Register a patent, utility solution in Vietnam

Registering a patent/ utility solution is not a mandatory procedure, the author/owner of the patent/ utility solution needs to do so to ensure his/her legal rights and interests on their intellectual property. In this article below, the way to register a patent, utility solution in Vietnam will be guided by Viet An Law based on the current vietnam IP Law.

What general conditions must a patent/ utility solution meet to be granted a patent?

According to the general provisions of the Intellectual Property Law, there are regulations on conditions for patent/utility  solutions, so an application should be filed to be granted a protection title when specific conditions are met.

Inventions are protected in the form of patents if they meet the follwing conditions:

• Novelty;
• Have a creative level;
• Capable of industrial application.

Inventions are protected in the form of utility solutions if they are not common knowledge and meet the following conditions:

• Novelty;
• Capable of industrial application.

Popular types of patent/utility solutions

The technical solution in the form:

• Structure
• Matter
• Method

Benefits of registering a patent/ utility solutions

• Patent registration helps owners and authors protect their creative achievements.
• Helps prevent acts of infringement and illegal use of the creative achievements of patent owners;
• Registering a patent helps the owner increase competitive advantage, market power and earn more profits due to the owner’s monopoly.
• Patents create a novelty source of income for the owner by licensing or transferring the patent.
• Patents help owners raise capital and attract potential investors.
• Patents help owners protect themselves against competitors’ patent.
• Patent owners can use patents to convey a signal of higher technological capabilities and greater creativity. From there, the owner achieves higher performance in marketing and advertising strategies.

Procedures for registering patent/utility solution in Vietnam

Step 1: Determine the type of patent/ utility solution for protection

After completing the invention, the owner needs to determine the type of protection of the invention and classify the invention according to the International Patent Classification (IPC).

Step 2: Research patent/utility solution

• Patent search aims to determine the feasibility of the registered invention being granted a patent because the patent registration time is quite long.
• Customers can search for patent themselves via the website of the National Office of Intellectual Property: http://iplib.noip.gov.vn/WebUI/WSearch.php, or the website of the World Intellectual Property Organization WIPO.
• Through Viet An Law Firm, an investigation will be conducted to evaluate the patentability of the invention.

Step 3: Applying for patent/utility solution registration

After searching and evaluating the patentability of the invention, the applicant proceeds to apply for patent registration. Upon submitting the patent application, the applicant must pay the following fees:

• Application fee: 150,000 VND
• Formality examination fee: 180,000 VND/01 independent protection request point;
• Formality examination fee from the 7th page of the description onwards: 8,000 VND/01 page;
• Application publication fee: 120,000 VND;
• Publication fee from the 2nd image onwards: 60,000 VND/image;
• Fee for examination of priority rights claim (if any): 600,000 VND/01 priority application;
• Fee for research information to serve the examination process: 600,000 VND/01 independent protection claim point;
• Substantive examination fee: 720,000 VND/01 point of independent protection request;
• Substantive examination fee from the 7th page of the description onwards: 32,000 VND/01 page

Note: Applications for registration of patent/utility  solutions need to be subject to international patent classification (IPC). In case the applicant fails to classify or classifies incorrectly, the National Office of Intellectual Property will conduct the classification. Accordingly, the applicant needs to pay the classification fee according to regulations (100,000 VND/01 international patent classification).

Agency that receives and processes dossiers and collects patent registration fees in Vietnam: National Office of Intellectual Property.

Step 4: Formality examinaton of the registration application

The time limit for formality examination of an invention registration application is 01 month from the filing date.

Step 5: Publish the patent/ utility solution application

• The patent/ utility solution application is published in the 19th month from the priority date or filing date. If the application does not have a priority date or within 02 months from the date of acceptance of the valid application, whichever is later;
• The patent application under the Patent Cooperation Treaty (hereinafter referred to as “PCT application”) is published within 02 months from the date of acceptance of the valid application and has entered the national phase;
• Patent/ utility solution registration applications requiring early publication shall be published within 02 months from the date the National Office of Intellectual Property receives the request for early publication or from the date of acceptance of the valid application, whichever is later. To receive early publication, the applicant needs to submit a written request for early publication. In particular, the application owner needs to clearly state the reason for early publication. Requesting early publication does not require payment of fees or charges.

