PATENT PROSECUTION HIGHWAY (PPH)A PILOT PROGRAM BETWEEN JPO AND VIETNAM’S NOIPOverview
In the ASEAN region, Vietnam will be the sixth country that have concluded a PPH
with JPO, following Singapore, Philippines, Indonesia, Thailand, and Malaysia, on
the basis of bilateral office agreements dated October 2015.
The PPH Pilot Program thereby will be launch on April 1, 2016 and initially, there will
be a trial of 100 patent applications to test it out.
The PPH is a framework whereby a patent application whose claims have been
determined to be patentable by the Office of First Filing (OFF) (an earlierexamination), through a simple procedure upon request from an applicant, toundergo an accelerated examination in the Office of Second Filing (OSF). In otherwords, through PPH, an applicant with a corresponding Japan patent may speed up
examination after it is submitted to NOIP.
Although there are two accelerated examination systems in Vietnam, including theNOIP’s faster examination system and the new ASPEC system for ASEAN’sjurisdiction, they have not been widely used. The reasons derived from such systems
is still dependent on the NOIPs discretion and interest to speed a particular patent up;
besides, the ASPEC system has only actually worked with corresponding patentapplication in Singapore. Therefore, with PPH, it is hopefully that will improve thecurrent situation.

Purpose of the PPH
Through the PPH system, both National IP Offices desire to ensure that the highquality patent protection, effective and inexpensive examination procedure will beapplied and integrated with the patent prosecution highway programs in otherjurisdictions, as Global PPH and IP5 Pilot Programs.

In particular, the purpose of the PPH is to enhance the utilization of the prior art
search and examination results between two IP Offices, then to reduce the burden ofexamination.
Simultaneously, in Vietnam, the cooperation between PPH and ASPEC would not
only improve its examination ability, but also promote a more expeditious andinexpensive patent protection process where workloads and unnecessary duplicationof works are reduced significantly.

PPH Pilot Program’s Outline

PatentApplication in theOFF in NOIP

Determined to bePatentable*PPH Request isfree in most offices

Priorityclaim,etc.

PatentApplication inthe OSF in NOIP

Submitted a PPH
Request to NOIP*

Accelerated
Examination

Requirements & Example scenario for PPH
Applications that are eligible to request for PPH are applications, which have notundergone substantive examination and filed to NOIP with a corresponding with JPO,
for example:
 The application validly claims priority under the Paris Convention to thecorresponding JPO application(s);Example scenario 1:
Paris Route
JPO Patent
Application

Determined to be
Patentable
Priorityclaim,etc.

NOIP Patent
Application

Submitted a PPH
Request to NOIP The application is a PCT national phase application without priority claim(direct PCT application);
Example scenario 2:
PCT Route

PCTApplication
Without priorityclaim

Entry into
National
Phase inJapan

Determined to be
Patentable

Entry into
National
Phase inVietnam

Submitted a PPH
Request to NOIP The application validly claims priority under the Paris Convention to the PCT
application(s) without priority claim.

Example scenario 3:
Direct PCT & Paris Route
Entry into
National
Phase inJapan

Determined to be
Patentable

PCT
Application
Priorityclaim,etc.

NOIP PatentApplication

Submitted a PPH
Request to NOIP The applications shall also be determined as patentable, where at least one
corresponding application must exist in the JPO and must have one or moreclaims that are determined to be allowable/ patentable in the latest officeaction by JPO.
 Furthermore, all claims on file, as originally filed or as amended, forexamination under the PPH must sufficiently correspond to one or more ofthose claims indicated as allowable in JPO.

 NOIP has not begun examination of the application at the time of request for
the PPH
Example scenario 4:

Determined to bePatentable

JPO Patent
Application
Priorityclaim,
etc.

NOIP Patent
Application

First official
ActionSubmitted a PPH
Request to NOIP

Required Documents
Along with a PPH Request Form, the following documents are required to besubmitted as below:(i) A copy of all claims determined to be patentable by the JPO, and translations
thereof (not required if these are available via the JPO dossier accesssystem);(ii) A copy of all office actions of the JPO, and translations thereof (not required if
available via the JPO dossier access system);(iii) Copies of all documents cited by the JPO examiner; and(iv) Claims correspondence table, listing all claims filed to NOIP and JPO withcomments in terms how they correspond to each other.

