FAQs about patents in Vietnam

Ngày cập nhật: 24/05/2022 lúc 10:36:07

Legislation

Patents are regulated by the:

– Law on Intellectual Property No. 50/2005/QH11(as revised in 2009, 2014 and 2019);

– Civil Code 2015 (in particular Chapter 13);

– Decree No. 103/2006/ND-CP dated 22 September 2006, Detailing and Guiding the Implementation of a Number of Articles of the Law on Intellectual Property regarding Industrial Property;

– Decree No. 99/2013/ND-CP dated 29 August 2013, on Administrative Penalties in the Area of Industrial Property;

– Circular No. 01/2007/TT-BKHCN of 14 February 2007, guiding the Implementation of the Decree No. 103/2006/ND-CP of 22 September 2006, detailing and guiding the Implementation of a Number of Articles of the Law on Intellectual Property regarding Industrial Property (amended, supplemented by Circulars Nos. 13/2010/TT-BKHCN of 30 July 2010, 18/2011/TT-BKHCN of 22 July 2011, 05/2013/TTBKHCN of 20 February 2013 and 16/2016/TT-BKHCN of 30 June 2016.

  1. What is an invention?

Under Article 4.12 of the Vietnam IP Law:

An invention is a technical solution in form of a product or process which is intended to solve a problem by applying laws of nature.

From the definition of the invention, it can understand that:

– Invention is a product or a technological process created by humans, not something (already existing in nature) discovered by humans.

– The essential attribute of an invention is a technical character because an invention is a technical solution to solve a problem.

  1. How many types of patents are in Vietnam?

There are two types of patents in Vietnam, including a Patent for Invention and a Patent for Utility Solution (Utility Model).

Note: Under Article 115.1.đ) of the Vietnam IP Law, it is possible to convert a patent application into a utility solution application and vice versa anytime before the IP Vietnam issues one of three decisions: (i) a decision to refuse to accept a valid application, a decision to refuse to grant a patent, or a decision to grant a patent.

  1. Protection conditions for inventions in Vietnam?

An invention shall be eligible for protection as a Patent for Invention if it meets the following conditions:

(i) being novelty,

(ii) involving an inventive step, and

(iii) being industrially applicable.

An invention shall be eligible for protection as a Patent for Utility Solution if it meets the following conditions:

(i) being novelty,

(ii) not being common knowledge, and

(iii) being industrially applicable.

  1. What is the difference between Patent for Invention and Patent for Utility Solution?

– A Patent for Invention must satisfy three criteria: (i) worldwide novelty, (ii) inventive step and (iii) industrial applicability. Meanwhile, a Patent for Utility Solution must satisfy two criteria: (i) worldwide novelty and (ii) industrial applicability, and must not be common knowledge.

It is easy to find that the patentability criteria of a Patent for Invention are higher than that of a Patent for Utility Solution.

– A Patent for Invention is valid for 20 years from the filing date, while a Patent for Utility Solution is valid for 10 years from the filing date.

– A request for substantive examination of a Utility Solution application must be filed within 36 months from the earliest priority date, compared to 42 months for a patent application.

  1. Subject matters not protected as inventions?

– Under Article 59 of the Vietnam IP Law, the following subject matters are not protected as invention:

  1. Discoveries, scientific theories, mathematical methods;
  2. Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;
  3. Presentations of information;
  4. Solutions of aesthetic characteristics only;
  5. Plant varieties, animal varieties;
  6. Processes of essentially biological nature for the production of plants and animals other than microbiological processes;
  7. Disease prevention, diagnostic and treatment methods for humans or animals.

– In addition, according to Article 8.1 of the Vietnam IP Law, subject matters that are contrary to the social ethics and public order and prejudicial to defence and security are also not protected as Invention.

  1. Are “Use” claims patentable in Vietnam?

Under Article 4.12 of the Vietnam IP Law, “Use” claims are presently regarded as non-patentable subject matters because they are not in the form of a parent or process. Therefore, such formats as the “Use” claim, the “Swiss-type” claim, and “second or further medical use” claim are currently unacceptable in the formality examination.

