Confidential patent registration procedures under Decree 65/2023/ND-CP

Confidential invention is a new concept that was first recognized in the Intellectual Property Law amended in 2022 and is a protected object of industrial property rights. Because of the special nature of confidential inventions, regulations on confidential invention registration procedures are also stricter and are recorded in Articles 48 to 52 of Decree 65/2023/ND-CP. In the article below, Viet An Law will inform customers about confidential patent registration procedures under Decree 65/2023/ND-CP.

Legal basis

• Law on Intellectual Property, as amended and supplemented in 2022.
• Decree 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and management state on intellectual property.

What is a confidential patent?

An invention is a technical solution in the form of a product or process that aims to solve a defined problem by applying natural laws. Accordingly, based on Clause 12a, Article 4 of the newly supplemented Intellectual Property Law in 2022, a confidential patent is “a patent that is determined by a competent state agency to be a state secret according to the law on the protection of state secrets”.

What is a confidential patent application?

A confidential patent application is an invention registration application filed at the National Office of Intellectual Property, including additional documents and containers containing additional documents that have been approved by the Ministry of Public Security, the Ministry of National Defense, or other agencies. Other competent state authorities determine it as a state secret according to the provisions of the law on the protection of state secrets.

Confidential patent registration procedures under Decree 65/2023/ND-CP

General regulations on confidential patent applications

Pursuant to the provisions of Article 100 of the Intellectual Property Law, as amended and supplemented in 2022, and Article 48 of Decree 65/2023/ND-CP regulations on confidential patent registration applications as follows:

• Documents specified in the confidential patent registration application are stamped confidential according to the provisions of the law on the protection of state secrets (except for fee and fee payment documents);
• Document certifying that the object registered in the application is a state secret according to the provisions of the law on the protection of state secrets.

Note:

• Confidential patent registration applications and transaction documents between the applicant and the state management agency on industrial property rights must be made in Vietnamese.
• Except for some of the following documents, which can be made in other languages but must be translated into Vietnamese when required by the state management agency on industrial property rights: power of attorney; documents proving the right to registration; documents proving priority rights; Other documents to support the application.

Confidential patent registration application form

Confidential patent applications must be filed in paper form (cannot be filed online).

Components of confidential patent registration documents

• Registration declaration;
• Invention Description;
• Documents from the Ministry of Public Security, Ministry of National Defense, or other competent state agencies identifying the registered object as a state secret;
• Proof of payment of fees;

In addition, some documents are needed if you fall into the following cases:

• If the application is submitted through a representative, a power of attorney is required.
• Document proving the right to registration, if the applicant enjoys that right of another person;
• Documents proving priority rights, if priority is requested. This includes a copy of the first application or applications certified by the agency that received the first application and a certificate of transfer of priority rights if that right is inherited from another person.
• Documents explaining the origin of genetic resources or traditional knowledge about genetic resources in the patent application, for inventions directly created based on genetic resources or traditional knowledge about genetic resources;

General requirements on the form of documents in confidential patent registration dossiers

• All documents of the application must be presented vertically (only drawings, diagrams, and tables can be presented horizontally) on one side of A4 size paper (210mm x 297mm), especially for documents that are Geographic area maps can be presented on A3 size paper (420mm x 297mm), with margins on four sides, each margin 20mm wide, in Times New Roman font, no smaller than size 13, except for supporting documents whose source is not intended to be included in the application.
• For each type of document, except for sets of photos and industrial design drawings, if it includes multiple pages, each page must have its page number written in Arabic numerals.
• Documents must be typed or printed with indelible ink, clearly, cleanly, without erasure or correction; If the document has 2 pages or more, it needs to be stamped by the applicant/ issuing agency (if any); In case of detecting insignificant spelling errors in documents submitted to the state management agency on industrial property rights, the applicant can correct those errors, but at the place of correction must be signed (and stamped, if any) by the applicant.
• The terms used in the application must be consistent and common (do not use local languages, rare words, or create words). Symbols, units of measurement, electronic fonts, and spelling rules used in the application must comply with Vietnamese standards.
• For documents that need to be prepared according to templates, it is mandatory to use those templates.

Process for handling confidential patent applications according to Decree 65/2023/ND-CP

Confidential invention registration applications and confidential invention patents/confidential utility solution patents are also handled similarly to patent applications, procedures for granting, re-issuing, maintaining, modifying, and terminating, invalidating invention patents/utility solution patents, transfer rights, handling third party opinions according to the provisions of the Intellectual Property Law and documents guiding implementation on formality and substantial examination.

The granting of confidential invention patents/confidential utility solution patents is carried out outside the normal application management system and is assigned numbers as follows: Confidential invention patent number/utility solution patent number (5 digits).

Formality examination

• Check the list of documents included in the application and the number of copies of each type of document. A confidential patent application is rejected if one of the above documents is missing.
• Check fees and charges.
• Check the number of copies of the official dispatch, supporting documents for the application, and attached documents (if any).

Substantial examination

Confidential patent registration applications are subject to substantive examination within no more than 18 months from the date the application is accepted as valid if the request for substantive examination is submitted before the date the application is accepted as valid or from the date of receipt request for substantive examination if such request is filed after the date the application is duly accepted.

Disclosure of information related to confidential patent applications

• Confidential patent applications and confidential invention patents/confidential utility solution patents are not published in the Industrial Property Official Gazette.
• In cases where confidential patent applications and confidential patents/utility solution patents are declassified, the information disclosure of these applications and patents is carried out as for patent applications.

Above is the content of confidential patent registration procedures under Decree 65/2023/ND-CP that Viet An Law informs you. Industrial property representative – Viet An Law Firm is ready to provide services related to industrial property registration to support you, please contact us to receive the best advice.