The Korean Intellectual Property Office (KIPO) and the Vietnam Intellectual Property Office (VNIPO) have mutually agreed to commence a pilot Patent Prosecution Highway (PPH) programme for two years from 1 June 2019 to 31 May 2021.
The programme may be renewed after the two-year period. Accordingly, a patent application filed with the VNIPO may qualify under the PPH programme if it falls into one of the following categories:
- It claims priority to its corresponding Korean patent application in accordance with the Paris Convention; or
- It is a Patent Co-operation Treaty (PCT) application entering the Vietnam national phase without claiming priority, but the KIPO is its receiving office; or
- It claims priority to a PCT application in accordance with the Paris Convention, provided that the PCT application does not claim priority and the KIPO is its receiving office.
The above-mentioned Korean corresponding applications must have one or more claims that the KIPO has allowed or determined to be patentable.
The rules also apply to divisional applications based on originals that would fall into one of the above categories. However, this programme is not available to Korean utility model applications.
In order for a Vietnamese patent application to be examined under the PPH programme, the applicant must submit a request attached with the following documents to the VNIPO upon its request:
- Copies of all notifications/decisions (which would be relevant to the substantial examination in the KIPO) issued for the corresponding application by the KIPO, and its English or Vietnamese translations;
- Copies of all claims determined to be patentable/allowable by the KIPO, and the English or Vietnamese translations;
- Copies of references cited by the KIPO examiners; and
- Claim corresponding table that indicates how all claims in the Vietnamese
application filed with the VNIPO sufficiently correspond to the patentable/allowable claims in the Korean corresponding application.
The request must be filed with the VNIPO before it issues a first notice on the result of substantive examination. In addition, the annual number of requests accepted by the VNIPO should not exceed 100.
If the request is accepted, the status of the subject patent application will be changed to “accelerated examination under the PPH”. Otherwise, a Notification of Defects will be issued and the applicant will be given a time limit to correct it.
According to informal information, about 75% of the total number of patent applications filed in Vietnam are under the name of foreign applicants. This number will continue to grow. Thus, the PPH programme will bring significant benefits to foreign applicants who have filed an application based on a Korean corresponding one. They will enjoy an accelerated examination period and earlier protection (if accepted).
Business Law Digest is compiled with the assistance of Baker McKenzie. Readers should not act on this information without seeking professional legal advice. You can contact Baker McKenzie by emailing Danian Zhang at [email protected].