To be accepted by the IP Vietnam, an applicant may actively amend “use” claims to read them as “the composition, product… for use as…, or for use in…”. However, please bear in mind that the Vietnamese IPO’s acceptance is merely accepted provisionally as to formality, then such type of claim will be probably rejected in the substantive examination because the function/utility of the claimed subject is not the essential technical features of such subject matter under Circular 01/2007/TT-BKHCN.

  1. Is a patent valid in every country?

Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted in accordance with the law of that country or region.

For example, if a patent is granted in Vietnam, it will only be valid for the whole territory of Vietnam.

  1. Should a patent/utility solution application be filed as soon as possible?

Yes, a patent/utility solution application should be filed as soon as possible.

Like most countries, Vietnam applies the “first to file” principle under Article 90 of the Vietnam IP Law. It can simply understand that if two people create the same invention independently, and both of them file their patent application with the IP Vietnam, then a patent will be only granted to the person who is the first to file a patent application, regardless of who creates the invention first.

  1. What is the “first to file” principle?

Under Article 90 of the Vietnam IP Law:

– If there are two or more patent applications filed for identical or equivalent inventions, a patent will only be granted to an application having the earliest priority date or filing date among the applications that satisfy all protection criteria.

– In case where there are two or more applications satisfying all protection criteria and having the same earliest priority or filing date, all of the applicants are now required to reach an agreement to proceed with one application only. Without such an agreement, all those applications shall be refused.

  1. Who Can File an Application for a Patent or a Utility Model?

Under Article 86 of the Vietnam IP Law:

– Authors create inventions by their own expenses and efforts;

– Individuals or organizations invests funds, facilities and material means to authors in the form of job assignment or hiring, unless otherwise agreed by the involved parties whose agreements are not contrary to the legal provisions;

– In case many individuals or organizations jointly create or invest to create an invention, that organization or individual may register an invention after obtaining the consent of the other individual or organization.

  1. How is a patent/utility solution application processed?

Please see the link:

https://wincolaw.com.vn/filing-requirements/vietnam/patent-utility-solution-in-vietnam

for more details.

  1. Is it possible to file an appeal against notices or decisions issued by the IP Vietnam?

Applicants and all organizations/individuals having rights/interests directly related to the decisions or notices related to the processing of patent applications have the right to complain to the IP Vietnam or initiate a lawsuit in court in accordance with the provisions of the Vietnam IP Law and relevant laws.

– The first complaint to the IP Vietnam is made within 90 days, from the date of receiving or learning about the IP Vietnam’s decision or notice on the processing of the patent application.

– The second complaint to the Minister of Science and Technology is made within 30 days from the expiration of the time limit for settling the first complaint but the first complaint is not resolved or from the date that the person having the right to complain receives or learns about the decision for settling the first complaint, or initiate a lawsuit in court. The complainant has the right to initiate a lawsuit at court if they disagree with the complaint settlement decision of the Minister of Science and Technology.

  1. Is it possible to file a patent application abroad before filing in Vietnam?

No. For the reasons of national security, inventions of Vietnamese organizations and individuals and inventions created in Vietnam (by Vietnamese or by foreigners) must be filed firstly in Vietnam before filing at any overseas patent offices, noting that:

(i) A patent application may be filed elsewhere after six (6) months of having been filed in Vietnam; and

(ii) A patent application is not allowed to file abroad when determined as a secret invention.

  1. What is the novelty of the invention?

Under Clauses 1&2 of Article 60 of the Vietnam IP Law, the requirements of the novelty of invention are:

  1. An invention is considered novel if it has not yet publicly been disclosed in the forms of use or written description or any other form, inside or outside the country, before the filing date of the patent application or before the priority date in case the application benefits a priority date;
  2. An invention is considered as not yet publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret.
  1. Exceptions to a lack of novelty:

Exceptions to a lack of novelty are provided in Clauses 3 & 4 – Article 60 of the Vietnam IP Law.

Accordingly, Vietnam applies a 12 month grace period from the disclosure date if one of the following events occurs:

– 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;

– 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;

– 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 or because the application is filed by someone who does not have the right to file.

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.

