- Law on Intellectual Property no. 50/2005/QH11 of November 29, 2005 (hereafter referred to as “IP Law”)
- Circular No. 01/2007/TT-BKHCN of February 14, 2007 guiding the implementation of The Governments Decree No. 103/2006/ ND-CP of September 22, 2006, revised by Circular No. 16/2016/TT-BKHCN of 15 January 2018 (hereafter referred to as “Circular”)
Questions of interest
When the applicant made some errors in translation from original language (e.g. Japanese, Chinese, Korean, etc.) to Vietnamese, could the applicant have an opportunity to correct them before/after the registration of patent?
The answer is Yes.
The applicant is actually allowed to make correction based upon the Articles 97 & 115 of IP Law and Articles 17 & 20 of Circular, provided that the proposed amendment/correction meets the prescribed requirements set forth in those articles.
1. Before the registration
As for the amendment before the registration, Article 115 of Vietnamese IP act allows the applicant to amend the claims or descriptions based on the initial patent application – new matter rule. If the amendment to recover the errors in translation causes “new matters”, could IP VIETNAM reject this amendment?
In a case where the proposed amendment recovering the grammatical errors causes “new maters”, such a case shall be examined and/or considered carefully by IP VIETNAM to determine whether or not the proposed amendment changes the nature/gist of the subject matters, meaning that if there is no basis of the original application on which the “new matters” are found, the amendment is considered “unallowable”(Article 17.1c) of Circular).
2. After the registration
As for the correction after the registration, Article 97 of Vietnamese IP act allows the applicant to correct the claims or descriptions in case that the scope of the corrected claim should be narrower than before – enlargement of scope rule. Also, this article states that correction of typo is permitted based on the same rule. If the corrections of claims to recover the errors in translation causes “enlargement of scope” and the mistranslation is not “typo”, could IP VIETNAM reject this correction?
Article 20.1b)(iii) of Circular states the rule of “narrowing of protection coverage”, only indicating that the applicant is able to file a request to remove/delete one or several independent or dependent claim(s). Also, Article 17.1c) of Circular states the amendment (correction) can not go beyond the content of the application as originally filed.
In the light of the above, if the proposed correction of claims to recover the errors in translation causes “enlargement of scope”, the correction shall be considered unallowable.
In regard to the mistranslation is not “typo”, again, such a case shall be examined and/or considered to determine whether or not:
- the proposed mistranslation changes the nature/gist of the subject matters , or
- the proposed mistranslation is considered to extend beyond the content of the application as orignially filed.
meaning that if there is NO basis of the original application on which the “new matters” are found or the proposed mistranslation actually changes the nature/gist of the subject matters, the mistranslation is considered “unallowable”.
In short, under current Law and Practice in Vietnam, correction of mistranslation is permissible in a certain requirements and/or circumstances .
Note: To minimize the risk of mis-translation from original language to Vietnamese, it is advisable to seek skilled and qualified patent attorneys in Vietnam.
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Any of the above general information is not legal advice. Should clients need any further information in this regard or any legal IP matters, please contact us at:
Dao Danh Phuoc (Mr.)
Head of Patent and Design Department – IPHOUSE & ASSOCIATES
Phone: (+84)967742458 (direct)