Submit PCT patent application in Vietnam

The protection of inventions between countries with different legal systems will be different. Therefore, for your invention to be protected under the PCT international system effectively and economically, you need to understand this system. Viet An Law Firm – Intellectual Property Representative will present basic information on how to submit PCT patent application in Vietnam through the article below.

What is PCT?

According to Clause 4, Article 3 of Decree 65/2023/ND-CP: “PCT Treaty” is a Patent Cooperation Treaty in 1970, amended in 1984 and 2001.

This treaty was born based on a proposal to study solutions to reduce the efforts of both the filer and the national patent offices of the Executive Committee of the International Association for the Protection of Industrial Property. The treaty was adopted at a diplomatic conference held in Washington D.C.

The treaty came into effect on January 24, 1978, and officially came into operation on June 1, 1978, with the original 18 member countries. Vietnam has been a member of the Treaty since March 10, 1993. As of 2024, 157 countries are participating in this Treaty.

The basic objective of the PCT system is to improve the previous methods of filing applications in many countries claiming patent protection, by simplifying towards greater efficiency and cost-effectiveness, for the benefit of users of the patent system and of the Offices responsible for administering the system.

Types of PCT applications

According to Clauses 9 and 11, Article 3 of Decree No. 65/2023/ND-CP, the law currently stipulates that there are two types of PCT applications:

PCT application designating or electing Vietnam:

• Submitted at any member of PCT
• Vietnam is the designated or elected country

PCT application from Vietnam:

• Submitted by Vietnam
• Requests protection in any PCT member state (including Vietnam)

How to submit PCT patent application in Vietnam

According to Article 19 of Decree No. 65/2023/ND-CP, an applicant can file an application for international registration of an invention under the PCT Treaty in 2 ways:

• Direct submission to the International Bureau and International Search Authority
• Submitting documents through the National Office of Intellectual Property of Viet Nam

Note: Submit the dossier through the National Office of Intellectual Property for the National Office of Intellectual Property to preliminarily check the form and send the application dossier to the International Bureau and the International Search Agency within 12 months and the security condition is 06 months from the date of the first application.

Components of a patent registration dossier under the PCT

An international patent application originating from Vietnam

According to Clause 2, Article 19 of Decree 65/2023/ND-CP on PCT applications, for PCT applications originating in Vietnam, the applicant needs to prepare a dossier including the following documents:

• 03 PCT declarations of Vietnamese origin made in English. The declaration form is available on the website: wipo.org
• The descriptions include drawings, protection claims, and related documents (if any).
• Copies of state fee payment vouchers (fees for examination of dossiers and fees payable to the receiving agencies related to international applications such as transmission fees, international search fees, and international application filing fees). Whether submitted through postal services or directly at the competent agency (National Office of Intellectual Property of Vietnam), the applicant must prepare a copy of the fee and fee payment voucher to prove that he has paid the fees in full and on time as prescribed.
• Power of attorney for the Intellectual Property Representative – Viet An Law to carry out the procedure.

An international patent application with the designation or selection of Vietnam

According to Clause 3, Article 19 of Decree 65/2023/ND-CP, to enter the national phase, the applicant must submit to the state management agency in charge of industrial property rights within 31 months from the date of priority (if the application has a request for priority rights) or from the date of filing the international application.

• Patent registration declaration. The form of the declaration is specified in Form No. 01 of Appendix I of Decree 65/2023/ND-CP;
• A copy of the international application (in case the applicant requests to enter the national phase before the date of international publication);
• A Vietnamese translation of the description and summary of the international application (the declaration is either the original at the time of the original filing if the application has not been published or the amendment and explanation of the amendment if the international application contains amendments under Article 19 and/or Article 34.2(b) of the PCT Treaty);
• Copies of receipts of charge and fee payment (in cases where the payment of these state fees is paid through postal services or directly into the accounts of state management agencies in charge of industrial property rights);
• Power of Attorney (if the applicant requests to apply to an intellectual property representative such as Viet An Law).

PCT Patent Application Filing Process

• Enterprises will file an international patent application at the beginning or file an international application within 12 months from the date of filing the first national/regional patent application.
• The application is published after 18 months from the priority date unless the applicant requests it earlier. This means that patent information is publicly disclosed, that is, applications are kept confidential for 18 months from the priority date.
• Within 30 months from the date of preference, the applicant must specify the PCT member state in which he or she wishes to apply for protection; The application will enter the “national phase” in the respective countries. An enterprise needs to carefully identify its business activities and register a patent there, because the commercial success of the enterprise may depend on whether the invention of the enterprise is protected in those markets or not.

Advantages of the PCT system

SMEs seeking to protect their technology in the international market can benefit from WIPO’s Patent Cooperation Treaty (PCT) to:

Favorable for Applicants

Patent exclusivity is a territorial right, which means that startups and SMEs that are targeting a wide range of overseas markets need to acquire patent exclusivity in those markets – patent exclusivity does not create protection beyond the jurisdiction they are granted. Using the PCT will streamline the patent-exclusive search process for an invention in 153 countries in 2021.

Delaying large expenses

The PCT allows applicants to defer the major costs associated with international filing for up to 30 months. That’s good news for startups and small and medium-sized businesses that are short on money and looking for investment or business partners or market trials.

In addition, the cost of further translation must be paid, but not later than 8 or 18 months from a procedure that does not use the PCT, and only if, after having evaluated the international search report and, if convenient, also the international preliminary test report, are still interested in the countries concerned. Otherwise, the applicant will save all the costs later.

Technical information search

Because many important patents are the subject of PCT applications, developing countries and people who want to register their inventions will have easier access to modern technical information through the international publication of these applications. That provides the applicant with valuable insights into the possibility of patenting their technology (they need to prove it is new, useful, and non-obvious), the freedom to operate in the target markets, along a lot of other useful business information.

Creating favorable conditions for the national economy and industry

Technological progress is an essential factor for national economic development. A PCT system that greatly facilitates the receipt of patent protection at the international level will promote technological progress, causing more and more applicants to seek patent protection through the PCT, paving the way for technology transfer and licensing contracts. From there, foreign investment will be increasingly encouraged, labor qualifications, and technology skills.

Patent application filing service under PCT of Viet An Law Firm

• Perform the search and notify clients in writing of the results of the patent search under the PCT;
• Drafting dossiers and directly filing and monitoring the status of dossiers for filing patent registration applications under the PCT on behalf of the patent owner;
• Notifying, advising, and handling deficiencies/refusals of competent State agencies (if any) in the process of monitoring patent applications under the PCT;
• Assist in monitoring and representing the settlement of objections and feedback to the intellectual property representative in carrying out PCT procedures.
• Receive official dispatches, and protection titles and hand over to clients (if any)

The above is the advice of Viet An Law on how to file an application for patent registration under the PCT. Clients who want to register an invention and advise on filing an application for patent registration under the PCT, please contact Viet An Law Firm for the best advice and support.