Comparison between PCT, PPH & ASPEC

PCTS&EReport

PPH*

S&E byS&E Reportfrom the S&E Report(s) from any

examiners at theOffice

firstNOIP; ISA; IPEA

(bilateral agreement)

ofImproved
theQuality of S A lot of limited
and shortcomings

filing participating

sincereferences

helptodevelop

their search criteria or
strategy

morereducing
and/orquickly,searchingassisttheyIPOffice(multi-agreement)

qualityexaminers& E Report

ASPEC

tounderstand the claimed
invention faster

Improved quality since thereferences help examiners
todevelop

theirsearch

criteria or strategy more
quickly, reducing searching
and/orassistunderstandthetheytoclaimed

invention faster

Expedited S&E work as an
Expedited
Examination

Expedited examination of
Up to 18 months

PPH

applications–

advanced out of turn

IP Office can refer to theS&E

workofanotherparticipating IP Office –advanced out of turn until
grantFirst Office
Action (OA)

Grant
Certificate

1.5 – 2 years

6 months

6 months

Grant certificate will be3 – 4 years

processedand

faster than normal

issuedGrant

certificate

willbeprocessed and issued in
shortened within the normal
timeframe

PCTPPH*

ASPEC

Examination
request shall be
Examination submitted

within PPH request is required

request42termcounted from the point in time

months to be filed at a specificfiling date or theASPEC request can be
filed at any time before a
final determination of grantor refusal

date of priority
Language

Vietnamese

EnglishBy Nguyen Hoa Binh
Partner, Patent Attorney
DAITIN & ASSOCIATES CO., LTD.
(IP Agent in Vietnam, Laos, Cambodia and Myanmar)
Ho Chi Minh City&Hanoi
No. 19 Hoang Dieu Str., District 4, Ho Chi Minh City, Vietnam
T: +84-4-6270 0022; F: +84-4-6270 0020; M: +84 9633 7 4499
Email:
binh@daitin.com.vn ; info@daitin.com.vn
Website: www.daitin.com.vn
A member of: INTA & APAA

English

FAQS
WHAT

and unnecessary duplication of works

What is PPH?

are reduced significantly.

The PPH is a framework whereby aHow do I enter PPH at the NOIP?

patent application whose claims have

In order to file a PPH request at thebeen determined to be patentable byNOIP, you must meet all the criteria

the Office of First Filing, through a(seesimple procedure upon request fromalong with a PPH Request Form.

anHow much does it cost for submitting aapplicant,toundergoanaccelerated examination in the OfficeRequiredDocumentsabove)

PPH request?

of Second Filing.
Normally, a PPH request does not cost
What is the PPH between JPO andanything. Currently, only the Korean

Vietnam’s NOIP?

patent office charges a handling fee.

The PPH Pilot Program between JPO

How much time can be saved withand the NOIP is on the basis ofPPH request filed at the NOIP?

bilateral

officeagreements

dated

October 2015 and will be launch on
April 1, 2016. Initially, there will be a

The PPH request is generally decided
within 04 months from the filling of thePPH request. If the PPH request istrial of 100 patents to test it out.

granted, the examiner will generally
HOW

examine the application within 02 – 03

How PPH is useful?

months from the grant of the PPH

Through the PPH system, it is desired

request. Therefore, it will take about 06

to ensure that the high-quality patent– 08 months for completing all its pre-protection,effective

exam processing and is ready forprocedure

will

be

examination
appliedandexamination.

integrated with the PPH programs inWHICH

other jurisdictions; as well as toWhich languages could the documents

promoteto be submitted in the NOIP?

amoreexpeditious andinexpensive process where workloads
EitherVietnameseor

Englishis

acceptable for submitting in the NOIP

as translation language. Aside from,the JPO and the NOIP have decided tobegin the exchange of data on patent
information. Based on this information,
theJPOwill

makeresearchonmachine

anadvancetranslation,

which will lead to improvements in theaccuracyofJapanese-Vietnamesemachine translation.
WHEN
When can I file a PPH request?
A PPH request could be filed at any
time during an application procedure. If
there are allowable claims in yourpriority application, a PPH can be filed
at the filing date of second application.
Normally, a PPH should be filed beforetheIPOfficehasstarteditsexamination.
CAN
Can a application be surely grantedwithout examination if an application isrecognized as eligible for the PPH?
No. Substantive examination under thePPH is still conducted according to theVietnamese law in the same way as
non-PPH application. However, withPPH, the application will be consideredin the higher allowance rates, fewer
office actions and reduced appeal
rates than non-PPH application.