To support clients whose applications were designated/elected Vietnam under the Patent Cooperation Treaty (PCT) to seek the protection, IPHOUSE & ASSOCIATES kindly provide clients guidance notes and procedures for obtaining a patent right in Vietnam.
Notes for the entry of PCT applications in Vietnam
1. Time limits applicable for entry into the national phase
- Under PCT Article 22(3): 31 months from the priority date
- Under PCT Article 39(1)(b): 31 months from the priority date
NOTE: 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 Circular No. 16/2016/TT-BKHCN of June 30, 2016, revising a number of Articles of Circular No. 01/2007/TT-BKHCN of February 14, 2007 – one of the core regulations in Vietnam IP system), the 6-month grace period has been removed, making trictly the deadline only 31 months without any grace period.
Therefore, we strongly recommmend applicants to strictly follow the 31-month deadline to avoid the risk of refusing the application.
2. Minimum requirements of documents and translation at filing
A patent application dossier filed with the IP VIETNAM (or its brand offices in Ho Chi Minh City or Da Nang) must generally include the followings:
- Description, claims (if amended, both as originally filed and as amended, together with any statement under PCT Article 19), any text matter of drawings, abstract (if the entry into the national phase under PCT Article 22)
- Description, claims, any text matter of drawings, abstract if any of those parts has been amended, both as originally filed and as amended by the annexes to the international preliminary examination report (if the entry into the national phase under PCT Article 39(1))
NOTE: As Vietnamese translation of the specficication is a MUST, it is advisable to seek skilled and qualified patent attorneys in Vietnam to minimize the risk of mis-translation from original language to Vietnamese.
ii) Power of Attorney (POA)
POA granting authority to the representative of the applicant (e.g. IPHOUSE & ASSOCIATES) filing the patent with IP VIETNAM is required.
NOTE: The POA should be dated (it is noteworthy that the date of the POA should be on/before the filing date of the application), executed by the representative of the applicant and affixed with the seal of the company (if any). Notarization and legalization are not necessary. General POA is also acceptable. The original document is required within one (1) month from the filing date.
iii) Special requirements (under PCT Rule 51bis)
- Name and address of the inventor if they have not been furnished in the “Request” part of the international (PCT) patent application
- Instrument of assignment where the applicant is NOT the inventor
- Instrument of assignment of the priority rights where the applicants are NOT identical
- Furnishing, where applicable, of a nucleotide and/or amino acid sequence listing in computer readable form
NOTE: Copy of the international application and priority document are NOT required.
3. National fee
- Fee for priority claims: 600,000 (VND) per priority
- Fee for requesting formality examination: 180,000 (VND) for each independant claim(s)
- Additional fee for each sheet (page) of the specification in excess of six: 40,000 (VND)
- Additional fee for each drawing in excess of one: VND 60,000 (VND)
- Fee for publication: VND 120,000 (VND)
- Search fee: 600,000 (VND) for each independant claim(s)
- Fee for requesting substantive examination : 720,000 (VND) for each independant claim(s)
NOTE: Exemptions and refunds of the national fee are not applicable.
1. Patent subject-matter eligibility in Vietnam
In general, Vietnam allows protection for the following subject matters:
- Processes (or methods);
2. Types of patent in Vietnam
In Vietnam, there are two types of patent including:
- Patent for invention;
- Patent for utility solution (Utility Model).
Note: Conversion into a patent for utility solution and vice versa
An application for a patent for invention (and vice versa) filed with IP VIETNAM may, at the request of the applicant and upon payment of the prescribed fee for requesting conversion, be converted into an application for a patent for utility solution after the substantive examination of the application for a patent for invention has taken place, if the requirements for granting the patent are found not to be fulfilled and if such request for conversion is filed within three months from the date of notification of refusal of the grant of the patent for invention.
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.
4. Patentability of an invention
General formality requirements
The claimed invention must:
- Be a technical solution in the form of a product, substance, or process to solve a specific problem by using the laws of nature;
- Not be contrary to social morality and public order or detrimental to national defence and security;
- Not be on the list of unpatentable subject matter (see, item 5 below).
To be patentable, an invention must: i) be novel (globally); ii) involve an inventive step and iii) be industrially applicabe.
An invention shall be considered to be new if it was not publicly disclosed by means of use, written description or in any other way inside or outside the country, prior to the filing date or, where priority is claimed, the priority date of the patent application.
IP VIETNAM operates “grace periods” (one-year grace period practice for disclosure) whereby if an applicant files a patent application within a certain time after publicising the invention then the earlier disclosure is not considered to be prior art to the patent application.
Accordingly, an invention shall not be considered as publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret. Further, an invention shall not be considered to lack novelty if:
- The invention was unauthorizedly disclosed by another person without will and acceptance of the applicant;
- It was disclosed by the applicant in the form of a scientific report; and
- The invention was displayed at a national exhibition of Vietnam or an official or officially recognized international exhibition,
provided that the patent application for such an invention is filed within 12 months from the date of disclosure.
ii) Inventive Step
An invention shall be considered as involving an inventive step if, having regards to technical solutions already disclosed to the public by means of use, written description or in any other way inside or outside Vietnam prior to the date of filing, or the priority date where priority is claimed, of the patent application, it constitutes an inventive progress and cannot be easily made by a person skilled in the art.
iii) Industrial Applicability of Inventions
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.
