Exceptions to Loss of Novelty for patent applications filed in Vietnam

Ngày cập nhật: 21/04/2022 lúc 3:47:27

applications filed in vietnam

1 Year Grace Period

Article 60 of the Intellectual Property Law (revised in 2019) in Vietnam:

  1. An invention shall not be considered to have lost its novelty if it is publicly disclosed by a person entitled to registration as regulated in Article 86 of this Law or by a person who obtains information about the invention directly or indirectly from the former, providing that, patent applications filed in Vietnam is within twelve months from the date of disclosure.
  1. The provisions of Clause 3 of this Article also apply to inventions publicly disclosed in industrial property registration applications or industrial property protection titles published by the state management agency in charge of industrial property in case the publication is not in accordance with the provisions of the law or an application filed by a person not having the right to register.

According to Clauses 3 & 4 of Article 60 of the Intellectual Property Law, an invention is not deemed to lose its novelty where, within 12 months before the date of filing, one of the following events occurred:

(1) Where it is disclosed by a person entitled to registration as regulated in Article 86 of the Intellectual Property (IP) Law, regardless of any disclosure reasons;

(2) Where it is disclosed by a person who obtains information about the invention directly or indirectly from the persons as regulated in Article 86 of the IP Law;

(3) Where it was disclosed in patent applications or patents published by the state management agency in charge of industrial property (the IP Vietnam), but the publication is not in accordance with the provisions of the law.

(4) Where a patent application is filed by a person not having the right to register. 

Tips: 

To enjoy a grace period, an applicant should file its patent application within 12 months from the date of disclosure and submit relevant documents (“the proving documents”) to prove the date on which the disclosure event occurs and the disclosed contents.

 On the other hand, IP Vietnam does currently not provide detailed instructions about the time-limit for filing the proving documents. Therefore, it is advisable to actively submit these documents as soon as possible before starting the substantive examination to take advantage of the grace period. Namely, disclosures under Clauses 3 & 4 of Article 60 of the IP Law would not be considered as prior art when assessing the novelty and inventive step of the invention. 

Should you have any further questions, please do not hesitate to contact us at winco@fpt.vn; patent@winco.com.vn.

 

 

 

RELATED ARTICLES: