Final Decision when applying for a Patent in Vietnam

Patents in Vietnam are protected in the form of a Patent for Invention or a Patent for Utility Solution. To obtain patent protection, it is necessary to carry out the patent registration procedure at the Vietnam National Office of Intellectual Property. The result of the patent registration procedure is that the National Office of Intellectual Property will issue a decision to grant/reject the patent application. What should be noted so that the patent application is granted without being rejected? Below, Viet An Law will advise clients on the way to handle with final decision when applying for a patent in Vietnam.

How long does it take to process a patent application?

According to Article 110 and Article 119 of the Law on Intellectual Property 2005, amended in 2009, 2019, and 2022, from the date of receipt by the National Office of Intellectual Property, the application for registration of invention/utility solution shall be considered in the following order:

Formality examination

• Patent applications are examined as to form to assess the validity of the application.
• Patent applications are examined as to form within one month from the date of filing.

Patent application publication

• A patent application shall be published within the nineteenth month from the priority date or the filing date if the application has no priority date, or within two (02) months from the date of acceptance of the application as valid, whichever is later;
• Patent applications under the Patent Cooperation Treaty (PCT applications) are published within 02 months from the date of acceptance of a valid application that has entered the national phase;
• A patent application with a request for early publication shall be published within 02 months from the date the National Office of Intellectual Property receives the request for early publication or from the date of acceptance of the valid application, whichever is later. To obtain early publication, the applicant must submit a written request for early publication, stating the reasons for the need for early publication. The request for early publication is not subject to payment of any state fees.

Substantial examination

Not more than 18 months from the date of publication of the application if the request for substantive examination is filed before the date of publication of the application or from the date of receipt of the request for substantive examination if the request is filed after the date of publication of the application.

In what cases is a patent application considered invalid?

Cases considered invalid

The validity of a patent application is considered during the formal examination stage. Accordingly, a patent application is considered invalid in the following cases:

• The application does not meet the formal requirements;
• The subject matter stated in the application is not protected;
• The applicant does not have the right to register, even in cases where the right to register belongs to many organizations or individuals but one or more of them do not agree to apply;
• The application is filed contrary to the provisions on the method of filing prescribed in Article 89 of the Law on Intellectual Property;
• The applicant does not pay the required state fees;
• The patent application is filed in violation of the provisions on security control for inventions as prescribed in Article 89a of the Law on Intellectual Property.

Handling of invalid patent applications

For invalid patent applications, the National Office of Intellectual Property shall carry out the following procedures:

• Notice of intended refusal to accept a valid application, stating the reasons and setting a time limit for the applicant to correct any deficiencies or object to the intended refusal;
• Notice of refusal to accept a valid application if the applicant fails to correct deficiencies, corrects deficiencies unsatisfactorily, or does not have valid objections to the proposed refusal as prescribed in Point a of this Clause;
• Issue a notice of acceptance of a valid application or carry out procedures for granting a protection title if the applicant satisfactorily corrects deficiencies or has a valid opinion opposing the intention to refuse to accept a valid application.

Cases of a patent application refused in Vietnam

Cases of refusal

An application for a patent shall be rejected if it falls under the cases of refusal to grant a protection title as prescribed in Clauses 1, 1a, and 2, Article 117 of the Law on Intellectual Property. Specifically:

• There is a basis to assert that the subject matter stated in the application does not fully satisfy the conditions for patent protection;
• There are grounds to assert that the applicant is not entitled to register the invention;
• The application meets the conditions for being granted a protection title but is not the application with the earliest priority date or filing date;
• The application is in a case where multiple applications meet the conditions for being granted a protection title and have the same priority date or earliest filing date without the agreement of all applicants;
• Amendments and supplements to an application expand the scope of the subject matter disclosed or stated in the application or change the nature of the subject matter requested for registration stated in the application.
• The claimed invention exceeds the scope of disclosure in the original description of the patent application;
• The invention is not sufficiently and disclosed in the description of the invention to enable a person with ordinary skill in the art to carry out the invention;
• For an invention directly created based on genetic resources or traditional knowledge about genetic resources, the patent application does not disclose or inaccurately discloses the origin of the genetic resources or traditional knowledge about genetic resources;
• The patent application is filed in violation of the provisions on security control for inventions as prescribed in Article 89a of the Law on Intellectual Property.

Handling refused applications

If a patent application is refused, the National Office of Intellectual Property shall carry out the following procedures:

• Notice of the results of the substantive examination, clearly stating the intention to refuse to grant a protection title, the reasons, and setting a deadline for the applicant to object to the intention to refuse;
• Suspend the application examination process in case the applicant submits a request to suspend the application examination and a request to terminate the validity. Based on the results of the settlement of the request for termination, the National Office of Intellectual Property shall continue the application examination process;
• The application examination process shall be suspended in case of receiving a copy of the notice of acceptance of the case from the competent Court regarding the lawsuit filed by a third party regarding the patent registration right. Based on the Court’s settlement results, the National Office of Intellectual Property shall continue the application examination process;
• Decision to refuse to grant a protection title if the applicant has no objection or has an unreasonable objection to the proposed refusal.

Can I object to a patent application being refused?

When announcing the results of the substantive examination, the National Office of Intellectual Property shall clearly state the intention to refuse to grant a protection title, and the reasons and set a deadline for the applicant to object to the intention to refuse.

Thus, the applicant has the right to object when the patent application is refused. The objection must be raised within the time limit specified by the NOIP Vietanm in the notice and must be a valid objection to the intended refusal.

In case of objections to the results of substantive examination, the corresponding patent application shall be re-examined on the objectionable issues.

In which cases is a decision made to grant a patent?

The National Office of Intellectual Property is the competent authority to issue a decision to grant/reject a patent application. If a patent application does not fall into the above cases of patent rejection or the applicant has a valid objection to the proposed rejection, the National Office of Intellectual Property will issue a decision to grant a protection title. Specifically:

• Notification of the results of substantive examination, clearly stating the intention to grant a protection title for the whole or part that meets the protection conditions and setting a deadline for the applicant to pay fees or to object to the results of substantive examination;
• Decision to grant a patent and record it in the National Register of Industrial Property if the applicant pays fees.

Notes to avoid being denied patent registration

• Submit complete patent registration documents and records as prescribed;
• Research information on other patents to evaluate their ability and conditions for protection;
• The patent description must provide full content, clearly disclose, and avoid cases where the invention is not patentable;
• Prepare full documents and papers proving patent registration rights;
• Note the regulations on security control for inventions. Accordingly, inventions in technical fields that impact national defense and security, created in Vietnam and registered by individuals who are Vietnamese citizens and permanently residing in Vietnam or by organizations established under Vietnamese law may only file patent applications abroad if they have already filed patent applications in Vietnam to carry out security control procedures.

Above is the advice of Viet An Law on the final decision when applying for a patent in Vietnam. A patent being refused a protection title will waste time, effort, and money. To avoid and limit the above risks, you can contact Viet An Law, hotline  (+84) 9 61 67 55 66 (WhatsApp, Viber, Zalo, Wechat) for advice and support on legal procedures for patent registration!