Accelerate the Examination of Vietnamese Patent Applications under ASEAN Patent Examination Cooperation Program

The ASEAN Patent Examination Cooperation (ASPEC) is a regional patent work-sharing program among nine participating ASEAN member states (“AMS”) including Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand and Vietnam. The program was launched on 15 June 2009 aiming to accelerate the substantive examination of patent applications in participating AMS by reducing duplication on the search and examination work done, saving time and effort.

Procedures and time reduced when applying for the ASPEC program

Under the ASPEC program, Intellectual (“IP”) Offices from participating AMS can utilize the search and examination (“S&E”) results from another participating AMS IP Office as a reference in its own S&E work. In addition, search and examination work done on a corresponding application serves as a useful reference in producing quality reports. A patent application applying for the program must satisfy certain criteria.

When an ASPEC request is filed based on the S&E results from another participating AMS IP Office (“first IP Office”), Intellectual Property Office of Vietnam (“IPVN”) will examine if the application is qualified for the ASPEC program and if all the required documents are submitted. If the application is qualified for the ASPEC program and any of the required documents are missing, the applicant may supplement the missing documents. IPVN will refer to the S&E results and issue its own substantive examination results for the Vietnamese patent application.

The statutory period for substantive examination is 12 months from the date of requesting substantive examination or from the publication date, depending on which date is later (the starting date of substantive examination). If an ASPEC request is filed, IPVN normally issues the first Office Action 8-9 months from the starting date of substantive examination.

Criteria for applying for the ASPEC program

• A Vietnamese patent application must be a corresponding patent application of the first IP Office. A patent application in the first IP Office is a corresponding application if it is:
  • (i) linked by a Paris Convention priority claim to the Vietnamese patent application, and vice-versa, or
  • (ii) the patent application in the first IP Office and the Vietnamese patent application have the same priority claim from another member of the Paris Convention or the World Trade Organization, or
  • (iii) the patent application in the first IP Office and the Vietnamese patent application are national phase entry applications from the same Patent Cooperation Treaty (“PCT”) application.
    • The program is silent on whether divisional applications or utility model/petty patent/utility solution applications that qualify under (i) to (iii) above are eligible or not. In fact, such applications are also eligible.
• All claims filed in the Vietnamese patent application must sufficiently correspond to allowable/patentable claims referred to in the S&E documents from the first IP Office.

Required documents

• An ASPEC Request (in prescribed form);
• A copy of the (i) national written opinion or the examination report, or (ii) the written opinion, international preliminary examination report, or the international preliminary report on patentability (“WO/ISA, WO/IPEA, IPER, IPRP Chap I or IPRP Chap II”) established by an ASEAN ISA/IPEA of a corresponding application from the first IP Office. Currently, ASEAN ISA/IPEA refers to the IP Offices of Singapore and the Philippines. These are the minimum documents;
• A copy of the claims referred to in the minimum documents submitted, with at least one claim determined by the first IP Office to be allowable/patentable;
• A claim correspondence table that indicates how all claims in the VN application sufficiently correspond to the patentable/allowable claims of the first IP Office’s application.

Fees

There is no official fee for an ASPEC request.

Additional actions needed when requesting the ASPEC program in Vietnam

Substantive examination of a patent application starts from the later of (i) date of submitting a request for substantive examination or (ii) the publication date. Therefore, even if a request for substantive examination is submitted prior to the publication date, the substantive examination will not commence until the publication date.

A direct national application will be published in the later of (i) one month from the date the application is recognized as valid after formality examination or (ii)the 19th month from the earliest priority date (if there is priority) or the filing date (if there is no priority). A PCT application will be published within one month from the date the application is recognized as valid after formality examination. Therefore, additional action may be needed for the ASPEC request to be handled.

Request for early publication for direct national applications

This procedure may be necessary for direct national applications if at the time of requesting ASPEC, the application has not yet been published. There is no official fee for early publication.

Request for early handling of PCT applications

The formality examination of PCT applications in the Vietnamese national phase is only started from the first day of the 32nd month from the earliest priority date (if there is priority) or from the international filing date (if there is no priority) (hereinafter referred to as “the start date”). Even if a PCT application is entered into the Vietnamese national phase before the start date, the application will not be handled until the start date. If the start date is prior to the date of requesting ASPEC, the applicant should file a request for early handling of the PCT application for acceleration of substantive examination under the ASPEC request.

There is no official fee for requesting early handling of PCT applications.

Expected IPVN’s grant based on KIPO’s grant

Please note that IPVN is not obligated to follow the examination results of the first IP Office. This means that even if the first IP Office grants a patent for a corresponding patent application for the same invention, IPVN may still refuse to grant a Vietnamese patent.

Special notes should be taken regarding pharmaceutical inventions or computer-related inventions, where eligibility for patent protection may be different among participating AMS.

Should you require further assistance regarding the above matter, please feel free to contact us at the following e-mail address: hanoi@duongtran.vn.