You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

February 3, 2023

A Review of the Japan-Vietnam Patent Prosecution Highway

Subscribe to Updates

Overview

Although Vietnam has a number of mechanisms for accelerating the patent examination process, most of them have not lived up to the expectations of applicants. However, a fast-track patent prosecution highway (PPH) program was opened for the first time between the Intellectual Property Office of Vietnam (IP Office) and the Japan Patent Office (JPO) in January 2016, creating opportunities for all applications originating from Japan.

The PPH program has been rolled out in the following stages:

After more than six years of implementation, this program is considered successful and can be extended to support Japanese enterprises in establishing patent rights in Vietnam.

Effectiveness

This program has many advantages, such as:

  • Applications originating from Japan are usually of good quality with clear and coherent specification It is possible that the IP Office’s requirements for specifications are already very consistent with Japanese applicants’ way of drafting specifications thanks to the JPO’s training programs for the IP Office.
  • Patents in Japan usually have a short examination timeline and are granted very quickly, even within the application filing timeline in Vietnam (12 months from the priority date for applications filed under the Paris Convention and 31 months from the priority date for applications filed as PCT national phase applications).
  • The coordination between the JPO and the IP Office has been very good. PPH applications are processed in a quick and efficient manner.
  • Japanese applicants and their representatives also often coordinate well with the IP Office to rectify formality shortcomings and avoid prolongation of the examination period.

Although there are no official statistics from the IP Office, according to independent statistics for applications whose PPH requests were filed by Tilleke & Gibbins’ associate firm (one of the most prolific filers under the PPH), the examination period for applications under the PPH has been significantly shortened, compared to the period for substantive examination as prescribed by law (18 months):

  • The average period for receiving the first office action as from the date of the PPH request is 8.53 months.
  • The average period for receiving a notice of allowance without an office action from the date of requesting PPH is 7.98 months.

Further, the prescribed 18-month time limit for examination is often difficult to achieve for various reasons, and the actual examination period for applications not under the PPH program is typically much longer than 18 months in practice. Obviously, the PPH has been providing a tremendous time benefit to Japanese applicants.

Current Status

Since its inception, the PPH program has attracted the attention of many Japanese enterprises and industrial property representatives in Vietnam. In fact, in the first rounds of this program, the timeline for the number of requests to reach the limit was often very short, and in many cases the limit was reached on the very first day the round was opened.

However, despite the PPH’s apparent effectiveness, recent monitoring of the number of applications as well as the time limit for filing PPH requests shows that this program has not been attracting the attention of Japanese applicants as much as before. According to the above figure, the number of days to reach the request limit has increased in every period since 2020. By 2022, the first round, which was opened on April 1, 2022, had not even reached 100 requests after six months, and the 34 remaining spots were moved to the second round, which was opened on October 1, 2022.

It is not clear why Japanese applicants have shown reduced interest in the PPH program after its initial popularity, though it is worth noting that the time period in which the number of PPH requests was slower to reach the limit (from October 2020 to mid-2022), coincided with the period when Japan and Vietnam were most affected by the Covid-19 pandemic. This may have affected the management strategy of Japanese enterprises as well as the budget for promoting IP portfolios.

Upcoming Changes

Article 114 of Vietnam’s amended IP Law, which took effect on January 1, 2023, allows the IP Office to use the results of substantive examination of a patent application claiming the same invention filed with a foreign patent office in the process of assessing the patentability of the corresponding Vietnamese application. The latest draft of a circular to replace Circular 01/2007, which guides the implementation of the IP Law, also includes provisions intended to allow an applicant to proactively request the IP Office to proceed in this manner. Also according to this draft circular, if the IP Office accepts the applicant’s request, a communication on substantive examination results must be issued for the Vietnamese application within 12 months from the date of the request.

As such, Article 114 of the IP Law seems to open a new door for patent applicants in accelerating the examination process in Vietnam. This program is expected to be equally effective and possibly even more effective than existing acceleration programs. The scope of expedited examination is extended to applicants from all countries and is not limited only to applications originating from Japan and South Korea (which has its own PPH with Vietnam) or applications with equivalent applications filed in ASEAN countries under the ASPEC program.

Although on the positive side, the expedited process will give applicants more options, on the other hand, because of the overlap in the results that can serve as basis for examination, this new program will “steal” applications from the PPH program. Thus, once the new program goes into effect, Japanese applicants will no longer have a significant advantage over applicants from other countries that can use foreign results. However, according to the statistics cited above, the average examination period of the PPH program may still be shorter, and the PPH program has been operating in a stable manner; hence, in the early period once the new program is in place, the Japan PPH may still be more attractive.

As Vietnam currently does not have a mechanism for extending the protection term of a patent, the early granting of a protection title is still an advantage. The PPH remains an effective channel for Japanese applicants in expediting the examination and granting of patents in Vietnam.

Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

August 15, 2025
Indonesia’s Directorate General of Intellectual Property (DGIP) has introduced a temporary feature in its online filing system to accommodate the submission of annual patent working statements. The requirement to submit these annual working statements was introduced under the amended Patent Law enacted on October 28, 2024, but the implementing regulation has still not been issued. Annual Working Statements Article 20A of the amended Patent Law requires all patentees to submit an annual statement regarding the implementation of their patents in Indonesia. This obligation applies to all active patents, regardless of when they were granted. The annual working statement declares the status of implementation of the patented invention within Indonesia. Acceptable forms of implementation include: Manufacturing the patented product (whether commercialized or not) Utilizing the patented process (whether commercialized or not) Importation Licensing If the patent has not yet been implemented in Indonesia, the DGIP provides an option to indicate: “The mentioned registered patent has not been implemented in Indonesia.” The statement must be made using the official template provided by the DGIP through the online filing system. Submission The working statement must be submitted annually no later than December 31 of each calendar year. No supporting documents are needed for the submission apart from the signed form itself. A color scanned copy will suffice; the original document is not required. There is currently no official fee for submitting the working statement. While the submission process may eventually align with annuity fee payments, the current process remains separate due to the pending implementing regulation. The submission process may be subject to change upon issuance of the implementing regulation, which is under discussion and expected in the coming months. In the interim, the DGIP accepts submissions of overdue working statements, allowing patentees to fulfill their obligations retroactively. This flexibility is expected
Read More
July 31, 2025
The Madrid System for international trademark registration provides the opportunity for a simplified and cost-effective way to register trademarks in multiple countries through a single application. Indonesia joined the Madrid System in 2018, and in 2024 alone, it received over 8,600 applications through this system. Despite the system’s effectiveness, it is important for trademark owners to be aware of the potential risks of refusal that can arise during the process of registration. Trademark applicants must pay close attention to these critical points when designating Indonesia. Appointing a Local Representative to Respond An applicant or representative of an international registration (IR) application that has been provisionally refused must appoint a local Indonesian representative in order to submit a response to the provisional refusal. This appointment is solely for the purpose of responding to the refusal in Indonesia; it is not necessary if the IR has not received any rejection. Furthermore, the local representative should not be registered with WIPO, as doing so would affect representation across all designated countries. Timing When it comes to calculating the deadline for responding to a provisional refusal, there is a discrepancy between the methods used by the DGIP and WIPO. Under the Indonesian Trademark Law, trademark owners can file a response within 30 working days, excluding weekends and national holidays. However, the WIPO cover letter accompanying the DGIP’s provisional refusal notice specifies both the start date and the deadline for responding to the notification, which is calculated as 30 calendar days, including weekends and national holidays. Therefore, a response to the provisional refusal of IR should be submitted in accordance with the WIPO cover letter to prevent any formality issue. Grounds for Refusal After an IR application is published in Indonesia’s Trademark Gazette, it undergoes substantive examination by the Directorate General of Intellectual Property (DGIP) examiners. The
Read More
July 30, 2025
Artificial intelligence (AI) model training and data scraping are essential processes in the development of modern AI systems. AI model training involves using large datasets to teach machine learning algorithms to recognize patterns, make predictions, or generate new content. Data scraping refers to the automated extraction of information from websites or digital sources, often to assemble the vast datasets required for effective AI training. As these practices become more widespread, questions about the legality of using third-party content—especially copyrighted works—have become increasingly important. In Thailand, the legal landscape for AI developers is shaped primarily by the Copyright Act, which presents unique challenges due to the absence of a fair-use exception. This article examines the copyright-related risks and legal uncertainties facing AI developers under Thailand’s current copyright law and practices, offering strategic guidance for navigating this complex environment. Copyright Risks in AI Scraping and Training Thailand’s Copyright Act does not provide a broad fair use or fair dealing exception, unlike some other jurisdictions, such as the United States. This absence has significant consequences for AI developers: No general defense for AI training: Any use of copyrighted material for AI model training is presumed to be infringing unless a specific, narrow statutory exception applies or explicit permission is obtained from the rights holder. There is no general legal basis for using copyrighted works in AI training without authorization. Increased rights clearance burden: Developers must identify and secure licenses for every copyrighted work included in their training datasets. Given the scale and diversity of data required for effective AI models, this process can be both impractical and costly. Legal ambiguity and litigation risk: The lack of clear statutory guidance or case law leaves developers in a legal gray area. There is no established precedent clarifying whether certain uses of copyrighted material for
Read More
July 25, 2025
Over the first half of 2025, the government of Vietnam has implemented a comprehensive suite of legislative reforms that significantly impact the country’s intellectual property (IP) framework. These amendments, most of which took effect on 1 July 2025, span the criminal, civil, administrative, and judicial sectors, and are part of a broader initiative to modernize Vietnam’s legal infrastructure, strengthen enforcement mechanisms, and harmonize domestic regulations with international standards. A summary of the key legislative changes and their potential implications for IP protection and enforcement across Vietnam is provided below. Criminal Code: Stricter penalties Under the 2025 amendments to Vietnam’s Criminal Code, penalties for offenses involving the manufacturing and trading of counterfeit goods have been significantly escalated. Individuals convicted of such violations now face fines ranging from VND 200 million to VND 2 billion (approximately USD 7,700 to USD 77,000; up from VND 100 million to VND 1 billion). For corporate entities, the penalties are even more severe, with fines ranging from VND 2 billion to VND 40 billion (roughly USD 77,000 to USD 1.54 million; up from VND 1 billion to VND 20 billion). These heightened penalties reflect the government’s intensified efforts to deter counterfeit-related crimes and protect consumer rights. Law on Handling Administrative Violations: Extended statute of limitations and application of electronic procedure The statute of limitations for addressing administrative violations in the IP sector is still two years. However, in cases where such violations are referred by procedural authorities, this period is extended by one year. The time taken by these authorities to process the case is now included within the overall limitation period. In addition, the Law on Handling Administrative Violations facilitates the use of electronic procedures, provided that the necessary infrastructure, technical systems, and information conditions are in place. Specifically, enforcement authorities are now permitted
Read More