Step 6: Substantive examination

• Substantive examination: no more than 18 months from the date of publication of the application if the request for substantive examination is submitted before the date of publication of the application or from the date of receipt of the request for substantive examination if the request is submitted after application publication date.
• After completing the Substantive examination, the National Office of Intellectual Property will issue a Notice of intention to grant a patent protection title. Or notice of refusal to grant patent protection with clearly reasons.

Step 7: Pay the fee for granting a protection title

After receiving notice of intention to grant a protection title, the applicant shall proceed to pay the granting fee.

Step 8: Grant patent/ utility solution protection title

After the fee meets the certificate within 02-03 months from the date of payment of the fee for granting the protection title, the National Office of Intellectual Property will issue a patent protection title.

Step 9: Pay maintainance fee for the patent/ utility solution

• A patent is valid from the date of issue until the end of 20 years from the filing date/international filing date. Protection needs to be maintained annually.
• The Utility Solution is valid from the date of issue and continues for 10 years from the filing date/international filing date. Protection needs to be maintained annually.
• To maintain the validity of a protection title, within 06 months before the end of the validity period, the protection title holder must submit a request to maintain validity. The application to maintain validity can be submitted late but not more than 06 months from the end of the validity period and the protection title owner must pay an additional late maintenance fee.

Documents required to maintain patent validity include:

• Declaration requesting maintenance of validity (according to form 02-GH/DTVB in Appendix C of Circular 01);
• Power of attorney (in case the request is submitted through a representative);
• Copy of proof of payment of state fees according to regulations;
• Other documents (if necessary).

Patent/ utility solution registration procedures in Vietnam

• The time limit for applying for priority rights under the Paris Convention for patent/ utility solution applications is 12 months from the priority date.
• The time limit for a PCT application to be submitted to Vietnam is 31 months from the priority date.
• In necessary cases, the Vietnam National Office of Intellectual Property may request an additional Certificate of Transfer. Vietnamese translation of the document applying for priority rights.
• The time limit for submitting a request for substantive examination is 42 months (for patent applications) or 36 months (for utility solution patent applications) from the earliest priority date.
• The time limit for examining the formality of the application is 01 month from the date of application submission.
• The time limit for substantive examination is 31 months (for patent applications) and 09 months (for utility solution application).
• Publish the application (if the request for substantive examination is submitted before the date of publication of the application) or count from the date of submitting the request for substantive examination (if the request for substantive examination is submitted after the date of publication of the application);
• The validity period of a patent is 20 years and that of a utility solution is 10 years from the date of valid application filing. These patents take effect from the date of granting;
• You only have to pay the maintenance fee after the patent/ utility solution has been granted.

Priority rights and the first-to-file principle in patent registration

According to the Intellectual Property Law, rights to inventions are established on the basis of the decision to grant a protection title by the National Office of Intellectual Property. People who want to enjoy rights to inventions must directly apply for a protection title and submit it to the National Office of Intellectual Property or. The applicant authorizes an industrial property representative organization that has been granted a practicing certificate such as Viet An Law Firm to perform related work.

Patent/ utility solution protection period

• Patent: maximum 20 years
• Utility solution: up to 10 years.

To maintain the validity of the protection title, the owner must pay a fee to maintain the validity of the protection title every year.

How to register a patent/ utility solution in Vietnam

Patent registration can be done in the form of:

• Apply directly to the National Office of Intellectual Property;
• Register through the Intellectual Property Representative (required for foreign applications that want to be filed in Vietnam).

Consulting services on patent registration of Viet An Law

• Consulting, researching, evaluating usability, and registering for protection of patent/utility solution in Vietnam and abroad;
• Informally or officially research patent information at the National Office of Intellectual Property – Independent costs (research technical status related to patent/utility solution);
• Complete the application file for a patent protection title (translate documents or write an invention description and protection request);
• Prepare drawings, make declarations, represent for clients in filing applications for protection titles in Vietnam and abroad;
• Monitor the application testing process at the National Office of Intellectual Property, draft documents and documents for transactions with the National Office of Intellectual Property;
• Representing clients throughout the entire process of establishing rights and responding to official correspondence with the National Office of Intellectual Property on registration of patent/utility solution;
• Exchange and provide information to customers during the process of registering for patent/ utility solution protection.
• Consulting and implementing services to maintain the validity of patent protection titles granted in Vietnam and abroad;
• Consulting and evaluating the possibility of violating protected patent rights;
• Evaluate the validity of patent protection titles granted in Vietnam and abroad;
• Negotiate, draft, appraise, and register contracts to transfer use rights or ownership of patent in Vietnam and abroad.