On 15 January 2018, the Circular No. 16/2016/TT-BKHCN (hereafter referred to as “Circular 16”) revising the Circular No. 01/2017/TT-BKHCN (hereafter referred to as “Circular 01” ), one of the core regulations in the Vietnam IP system, took effect with extensive changes. The revised Circular 16 aims to bring the IP system of Vietnam in line with recent developments.
Briefly, there are 49 points revised out of total 67 points of the Circular 01, focused mainly on examination of patent and trade mark applications.
This post will focus on key changes for patents based on guidelines laid out in the Circular 16. Patent applicants should take note of the amendments to avoid compliance risks.
1. Time limit for entering Vietnamese national phase of PCT applications
Earlier, PCT applications were allowed to enter the Vietnamese national phase within 6 months after the 31 months deadline, with an extra fee. However, as per the new Circular 16, the 6-month grace period has been removed, making trictly the deadline only 31 months without any grace period.
Applications with the 31-month deadline on or after January 15, 2018, shall basically NOT be allowed for a late entry request.
| Circular 16 (new) | Circular 01 (old) |
| Not allow to enter Vietnamese National Phase late within 6 months | Allow to enter Vietnamese National Phase late within 6 months with an extra fee |
Therefore, we strongly recommmend applicants to strictly follow the 31-month deadline to avoid the risk of refusing the application.
2. Deadline for requesting substantive examination
In accordance with the Circular 16, the deadline for submitting a request for substantive examination for a patent application is 42 months from the earliest priority date (or the filing date if no priority claimed).
As previously adopted, under the Circular 01, the deadline could be extended by no more than 6 months if there is a reasonable and justifiable reason, with an extra fee. This 6-month extension currently applies only in the event of “Force Majeure Events” or “Objective Obstacles”, which are NOT common. Additionally, evidence of this event/obstacle must be submitted.
| Circular 16 | Circular 01 | |
| Deadline for request of substantive examination | 42 months (NO extention of time unless the event of “Force Majeure Events” or “Objective Obstacles”) | 42 months (extention of time is applicable) |
Therefore, we strongly recommmend applicants to strictly follow the 42-month deadline to avoid the risk of refusing the application in case the event of “Force Majeure Events” or “Objective Obstacles” may have been found unpersuasive and thus NOT accepted by IP VIETNAM.
3. Request for extension (Force Majeure Events and Objective Obstacles)
The Circular 16 has provided the duration of Force Majeure Events and/or Objective Obstacles will be excluded from the statutory time limit.
New concepts have been also introduced, particularly:
| Circular 16 | Circular 01 |
“A force majeure event” is an event which occurs in an objective and unforeseeable manner (for example: natural disasters, enemy-inflicted destruction, etc.) and cannot be surmounted despite all necessary and possible measures having been taken. | Silent |
| “Objective obstacles” are obstacles caused by objective circumstances (for example: sickness, going on a business trip, learning at a distant place, etc.) that make a person with rights or obligations unable to know that his/her legal rights or interests have been violated, or unable to carry out his/her legal rights or obligations. | Silent |
To enjoy such an exclusion, applicants must submit a request along with a petition and proper, justifiable evidence demonstrating such events, and after consideration, IP VIETNAM might approve.
4. Time limits for official responses and payment of registration fee
The Circular 16 has specified a new time limit set for examination responses and payment of registration fee in a manner of granting more additional time.
- Time limit for formality examination response increased from one to two months
- Time limit for substantive examination response increased from two to three months
- Time limit for payment of registration fee increased from one to three months
| Event/action | Circular 16 | Circular 01 |
| Formality examination | 02 months | 01 month |
| Substantive examination | 03 months | 02 months |
| Payment of registration fee | 03 months | 01 month |
The above deadlines may be extended only once for a similar period as set in the amendment. In these cases, patent applicants need to apply for an extension before the prescribed time limit expires, along with an extension fee.
5. Requirements for applications of biotechnology-related inventions
The Circular 16 has stipulated a requirement of list of genetic sequences in the specification.
| Circular 16 | Circular 01 |
| For applications of inventions concerning genetic sequences of part of genetic sequences, a list of genetic sequences must be placed at the end of the specification | Silent |
6. Claims including function/purpose-limited features
The Circular 16 has supplemented the regulations with respect to function/purpose-limited features in the claims to which function/purpose of the claimed subject matter is considered NOT to be essential technical feature. In practice, this regulation will be made used in the substantive examination stage in principle.
| Circular 16 | Circular 01 |
| Adding the definition of essential technical features in details “essential technical features are structural features of body (parts, partial unit, linkage etc.) or substance structure (composition, presence, element states, etc.) with other essential features to constitute a necessary and sufficient set to determine the nature of the subject matter”. | Silent |
| Asserting that “function/purpose features of subject matters are not essential technical features”, meaning: dependant claim(s) including function/purpose-limited features NOT permissible | Claims including function/purpose-limited features permissible |
Any of the above general information is not legal advice. Should clients need any further information on legal IP matters, please contact us at:
Dao Danh Phuoc (Mr.)
Head of Patent and Design Department – IPHOUSE & ASSOCIATES
Phone: (+84)967742458 (Direct)
Email: daodanhphuoc@iphouse.vn
Website: http://iphouse.vn/