  1. What is the inventive step of the invention?

Under Article 61 of the Vietnam IP Law, the requirements of an inventive step are:

An invention is considered as involving an inventive step if, based on the technical solutions already publicly disclosed in the forms of use or written description or any other form inside or outside the country, before the filing date of the patent application or before the priority date in case the application benefits a priority date, the invention is inventive progress and cannot be easily created by a person skilled in the art.

  1. What is the industrial applicability of the invention?

Under Article 61 of the Vietnam IP Law, the requirements of the industrial applicability are:

An invention shall be considered to be capable of industrial applicability if it can be applied to mass production or manufacture of the product or it is possible to repeatedly apply the process that is the subject matter of the invention to get stable results.

  1. How long is the validity of a patent?

The period of protection is 20 years for patents for invention from the filing date, while it is 10 years for patents for utility solution from the filing date.

Annuity payments are required to maintain the validity. The first annuity is to be paid at the time of granting the patent and due dates for the second and subsequent annuities are the anniversary of the granting date of the patent. Within six months before the due date to pay an annuity, the patent owner must submit a request to pay the annuity. In case an annuity payment is not made by the due date, the patent will lapse on the due date. However, a six-month grace period is available with a surcharge of 10% of the fee for each month late.

  1. When can a third party file a pre-grant opposition?

Under Article 112 of the Vietnam Intellectual Property Law:

– Any third party can file an opposition with the IP Vietnam from the date a patent application is published on the Industrial Property Official Gazette until before the date of the decision to grant a patent.

– The opposition must be made in writing, accompanied by documents or cited information sources to support it.

The IP Vietnam always publishes patent applications on the Industrial Property Official Gazette (electronic version) on a monthly basis. You should check whether the patent application you wish to oppose has been published or not, so you can proceed to file the pre-grant opposition.

  1. Is it possible to amend the content of a patent application after it has been filed?

Yes. An applicant may actively amend their patent application (filing a request for voluntary amendment) at any time before the IP Vietnam issues a final decision regarding the grant or refusal of the parent application.

– Any amendment must not go beyond the scope of the original disclosure of the patent application.

– The applicant is requested to pay a fee for the amendment of a patent application.

  1. The requirements for filing a divisional application in Vietnam?

– In Vietnam, one or more divisional applications can be filed for any reasons, such as (i) in response to a lack of unity rejection, (2) the voluntary amendment of a parent application by filing a divisional application.

– Time limit for filing a divisional application:

A divisional application can be filed at any time before the IP Vietnam issues a final decision regarding the grant or refusal of the parent application.

In practice, a divisional application should be filed no later than at the time of paying the grant fees of the parent application.

– Requirements for the specification of a divisional application:

The specification of a divisional application must not go beyond the original specification of the parent application.

The claimed subject-matter(s) of the divisional application must be different from those of the parent application and must be supported fully by the specification of the parent application.

– The applicant is required to pay fees for filing a divisional application. The fees for filing a divisional application are similar to those for filing its parent application except that the payment of fees for a priority claim are not required in a divisional application.

  1. Is it possible to transfer a patent application to another person?

Yes. An applicant can request IP Vietnam to record the transfer of a patent application to another person on the basis of assigment, inheritance, or a decision of competent authority before the IP Vietnam issues a final decision regarding the grant or refusal of the parent application.

– An applicant is required to pay the fees for the transfer request.

  1. Is it possible to amend a patent after grant?

Yes. In Vietnam, granted patents can be amended under Article 97 of the Vietnam IP Law.

Therefore, a patent owner can carry out the following post-grant amendments:

– To change the name and/or address of the patent owner;

– To change the name and/or address and/or nationality of inventors;

– To correct errors in patents made by the IP Vietnam; or

– To narrow the scope of patent protection by removing one or some independent and/or dependent claims. In this case, the subject patent application must be reexamined as to substance.

 

Note:

The advice above relies on the provisions of the law and regulations at the time of consultation, which may no longer be relevant due to changes in legal policy.

Kindly contact us via our emails  winco@fpt.vn; patent@winco.com.vn or our phone (84-24) 3 7628119 / (84-24) 3 7628185, if you have any questions to receive the fastest and most accurate support from us.