By Nguyen Nguyet Dzung
Pending patent applications are those, at one point in time, which have been filed with a certain patent office but not yet examined. Although there have not been any clear statistics, the backlog of unexamined patent applications at many patent offices is huge. According to Wikipedia, the backlog was said to be 4.2 million worldwide in 2007, and, as of 2009, it reportedly continues to grow. Alone, the United States Patent and Trademark Office (USPTO) is reported to have, as of 2009, a backlog of more than 700,000 patent applications.
As another example, the National Office of Intellectual Property of Vietnam (NOIP) has been reported, as of 2010, to have 70% of the total filed applications being pending and unexamined (2010 Annual Report, NOIP). That is, only 30% of the applications filed were granted patents. Delay in patent prosecution and examination is one of the greatest problems with the Vietnam patent system that may cause negative effects on the innovation process. More than that, such a holdup might adversely influence the examination quality: the more patent applications got stuck at the examiners' desks, the less time the NOIP's examiners will have to review patent applications. It is not far from the truth that the holdup of patent applications might be regarded as counter-productive to patent applicants.
Being understaffed is one of the reasons that make the examination of patent applications at the NOIP so prolonged. Though the NOIP has already expanded its patent examiner team recently but it would take years to clear the backlog of pending patent applications, accumulated at the NOIP for such a long time. The NOIP desperately needs additional examiners and probably more efficient electronic search systems. However, in addition to improving their personnel resource, it is believed that one less time-consuming and more efficient way to clear the pending patent application holdup is to take into account the patent prosecution cooperation between various patent offices, so-called the patent prosecution highway.
The Patent Prosecution Highway (PPH) is a set of initiatives for providing accelerated patent prosecution procedures by sharing searching and examination information and results between certain patent offices. It allows each partnering patent office to benefit from the search and examination works already carried out by the other partnering patent office, thereby avoiding the duplication of search and examination workload and ultimately reducing the patent backlog and improving patent quality. The PPH can be established between two patent offices (bilateral PPH), three patent offices (trilateral PPH), or more (multilateral PPH).
In the globalization context of economy, it is widely common that many legal entities and individual applicants need to acquire patent protection for the same invention in different countries. In order to do that, it may require to file separate patent applications to different patent offices, each of those will, in turn, independently review and examine the patent applications at their own office. As a result, it might take forever to obtain patents from various patent offices because of the backlog of pending patent applications at each office and the complicated examination proceedings as well. The advent of international collaboration with other patent offices to enable each partnering office to exploit relevant work already conducted by another office has led to PPH agreements between various countries being taken into consideration and become more and more popular all over the world now. The procedure can provide patent applicants with granted patent(s) for their invention much sooner than would normally be possible.
The bilateral pilot PPH program started in July 2006 between the USPTO and Japan Patent Office (JPO) was the earliest PPH. Under that program, an applicant receiving a ruling from the Japan Patent Office (JPO) that at least one claim in an application is patentable may request that the USPTO fast track the examination of corresponding claims in corresponding applications. In a same vein, an applicant receiving a ruling from the USPTO that at least one claim in an application is patentable may request that the JPO fast track the examination of corresponding claims in corresponding applications. At the USPTO, once the PPH request is filed, the PPH request is generally decided within 2 months from the filing of the PPH request. If the PPH request is granted, the examiner will generally examine the application within 2 to 3 months from the grant of the PPH request provided the application has completed all its pre-exam processing and is ready for examination (USPTO link). The PPH has been agreed to leverage fast-track patent examination procedures already available in both offices to allow applicants in both countries to obtain corresponding patents faster and more efficiently.
According to the World Intellectual Property Office (WIPO), the pilot program of Patent Cooperation Treaty/Patent Prosecution Highway (PCT/PPH) was also started on 29 January 2010 for a pilot period of two years. This program has been designed to allow expedited patent examination procedures for PCT applications that have received a positive written opinion from either the International Searching Authority or the International Preliminary Examining Authority, or an international preliminary examination report issued by either the European Patent Office (EPO), JPO or the USPTO. That is, the work products which patent examiners of participating patent offices can make use of and/or rely on when conducting a fast-track examination procedure in accordance with bilateral agreements can include positive results of the written opinion of the International Searching Authority, the written opinion of the International Preliminary Examining Authority or the international preliminary examination report issued within the framework of the PCT. Under this PCT-PPH procedure, applicants may even obtain patents more quickly before participating offices.
In the practice before the NOIP, although the number of applications for inventions, filed with the NOIP considerably increased annually, the speed of handling applications was not proportionate to such growth rate. The time period for the handling of IP applications still remains too long and the backlog of applications is still huge. Over the seven year period 2004- 2010, the NOIP could grant only 700 patents more or less every year. In 2010, the proportion of granted patents accounts for just over 20% of the number of patent applications filed with the NOIP. As we discussed above, being understaffed is one of the reasons that makes the examination of patent applications at the NOIP so prolonged. However, it is worth to note that the patent applications filed with the NOIP have mainly originated from foreign countries (incoming applications). Though the domestic patent applications increase over time, until recently it accounts for about 10% of the total applications filed only. The patent applications coming from the US, Japan, and European countries account for more than 65% of the total applications filed with the NOIP. The overall picture of patent filings and prosecution at the NOIP raise the question why the NOIP has not involved in any international patent prosecution cooperation like any bilateral PPH or even more effective PCT-PPH with some competent patent offices such as USPTO, EPO, or JPO. If the NOIP had ever signed a PPH with the JPO or USPTO, an applicant receiving a ruling from the Japan Patent Office (JPO) or the USPTO that at least one claim in an application is patentable may request the NOIP fast track the examination of corresponding claims in corresponding Vietnamese applications. As a matter of fact, the duplication of search and examination workload shall be eliminated, patent applicants may obtain Vietnamese patents more quickly, and ultimately the patent backlog at the NOIP shall be significantly reduced.
Alternatively, while considering to enter any bilateral PPH agreement may take time, should the NOIP consider the alternative approach to clear the patent application backlog thereat: to allow expedited patent examination procedures for PCT-derived Vietnamese applications that have received a positive written opinion from either the International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA), or positive international preliminary examination report (IPER) issued by either the EPO, JPO or the USPTO. That is, should the NOIP's examiners grant Vietnamese patents for PCT-derived Vietnamese applications which have received positive written opinions and/or IPERs provided they have appropriately amended to comply with Vietnam patent law and regulations? If it had ever done that way, certain burdensome search and examination workload shall not need to be carried out by the NOIP's examiners. More than ever, Vietnam patent system should seriously take advantage of any available international resource in patent prosecution in the coming months and years./.
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