the receiving office; or
- an application which validly claims priority under the Paris Convention from one or more application(s) referred to in (b) above.
It should be noted that a NOIP application which is the divisional application of the application mentioned in (a) to (c) above, is also eligible.
At least one corresponding application exists in JPO 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 Program must sufficiently correspond to one or more of those claims indicated as allowable by the JPO.
NOIP has not begun examination of the application at the time of the PPH Request.
A “Request for Substantive Examination” must have been filed with NOIP either previously or at the time of the PPH Request.
(ii) Required documents
The following documents must be submitted together with the PPH Request:
Copies of all office actions (which are relevant to substantial examination for patentability in JPO) which were issued for the corresponding application by the JPO, and translations of the same.
Copies of all claims determined to be patentable/allowable by the JPO, and translations of the same.
Copies of references cited by the JPO Examiner.
A claim correspondence table, which indicates how the claims in the NOIP application sufficiently correspond to the patentable/allowable claims in the JPO application.
It should be noted that either Vietnamese or English is acceptable as the translation language for documents referred to in
(1) and (2) above. Further, the applicant may not need to submit copies of said documents when those are provided via “AIPN”, the JPO’s dossier access system, as the documents (and their machine translations) are available for the NOIP Examiner via the AIPN. Also, the prior art references in item (3) may not be required if they are patent documents. On the other hand, non-patent literature must always be submitted.
(iii) Duration and Application
The Program is intended to be in effect for 3 years commencing from 1 April 2016, but may be extended after a joint NOIP – JPO review and assessment of the implementation of the same. It is however only limited to 100 PPH Requests per year, and is not applicable to JPO utility model applications.
Patent Information Data Exchange
Alongside the Program, the NOIP and the JPO have also decided to begin, for the first time, the exchange of data on patent information, including information on patent publications. The JPO will also invest in research on machine translation, which, it is hoped, will result in improvements in the accuracy of Japanese – Vietnamese machine translations of the patent documents.
In the ASEAN region, Vietnam will be the sixth country implementing a Patent Prosecution Highway Program with Japan, following in the footsteps of Singapore, Malaysia, Indonesia, Thailand, and the Philippines. While the effect of the Program remains to be seen, it is undoubtedly a commendable effort on the part of the NOIP to address increasing backlog and delayed examination time-frame currently faced by the NOIP.
Author’s Name: Max Ng
Law Firm: Gateway Law Corporation
Helika Jurgenson, China IPR SME-Helpdesk