Patent Prosecution Highway Pilot Programme officially implemented between KIPO and IP Vietnam
Intellectual Property Office of Viet Nam (IP Vietnam) and Korean Intellectual Property Office (KIPO) have announced the implementation of the accelerated examination pilot programme for patent applications (KR-PPH programme)
It will run for 2 years, beginning from 1 June 2019 to 31 May 2021. There will be a maximum of 100 requests filed each year in Vietnam. Vietnamese patent applications eligible for the VN-KR-PPH program must meet the prescribed requirements. The programme may be extended after a joint review by IP Vietnam and KIPO .
Requirements under the VN-KR-PPH programme
- A Vietnamese patent application is:
- an application which validly claims priority under the Paris Convention to the KIPO application(s), or
- a PCT national phase application without priority claim filed at KIPO as receiving office, or
- an application which validly claims priority under the Paris Convention to the PCT/KR application(s).
The VN patent application, which validly claims priority to multiple KR 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.
The pilot programme is not applicable on the basis of KIPO ‘utility model’ applications.
- At least one corresponding application exists in KIPO and has one or more claims that are determined to be patentable/allowable by KIPO.
- 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 KIPO.
- IP Vietnam has not begun examination of the application at the time of request for the PPH.
- The request for accelerated examination under the PPH must also be accompanied by, or preceded by a request for examination.
- Documents to be submitted:
- PPH Request (under prescribed form);
- Copies of all office actions (which are relevant to substantial examination for patentability in KIPO) which were issued for the corresponding application by KIPO, and their translations;
Translations of documents can be in Vietnamese or English. If the documents and their English translations are available at K-PION (KIPO’s dossier access system), they may not be required.
- Copies of all claims determined to be patentable/allowable by KIPO, and their translations;
Translations of claims can be in Vietnamese or English, and IP Vietnam’s examiners can access via K-PION. However, the applicant is recommended to submit English translation of the allowed claims of KIPO patent/application to ensure the accuracy of the claims because the English claims obtainable from the K-PION is machine translation version.
- Copies of references cited by the KIPO examiner;
Patent references may not be required. Non-patent references must always be submitted, but their English translations is not necessary.
- Claim correspondence table:
The claim correspondence table should indicate how each of the claims in VN application sufficiently correspond to the patentable/allowable claims in the KIPO application. When claims are just a literal translation, the applicant can just write down that “they are the same” in the table.
In case IP Vietnam is not able to retrieve the documents or needs additional documents, they will require the Applicant to submit. In practice for similar JP-PPH program, the applicant only needs to provide English translation of allowed claims of the KIPO patent/application, the claim correspondence table and the non-patent references (if any).
When the applicant has already submitted any of the above documents to IP Vietnam through simultaneous or past procedures, the applicant may incorporate the documents by reference and does not have to attach them again.
No official fee is required for PPH request.
The VN-JP-PPH (Vietnam-Japan PPH) has been being very effective in Vietnam. The 100 case limit was reached on the first dat of the programme when it was opened earlier this year. We believe that the VN-KR-PPH will be as effective. Therefore, applicants should file KR-PPH requests as soon as possible.
Procedures and timeline under VN-KR-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.
In practice, 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).
For more details of the PPH programme, please contact us at PatentsVietnam@rouse.com.