Converting Patent into Utility Solution application in Vietnam

In the IP industry, converting patent into utility solution application is not only a complex process but also the key to innovation and growth for innovators. In the article below, Viet An Law will provide information related to the order and procedures related to the above conversion procedure according to the current regulations of the Vietnam Intellectual Property Law 2005 (as amended, supplemented in 2009, 2019, 2022) as guided by Decree 65/2023/ND-CP.

Features of an application converting patent registration into utility solution

Application conversion in patent registration can be understood as the process that the applicant initially performs to request a patent, then converts to a utility solution registration for some reason. The common reason is the protection condition for a utility solution is lower than a patent. The goal is to optimize the process of examining protection titles for industrial applications as soon as possible.

• The converted application will receive a new application number and take the original application’s filing date or its priority date (if applicable).
• The original application (after conversion) is considered to have been withdrawn when filing the request for conversion.

This process helps ensure that the patenting process is smoother and more efficient for all parties involved.

Time to convert patent application as  prescribed

The conversion of a patent application to a utility solution is specified in Point dd, Clause 1, Clause 2, Article 115 of the current Vietnam Intellectual Property Law.

“Article 115. Amendment, supplementation, division and conversion of applications for registration of industrial property

1.An applicant shall have the following rights before the competent State administrative body for industrial property rights notifies a refusal or decides to grant a protection title:

…

dd) To convert an application for registration of an invention involving a request for an invention patent into an application for registration of an invention involving a request for a utility solution patent, and vice versa.

2. The applicants for completion of the procedures stipulated in clause 1 of this article must pay state fees.”

Simultaneously, Article 17.3 of Decree 65/2023/ND-CP also stipulates:

“ 3. Converting a patent registration application according to Point dd Clause 1 of Article 115 of the Law on Intellectual Property shall be performed as follows:

a) Before the industrial property right authority decides to refuse or accept the application, issue or refuse to issue the protection title, the applicant may convert the request for issuance of the invention patent into the request for the utility solution patent or vice versa for the whole or a part of the application, providing that the applicant pays the application fees for the conversion application as regulated. In case of converting a part of the application, the applicant shall divide the application before requesting the conversion;…”

Therefore, before the Vietnam National Office of Intellectual Property issues a decision to refuse to accept an application, or decide to grant or refuse to grant a patent, the patent applicant can change the request for a patent becomes a request for a utility solution patent on the condition that the applicant must pay the application fee for the conversion application according to regulations.

The time limit to carry out the procedure for converting from a patent application to a utility solution is while the National Office of Intellectual Property is processing and evaLawing the application for a patent that the applicant filed. previously filed patent. Furthermore, an important condition to make the conversion is that the applicant must pay the fee according to the provisions of law.

After receiving a request to convert a valid patent application, the National Office of Intellectual Property will continue to process the conversion application according to regulations, without having to redo the steps taken before the request. conversion demand. This is to ensure efficiency and save time in the document processing process.

Dossier for converting patent into utility solution application in Vietnam

Applicants requesting conversion of utility solution registration need to prepare a set of documents including the following documents:

• 02 patent registration application declaration (Note: For the original application declaration, mark (x) in the “Request for grant of patent” box, then for the conversion application declaration, you need to mark (x) respectively in the box “Request for patent for utility solution or vice versa);
• 02 patent descriptions;
• Document requesting conversion of patent application;
• Power of attorney (if the application is submitted through an industrial property representation service organization such as Viet An Law);
• Proof of payment of state

Order and procedures for converting applications

The procedure for converting a patent application to the latest utility solution will go through the following specific steps:

Step 1: Prepare and submit dossier

The applicant needs to fully prepare the documents mentioned in Section 3 and submit them to the National Office of Intellectual Property in one of the following 3 forms:

Submit directly at the application receiving points:

Applicants can submit application conversion documents directly or via postal service to one of the application receiving points of the National Office of Intellectual Property, specifically:

• Head office of the Department of Intellectual Property, address: 386 Nguyen Trai, Thanh Xuan district, Hanoi city.
• Representative office of the National Office of Intellectual Property in Ho Chi Minh City, address: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City.
• Representative office of the Department of Intellectual Property in Da Nang City, address: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang City.

In case of submitting application conversion documents by post, the applicant needs to transfer money through the post office service, then photocopy the Money Transfer Receipt and send it along with the application file to one of the application receiving points mentioned above. of the National Office of Intellectual Property to prove the amount paid.

(Note: When transferring state fees to one of the above application receiving points of the National Office of Intellectual Property, the applicant needs to send the documents via the corresponding post office to that application receiving point).

Apply through the Industrial Property Representative of the National Office of Intellectual Property:

An industrial property representative organization (IP Agent such as Viet An Law) is a professional intellectual property service organization, licensed by the National Office of Intellectual Property and recorded in the management system of the National Office. Accordingly, you only need to sign the Power of Attorney, all documents and transactions with the Department will be proactively carried out by this Agent.

Step 2: Receive and process conversion applications according to legal regulations

After receiving a valid application conversion request, the National Office of Intellectual Property will continue to process the conversion application according to corresponding regulations (do not repeat the procedures conducted before the converting request).

After conducting a substantive examination upon the request, the National Office of Intellectual Property will decide to grant or refuse to grant a Utility Solution Patent based on the provisions of the Intellectual Property Law.

State fee for the application conversion procedures

The application fee to convert a patent into a utility solution application is currently 150,000 VND. In addition, in case the utility solution application has decided to accept the valid application, the applicant must pay a publication fee of 120,000 VND.

IP consulting service of Intellectual Property Representative – Viet An Law

• Support for searching and consulting on the possibility of patent registration, trademark registration in Vietnam;
• Ensure close consultation during the process of completing documents and implementing patent protection registration procedures;
• Representing to carry out procedures for objections, complaints, and invalidation of patent protection rights;
• Consulting and supporting procedures for converting patent applications into utility solutions;
• Consulting and representing the extension of patent validity;
• Record any changes related to patent protection;
• Consulting and support in registering and transferring intellectual property rights for inventions.

Clients who need to register patents, and utility solutions and advise on procedures related to industrial property protection, and converting patent into utility solution application in Vietnam, please contact Viet An Law – IP Firm for the most accurate support.