Patent registration procedures using PCT applications in Vietnam

(apply from 2023)

After Decree 65/2023/ND-CP, issues related to international patent registration using PCT applications have also become clearer. Including the issue of international patent registration procedures using PCT applications in Vietnam, applicable from 2023. To provide more information to clients on this issue, 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 intellectual property laws on industrial property, protection of industrial property rights, rights to plant varieties, and management state on intellectual property.

Procedures for international patent registration using PCT applications will apply from 2023

Based on the content specified in Article 19 of Decree 65/2023/ND-CP, the procedure for international patent registration by PCT application applicable from 2023 will be divided into:

• Procedures for international patent registration using PCT applications of Vietnamese origin;
• The procedure for registering an international patent using a PCT application designates Vietnam into the national phase.

Procedures for registering an international patent using a PCT application of Vietnamese origin

According to Clause 2, Article 19 of Decree 65/2023/ND-CP, for PCT applications originating from Vietnam, the applicant can submit his application in one of the following two ways:

• The applicant applies indirectly by applying through the state management agency on industrial property rights;
• Or the applicant submits the application directly to the International Bureau.

Procedures for registering an international invention using a PCT application originating and filed through the state management agency on industrial property rights

First of all, the applicant will proceed to file a PCT application of Vietnamese origin through the state management agency on industrial property rights (Vietnam National Office of Intellectual Property). This application must be made in English, and each application must be made in 1 copy as well as satisfy the requirements related to form and content as stipulated in the PCT Treaty.

Pursuant to the provisions of Clause 1, Article 20 of Decree 65/2023/ND-CP, after receiving a PCT application of Vietnamese origin from the applicant, the state management agency on industrial property rights will continue performing the procedures listed below:

• Collection of fees and charges: The state management agency for industrial property rights will collect fees for the preliminary examination of application forms from PCT applicants; Notify the applicant of the prescribed fees and transfer them to the International Bureau and the international search agency according to the provisions of the PCT Treaty;
• Determining the object of protection: Must determine whether the object that the applicant requests protection in the application is a state secret or not; The National Office of Intellectual Property will not be allowed to proceed with the next steps of the procedure for processing a PCT application originating in Vietnam if the object that is requested to be protected in that application is a state secret.
• Check and process applications according to the provisions mentioned in the PCT Treaty;
• Transfer application: Return the PCT application to the International Bureau and the international search agency if the applicant’s PCT application meets the following certain requirements:
• The PCT application fully meets the preliminary requirements related to formality;
• The applicant has paid all fees in accordance with national law;
• The above costs have been paid on time as prescribed;
• The subject matter for which protection is sought in the application is not a state secret;

Note, based on the provisions in Clause 2, Article 20 of Decree 65/2023/ND-CP, after the processing of a PCT application of Vietnamese origin and this application has been approved by the state management agency for industrial property rights, transferred to the International Bureau, all transactions related to the application must be carried out directly by the applicant with:

• International Bureau;
• Or the competent authority of the member states of the PCT Treaty that is designated in the application according to what the PCT Treaty stipulates.

Procedures for international patent registration using a PCT application originating from Vietnam and filed directly with the International Bureau

First, PCT applicants will submit their applications directly to the International Bureau. When submitting an application, the applicant will pay the fees in full and on time according to the provisions of the PCT Treaty.

In addition, the applicant’s PCT application must also be made in the language specified in the PCT Treaty and the form and content of the application as required by the PCT Treaty. After that, the International Bureau will be responsible for taking the next steps if the application is valid.

Procedures for registering international patents by PCT application at the national stage in case of selecting or designating Vietnam

Step 1 (Submission): In a PCT application at this national stage, the applicant can request that his or her priority rights be processed in accordance with the PCT Treaty as well as in accordance with the Regulations implementing the PCT Treaty. To enjoy this priority right, the applicant will have to do the things listed in Clause 1, Article 21 of Decree 65/2023/ND-CP as below:

• In his declaration, the applicant will have to reaffirm his claim to priority rights;
• Pay costs related to the examination of the claim for priority rights;
• The applicant will also have to submit Vietnamese translations of the documents submitted to the International Bureau based on the request of the state management agency on industrial property rights, accompanied by necessary documents under Rule 17.1(a) of the Regulations implementing the PCT Treaty.

