Articles for patents

The Patent Prosecution Highway (PPH) program is a bilateral initiative that allows patent applicants to expedite the examination process of their patent applications. This guide focuses on how to leverage the PPH program between the Intellectual Property Office of Vietnam (IP Vietnam) and the Japan Patent Office (JPO) to accelerate your patent application in Vietnam. It includes a detailed overview of the procedures and associated costs.

Eligibility Criteria

To participate in the PPH program between IP Vietnam and JPO, the following criteria must be met:

1. Corresponding Application: A corresponding application must be filed with the JPO.
2. Patentable Claims: At least one claim in the corresponding JPO application must be determined to be patentable.
3. Equivalent Claims: The claims in the Vietnamese application must sufficiently correspond to those in the JPO application.
4. Pending Examination: The Vietnamese application must be pending examination and not yet examined by IP Vietnam.
5. Required Documents: Submission of specific documents, including the PPH request form, copies of the relevant office actions from JPO, and the claims deemed patentable by JPO.

Procedures for Accelerating a Patent Application

1. Confirm Eligibility

Ensure that your Vietnamese patent application meets the eligibility criteria for the PPH program. Verify that at least one claim in the corresponding JPO application has been found patentable and that the Vietnamese application includes corresponding claims.

2. Prepare Required Documents

Gather and prepare the following documents to support your PPH request:

• PPH Request Form: Complete the PPH request form available on the IP Vietnam website.
• Office Actions: Copies of the office actions issued by the JPO, indicating the patentable claims.
• Patentable Claims: Copies of the patentable claims from the JPO application.
• Claim Correspondence Table: A detailed table showing how the claims in the Vietnamese application correspond to those in the JPO application.
• Translations: Translations of the relevant documents if they are not in English or Vietnamese.

For a specific case, following documents are required:

(a) Copies of all office actions in Japan (these document are not required if they are provided via AIPN).

(b) Copy of granted claims in Japan (the set of granted claim is not required if it is provided via AIPN).

(c) Copies of reference cited by JPO examiner wherein patent documents are not required to submit but non-patent literature must be submitted.

Vietnamese Translation of these documents (a), (b), (c) may be requested by the IPO Vietnam if needed.

(d) Claim correspondence table to indicate how all claims in Vietnam application to correspond to the patented claims in Japan.

3. Submit the PPH Request

Submit the PPH request to IP Vietnam along with the required documents. Ensure that all forms are accurately completed and that all necessary translations are provided. The submission can be done either electronically or in paper form, depending on IP Vietnam's requirements.

The number of application allowed: 200 wherein 100 is allowed during  April 1st to September 30th, and 100 is allowed during the rest  period.

However, just few days of starting for each period, 100 requests are always full received. Therefore, we must be ready on April 1st or October 1st with all necessary documents.

4. Monitor the Application

After submitting the PPH request, monitor the status of your application. IP Vietnam will review the request and, if approved, will expedite the examination process. Stay in contact with IP Vietnam for any updates or additional information needed.

5. Respond to Office Actions Promptly

If IP Vietnam issues any office actions during the accelerated examination process, respond promptly and comprehensively. Timely responses help maintain the accelerated pace of the examination.

Costs Associated with the PPH Program

The costs associated with using the PPH program in Vietnam include both administrative and procedural fees. Below is a general overview of the potential costs:

1. Filing Fees: Standard fees for filing a patent application in Vietnam apply. These vary based on the number of claims and the complexity of the application.
2. PPH Request Fee: There is usually no additional fee for submitting a PPH request; however, applicants should verify this with IP Vietnam as policies may change.
3. Translation Costs: Costs for translating the necessary documents into Vietnamese if they are in another language.
4. Legal and Professional Fees: Fees for consulting with patent attorneys or IP professionals to prepare and submit the PPH request and manage the accelerated examination process.

For a specifc patent case, the fees incurred for Request PPH may be as follows:

Official fee: US$0.

HAIHAN-IP’s agency fee: US$200

Translation fee: Translation fee is just inccurred when the IPO Vietnam requests to translate otherwisse no translation fee is applied.

Best Practices for a Successful PPH Request

• Thorough Documentation: Ensure all required documents are complete and accurately translated.
• Clear Correspondence Table: Provide a detailed and clear claim correspondence table to show how the claims in both applications match.
• Professional Assistance: Consider consulting with a patent attorney or IP professional experienced in the PPH process to ensure all requirements are met.
• Regular Follow-Up: Keep track of your application status and follow up with IP Vietnam for any updates.

Conclusion

The PPH program between IP Vietnam and JPO is a valuable tool for accelerating the patent application process in Vietnam. By understanding the eligibility criteria, following the procedural steps, and being aware of the associated costs, applicants can effectively leverage this program to secure their patents more efficiently. For further assistance and detailed guidance, it is advisable to seek help from intellectual property professionals familiar with both the Vietnamese and Japanese patent systems.

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For more information about Patent Acceleration in Vietnam, please do not hesitate to contact us at

HAIHAN IP LAW FIRM

12A Floor, Center Building, No. 1 Nguyen Huy Tuong, Thanh Xuan Trung Ward, Thanh Xuan District, Hanoi City, Vietnam.

Tel:             844-3202 8111 / 844-3202 8222

Fax:            844-3202 8333

Hotline:      84-983 788 469

Email:         hh@haihan.vn

HAIHAN-IP is a registered IP Firm recorded by Intellectual Property Office of Vietnam (IP Vietnam).

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