Register a patent in Vietnam using a PCT application

Decree 65/2023/ND-CP is a decree with detailed content on issues related to intellectual property and industrial property. Among them, one of the new and outstanding points of this Decree is about PCT applications, as well as the handling of these applications. To answer inquiries from clients about how to register a patent in Vietnam using a PCT application, Viet An Law Firm will publish the article below.

Legal basis

• The Patent Cooperation Treaty (PCT);
• Law on Intellectual Property 2005, as amended and supplemented 2009, 2019, 2022;
• Decree 65/2023/ND-CP detailing a number of articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights and state management of intellectual property ;
• Circular 01/2007/TT-BKHCN amending and supplementing from time to time.

Register a patent in Vietnam using a PCT application

How is a PCT application understood?

Pursuant to the provisions of Clause 8, Article 3 of Decree 65/2023/ND-CP detailing a number of articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights and In terms of state management of intellectual property, a PCT application is understood as a patent application filed under the PCT Treaty.

The PCT Treaty is a large treaty with the participation of many countries around the world. The function of the PCT system allows individuals and businesses from member countries of the Treaty to specify the application for international institutional registration in all member countries of the PCT Treaty with a single declaration.

The biggest advantage when using a PCT application to register a patent is that citizens of member countries can receive protection from many countries at the same time, without having to spend a lot of time filing to apply directly in each individual country.

For that reason, Vietnam also soon joined the PCT Treaty. This not only makes it easier for individuals and organizations in Vietnam to register international patents but also increases friendship between member countries of the PCT Treaty.

What types of applications do PCT applications include?

Based on the provisions of Clause 1, Article 19 of Decree 65/2023/ND-CP on PCT applications, PCT applications will include the following types of PCT applications:

• A PCT application originating in Vietnam is a type of PCT application filed from Vietnam. This application will require patent protection in any member country of the PCT Treaty, including Vietnam. This issue is regulated in Clause 11, Article 3 of Decree 65/2023/ND-CP;
• The PCT application has a Vietnam designation, meaning the application has entered the national phase as prescribed in Clause 10, Article 3 of Decree 65/2023/ND-CP. Accordingly, a PCT application entering the national phase is a PCT application originating from another member country of the PCT Treaty, designating or selecting Vietnam as the destination country for patent registration, and is filed with the State management of industrial property rights.

PCT applications are filed in any member country of the PCT Treaty, including Vietnam.

The basic difference between a PCT application with Vietnamese origin and a PCT application with a Vietnam designation is in the requesting country and the designated or selected country. Accordingly, this difference will be as follows:

• For PCT applications originating in Vietnam, the country requesting international patent protection will be Vietnam. The designated or selected country will be other member countries of the PCT Treaty.
• On the contrary, for a PCT application entering the national phase, the country requesting international patent protection will be PCT member countries other than Vietnam. The country that is designated or selected to protect the invention will be Vietnam.

Requirements set forth for PCT applications

First, when filing a patent application using a PCT application that designates or selects Vietnam, the applicants need to use the patent registration declaration according to the form Form No. 01 specified in Appendix 1 of Decree 65/2023/ND-CP.

This also means that the applicant for patent registration using a PCT application will not be able to arbitrarily use a different type of application form than the one prescribed above, or cannot create a new application form for registering international patents under the PCT Treaty.

Not only that, in Clause 2, Article 19 of Decree 65/2023/ND-CP, this regulation also sets out certain requirements for two types of PCT applications originating in Vietnam:

First, PCT applications originating from Vietnam, when submitted directly to the International Bureau, must meet the following requirements:

• The application must be presented in the language prescribed under the PCT Treaty;
• The application must be in form and content in accordance with what is required under the PCT Treaty.

Second, when submitting a PCT application originating from Vietnam through a state management agency on industrial property rights, it must comply with the following requirements:

• The application must be presented in English;
• Each application must be made in 01 copy;
• The application must be completed in accordance with the format and content criteria set forth in the PCT Treaty;
• The applicant must pay a fee for the preliminary examination of the form, along with other fees and charges in accordance with the provisions of the regulations implementing the PCT Treaty and according to the provisions of the law on fees and charges promulgated by the designated member states as specified in the PCT application.

International patent application dossier originating from Vietnam

Based on the content specified in Clause 2, Article 19 of Decree 65/2023/ND-CP on PCT applications, accordingly, for PCT applications of Vietnamese origin, the applicant needs to prepare documents when submitting the application:

• International application originating from Vietnam. The language of this type of application is specified as follows:
• If the PCT applicant has Vietnamese origin and applies directly to the International Bureau, the language of the application must be in the language specified in the PCT Treaty.
• If the PCT applicant has Vietnamese origin and files the application through the state management agency on industrial property rights, the language of the application must be in English.
• Copy of fee payment documents. Whether submitted through the postal service or directly at the competent authority (Vietnam National Office of Intellectual Property), the applicant must prepare a copy of the fee payment documents to prove that he has paid fully and on time the prescribed fees.

International patent application file with Vietnam designation

For international patent applications using PCT applications that designate or select Vietnam, based on the provisions of Clause 3, Article 19 of Decree 65/2023/ND-CP, to be able to enter the national phase, the applicant must submit to the state management agency on industrial property rights a dossier including the following documents:

• Patent registration declaration. The form of the declaration is specified in Form No. 01 of Appendix I of Decree 65/2023/ND-CP;
• Copy of the international application (in case the applicant makes a request at the national stage before the date of international publication);
• Vietnamese translation of the description and summary in the international application (the published version or the original when initially filed if the application has not yet been published or the amendment and explanation of the amendment, if the application is international with modifications under Article 19 and/or Article 34.2(b) of the PCT Treaty);
• Copies of documents for payment of fees and charges (in cases where these fees and charges are paid via postal service or directly into the account of the state management agency on industrial property rights);
• Power of Attorney (in case the applicant requests to apply through an intellectual property representative such as Viet An Law).

Differences in patent registration documents are specified in Decree 65/2023/ND-CP compared to Circular 01/2007/TT-BKHCN

Regarding the application form for PCT applications that specify or select Vietnam

In Circular 01/2007/TT-BKHCN and its amending and supplementing documents, the application form used to register international inventions is form 01-SC used to register patents, which is specified in Appendix A of this Circulars. Currently, this form has been replaced by Form No. 01 located in Appendix I of Decree 65/2023/ND-CP to synchronize with the changes in industrial property protection registration declarations issued with amended Intellectual Property Law 2022.

Regarding the patent description for PCT applications originating in Vietnam

According to the provisions of Circular 01/2007/TT-BKHCN, amended and supplemented each time, in the international patent registration dossier, the applicant will have to submit a separate invention description.

However, this regulation is no longer found in Decree 65/2023/ND-CP. Specifically, in a patent registration application using a PCT application originating in Vietnam, the applicant only needs to submit the international application and a copy of the fee payment document.

Thus, it can be concluded that the PCT application sets out many requirements that the applicant needs to meet before his/her international patent application can be approved. Therefore, when registering a patent in Vietnam using a PCT application, clients should seek the support of reputable and experienced experts such as the team of lawyers and consultants of Viet An Law Firm.

If you need to register a patent in Vietnam using a PCT application, please contact Viet An Law for our best support!