This application can be submitted directly to the competent authorities of selected countries. In the case of selecting or designating Vietnam, the applicant can submit the application directly or send it by post to the headquarters of the Department of Intellectual Property in Hanoi, or at two representative offices of the Department of Intellectual Property in Ho Chi Minh City and Da Nang City.

Step 2 (Formality examination): At this step, the competent authority of the selected or designated country will check compliance with the regulations regarding the form of the application. For Vietnam, the competent authority will be the National Office of Intellectual Property. During the examination process of this application form, there are a number of cases that may occur as follows:

• In case the application is valid: In this case, the competent authority of the selected or designated country will make a decision to accept the valid application and continue with the next steps.
• In case the application is invalid: In this case, the competent authority of the selected or designated country will issue a notice of intention to refuse to accept the application and clearly state the reasons why the application was rejected. At the same time, the competent authority of the selected or designated country will give a certain time limit for the applicant to make amendments and supplements.
• In case the application is invalid and the applicant does not correct the errors, does not supplement the missing parts, and does not intend to raise any objection, the competent authority of the selected or designated country will issue a decision from refuse to accept the application.

Note, based on the content specified in Clause 2, Article 21 of Decree 65/2023/ND-CP when amending and supplementing documents in the PCT application that he has submitted, the applicant must make the amendments, supplement documents in accordance with the following regulations:

• Amendments and supplements to documents must be compatible with Articles 28 and 41 of the PCT Treaty, along with Rule 52.1(b) and Rule 78.1(b) of the Regulations on Implementation of the PCT Treaty, and also the provisions of Article 115 of the Vietnamese Intellectual Property Law as amended and supplemented from time to time.
• Authorization documents and documents transferring the right to file applications in the international phase (if any) must be submitted within 34 months from the priority date (in case the applicant has an application claiming priority rights) or from the date on which the applicant files the international application.
• Documents with amendments and supplements submitted by the applicant to the state management agency on industrial property rights must be made in Vietnamese.

Step 3 (Publication of application): In case the application is accepted as a valid application by the competent authority of the selected or designated country, the application will be publicly announced. In Vietnam, the application will be published in the Industrial Property Official Gazette.

Step 4 (Substantive examination): The substantive examination of this application will follow the procedures prescribed for patent applications filed according to the national format. The competent authority of the selected or designated country will conduct the examination of this content upon request.

The substantive examination means that the competent authority of the selected or designated country will evaluate the possibility of protection of the subject matter stated by the applicant in the application according to the protection conditions such as novelty, industrial applicability, etc. From there, these agencies will determine the respective protected scope of the invention.

Step 5 (Making a decision to grant or refuse to grant protection documents): At this stage, the competent authority of the selected or designated country will rely on what has been conducted through formality and substantial examination of the application, then proceed to issue one of the following decisions:

• Decision to refuse to grant a protection title: In case the object requested to be protected in the application does not properly and fully meet the protection requirements, the competent national agency that is selected or designed will make a decision to refuse to grant a protection title. In Vietnam, the National Office of Intellectual Property is the agency that can exercise this authority.
• Decision to grant a protection title: In this case, the competent agency of the selected or designated country will issue a protection title and record it in the Register. National registration of inventions and public announcement (in the case of Vietnam, it will be published in the Industrial Property Official Gazette) if:
• The invention stated in the application meets the requirements related to protection;
• The applicant has fully and timely paid the prescribed fees and charges.

Thus, it can be seen that the procedure for registering a patent with a PCT application is quite complicated and poses many requirements that the applicant needs to meet. Therefore, when submitting this PCT application, clients should seek reputable, experienced, and highly specialized experts such as the team of lawyers and consultants of Viet An Law Firm to receive the most suitable help.

If you have any problems related to international patent registration procedures using PCT applications in Vietnam, please contact Viet An Law for our best support!