KEY CHANGES ON REGULATIONS ON PRE-GRANT OPPOSITION TO PATENT APPLICATIONS UNDER THE AMENDED INTELLECTUAL PROPERTY LAW 2022 IN VIETNAM
In this issue, we provide you with the new points regarding the opposition before the grant of a patent (pre-grant opposition) under the amended Intellectual Property Law 2022 in Vietnam, which include:
- Opposition mechanisms under the amended Article 112
- Similar and different points between opposition mechanisms
- Grounds for opposition under the amended Article 117
Opposition mechanisms under the amended Article 112
The amended Article 112 adds the new mechanism (Article 112a. The opposition to industrial property registration applications), which allows a third party to file pre-grant opposition to patent applications, in addition to keeping the previous mechanism which is to file the written documents to state the opinion of a third party on the grant or refusal of protection titles.
Accordingly, the amended Article 112 contributes to creating a flexible opposition mechanism and is reasonable to limit a delay in processing industrial property registration applications.
Please refer to the whole of amended Article 112 as follows:
“Article 112. Third-party opinions on the grant of protection titles
As from the date an application for the registration of the industrial property is published in the Official Gazette of Industrial Property until before the date of issuance of a decision on grant of a protection title, any third party shall have the right to express an opinion to the competent State administrative body for industrial property rights on the grant or refusal to grant a protection title for such application. Such opinions must be made in writing and be accompanied by documents or must quote the source of information to prove.
The written opinion of a third party shall be regarded as an information source for reference in the course of processing an industrial property registration.
Article 112a. Opposition to industrial property registration applications
1. Before the date of issuance of a decision on the grant of a protection title, within the following time limits, any third party has the right to oppose the grant of a protection title:
a) Nine months from the date the invention registration application is published;
b) Four months from the date the industrial design registration application is published;
c) Five months from the date the trademark registration application is published;
d) Three months from the date the geographical indication registration application is published.
2. Opposition specified in Clause 1 of this Article must be made in writing, enclosed with documents or cited as sources of information for proof, and must pay fees.
3. The state management agency in charge of industrial property rights shall handle oppositions specified in Clause 2 of this Article according to the order and procedure prescribed by the Minister of Science and Technology.”.
2. Similar and different points between opposition mechanisms for patent applications
Based on the amended Article 112 of the IP Law 2002 and Point 6 of Circular 01/2007/TT-BKHCN, these two mechanisms have the following similar and different points:
– Opinions or oppositions must be made in writing and accompanied by documents or must quote an information source for reference.
– Paying prescribed fees when filing an opposition is required.
– Any third party has the right to have an opinion or an opposition to the grant of a patent.
|Comparison||Third-party opinions on the grant of protection titles
|Opposition to industrial property registration applications
|As from the date a patent application is published in the IP Official Gazette until before the date of issuance of a decision on the grant of a patent||Nine months from the date a patent application is published.|
|Feature||Being only a source of reference information in the prosecution of patent applications.||An opposition is processed in a separate and independent procedure.|
3. Grounds for opposition
In addition to the grounds for opposition prescribed in the IP Law 2005, the amended Article 117.1 of the IP Law 2022 continues to add some legal grounds to refuse the grant of a patent for patent applications. Accordingly, it allows a third party to file an opposition to a patent application based on these grounds. Namely, there are nine grounds for the opposition in the amended Article 117.1:
- The invention does not fully meet the protection criteria.
- The patent applicant has not the right to register the invention.
- The invention does not meet the first-to-file principle (being not the invention having the earliest priority or filing date).
- There is no consent from all applicants (in case of having more than one similar or identical patent application filed on the same day, all of which meet the protection requirements).
- Amendments and supplements to a patent application extend the scope of the subject matters disclosed or stated in the original application or change the nature of the claimed subject matters.
- The claimed invention exceeds the scope of the disclosure in the original patent description.
- The invention fails to disclose sufficiently and clearly in the patent description to some extent that a person with an average in the art may implement that invention.
- Patent applications are directly based on genetic resources or traditional knowledge of genetic resources but fail to disclose or improperly disclose the origin of genetic resources or traditional knowledge of genetic resources.
- Patent applications are filed in violation of the regulations on security control for inventions before being filed abroad.
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