5. Unpatentable subject-matters
Patents can protect products or processes, except the following:
- Discoveries, scientific theories and mathematical methods;
- Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business, and computer programs;
- Presentations of information;
- Aesthetic solutions;
- Plant and animal varieties;
- Essentially biological processes for the production of plants and animals, except microbiological processes;
- Methods of disease prevention, diagnosis and treatment for humans or animals.
6. Filing the application
In order to obtain a patent right, you must apply to Intellectual Property Office of Vietnam (IP VIETNAM) and go through examinations to determine whether the application fulfills all the requirements of patentability in alliance with national jurisdiction.
i) Representation: An applicant having no habitual residence, headquarters or representative office in Viet Nam must be represented by an attorney authorized to act by the competent authority of the State
ii) “First-to-file” principle: Viet Nam has adopted the first-to-file system, i.e. where two or more applications are filed by many different parties for registration of the same invention, the patent may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions for the grant of patent and having the same earliest priority or filing date, the patent may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement, all these applications shall be refused for the grant of a patent. Accordingly, it is advisable to file an application for a patent as soon as possible after the invention and not to make the invention public before filing the application.
7. Formality examination
A patent application filed with the IP VIETNAM shall be subject to examination of formality for evaluating its validity.
The time limit for formality examination of an application is one (1) month from the filing date. In the course of formality examination, if the applicant corrects or supplements documents on his own initiative or upon the request of the IP VIETNAM, the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.
8. Publication of the Patent Application
When the application passes the formality examination and the decision of acceptance of a valid application is issued, it is published in the Industrial Property Gazette. IP VIETNAM will publish the application in the Official Gazette after 18 months have elapsed from the date of filing, or within 2 months after being accepted as a valid application, whichever is later.
Early publication in Vietnam is available upon request of applicant. A patent application being request of the early publication shall be published within 2 months from the date on which IP VIETNAM receives the request or from the date on which the application is accepted as to form, whichever is later.
9. Request for the Substantive Examination
A patent may be granted only after the substantive examination, which may be requested by the applicant or by a third party. The request must be made:
- within 42 months from the priority date or the filing date (if the application does not claim any priority right) in case of an application for a patent for invention, or
- 36 months from the priority date or the filing date (if the application does not claim any priority right) in case of an application for a patent for utility solution.
The request for examination is only effective if the fee for requesting examination has been paid.
Any application, for which a request for the substantive examination has not been filed within the time limit above-mentioned will automatically be regarded as withdrawal and cannot be patented thereafter.
10. The Substantive Examination
The substantive examination will be carried out by IP VIETNAM to determine whether or not the claimed invention should be patented. Under the Vietnamese Law, the first subtantive office action will be issued within 18 months from the date of request for substantive examination or the publication date, whichever is later.
11. Notification of Reasons for Refusal
If reasons for refusal are found, a notification to this result will be sent to the applicant.
12. Written Argument/Amendment
An applicant who has received the notification of reasons for refusal shall be given an opportunity to submit either a written argument claiming that the invention differs from the prior art to which the notification of reasons for refusal refers, or an amendment of the claims in the case that this would nullify the reasons for refusal.
13. Decision to grant a patent
As a result of the examination, IP VIETNAM will make a decision to grant a patent as the final assessment of the examination stage if no reasons for refusal have been found. Similarly the same decision would be made if the reasons for refusal have been eliminated by an argument or amendment.
14. Decision of Refusal
On the other hand, if the reasons for refusal have not been eliminated (the written argument/amendment has been found unpersuasive), a decision of refusal will be made.
15. Appeal against Decision of Refusal
When dissatisfaction is in the decision of refusal, the applicant may appeal against such decision of refusal. The appeal concerning the decision by the Office will be considered firstly by the Director General of the Office and finally by the Minister of Science, Technology and Environment in administrative proceedings.
16. Registration (Patent Fee Payment)
Provided that the applicant pays the patent fee, once the decision to grant a patent has been made the patent right will come into effect as it is entered in the Patent Register. At the same time, the invention acquires a patent number. After a patent is registered, a certificate of patent will be sent to the applicant
17. Publication of Patent Gazette
The contents of the patent right entered in the Register will be published in the Patent Gazette.
18. Annual Fees
After a patent has been granted, annual fees must be paid for maintaining the patent in force. The first annual fee must be paid within a time limit which shall be fixed in the notification of the grant of the patent. Payment of annual fees for each succeeding year must be made within the last six months of the previous year. If an annual fee is paid later than during this period, the patentee shall be required to pay a supplementary fee amounting to 10% of the annual fee for each month overdue. In the absence of justifiable grounds for delay, failure to pay an annual fee within six months from the last day of the period during which it is due will render the patent invalid.
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