First-to-file principle of patent registration in Vietnam

In the process of applying for the protection of inventions, we often encounter the phrase “principle of first-to-file” or “principle of priority”. So what are the concepts and regulations of these principles and how are they applied? Viet An Law will answer questions about the first-to-file principle of patent registration in Vietnam in the article below.

Legal basis

• Paris Convention for the Protection of Industrial Property;
• Intellectual Property Law 2005 amended and supplemented 2009, 2019, 2022.

What is an invention?

An invention is a technical solution in the form of a product or process intended to solve a specified problem by the application of natural laws.

First-to-file principle of patent registration in Vietnam

The reason for the formation of the first-to-file principle

In industrial production activities as well as in business practices, it is becoming increasingly common for many entities to independently invest finance, intelligence, and effort to create the same or similar innovations. These entities all want to receive protection for their inventions, but IP law only protects a single entity. However, the law does not require inventors to register their creations, in reality, it is often difficult to determine who was the first inventor. Therefore, most countries in the world have agreed to choose the solution of giving priority to applicants applying for protection of industrial property objects to competent state agencies and this is called the first-to-file principle.

What industrial property objects does the first-to-file principle apply to?

According to the provisions of Article 90 of the Law on Intellectual Property of Vietnam, the first-to-file principle applies to:

• Invention;
• Industrial Designs;

Thus, an invention is one of the three technology owners subject to the first-to-file principle.

How will the principle of first-to-file in patent registration be applied?

In case there are multiple registration applications to protect identical or equivalent inventions, the protection title will only be granted to the registration application that meets all of the following conditions:

• Must be a valid application;
• Have the earliest priority date or filing date among the applications that meet the conditions for being granted a protection title.

In case there is more than one application from different people registering the same invention, the protection title can only be granted to the valid application with the earliest priority date or filing date among the applications that meet the conditions. to obtain a protection title.

In case there are multiple applications that meet the same conditions for being granted a protection title and have the same priority date or earliest filing date:

• The applicants will have to agree and select an applicant to grant protection title.
• In case an agreement cannot be reached, all applications will be refused a patent protection certificate.

What is the priority date for patent registration?

The filing date in patent registration plays an extremely important role in the ability to be granted a protection title according to the first-to-file principle. In fact, an applicant may want to register for patent protection in many different countries, but due to complicated procedures, the filing date in a foreign country may take place more slowly.

That is why Article 4 of the Paris Convention for the Protection of Industrial Property stipulates the “principle of priority” to give “priority” to patent applicants: “Any person who has filed an application validly applying for a patent or for registration of a utility model, industrial design or trademark in one of the member countries of the Union or his legal heir, in the course of filing the application in Other countries will enjoy priority rights for a fixed period of time.”

According to the provisions of Article 4 of the Paris Convention, the date of first-to-file in one of the Contracting States of the Paris Convention shall be recognized as the “priority date” when applying for a patent in the other Contracting States. On the basis of the Paris Convention, the IP law of Vietnam stipulates that the conditions for enjoying the right of priority are:

• The applicant is a Vietnamese citizen or a citizen of a member country of the Paris Convention or resides, has a production or business establishment in Vietnam or in that Contracting country;
• The first application has been filed in Vietnam or in a member country of the Paris Convention and that application contains the part corresponding to the claim for priority of the patent application;
• Applications must be submitted within the specified time limit:
  • 12 months from the date of filing the first application for the invention;
  • 6 months from the date of filing the first application for a trademark or industrial design;
• In the application, the applicant clearly states the request for priority rights and submits a copy of the first application in case of filing abroad, including confirmation of the agency receiving the first application;
• Pay the full fee to request priority rights (according to the current fee schedule of 600,000 VND for each request).

What is Vietnam’s patent registration procedure?

In Vietnam, the state management agency for industrial property rights under Article 11 of the Intellectual Property Law is the Ministry of Science and Technology, of which the NOIP is an agency under the Ministry of Science and Technology, responsible for responsible for assisting the Minister of Science and Technology in performing the function of state management of industrial property.

The patent registration will be filed at the NOIP, according to the following order and procedures:

Step 1: Submit a patent application

Applications can be submitted in person or sent by post to NOIP’s headquarters in Hanoi or 2 representative offices of the Department in Ho Chi Minh City and Da Nang.

An invention registration application must include mandatory documents such as a registration application, documents, specimens, information demonstrating the invention (including invention description and invention summary), copy of the certificate. from paying fees, charges,…

In addition, the applicant may have to submit other relevant documents such as power of attorney (if the application is submitted through a representative) and documents proving the basis for priority rights if the application requests priority rights.

Step 2: Formality examination of the application

Appraisal of the application’s form is to check compliance with the regulations on the form of the application, thereby making a conclusion about whether the application is considered valid or not (making a decision to accept a valid application/refusing to accept)

• In case the application is valid, the NOIP shall issue a decision to accept the valid application;
• In case the application is invalid, the NOIP shall issue a notice of its intention to refuse to accept the application, clearly stating the reasons and omissions that cause the application to be rejected, and setting a time limit of 2 months for the applicant. have comments or correct errors. If the applicant fails to correct the omission/ corrects the omission unsatisfactory/ no objection/ unreasonable objection, the NOIP will issue a decision to refuse to accept the application.

Step 3: Publication of  the application

After there is a decision to accept the valid application, the application will be published in the Industrial Property Official Gazette.

From the date the patent application is published in the Industrial Property Official Gazette and before the date of issuance of the decision to grant a protection title, any third party has the right to give opinions to the state management agency about the rights. industrial property on granting or not granting a protection title for that application. Opinions must be made in writing, accompanied by documents or cited sources of information to support

Step 4: Substantial examination of the application

The application’s substantial examination is conducted when there is a request for content appraisal. The substantive examination of the application will help assess the patentability of the invention in the application under the conditions of protection according to the criteria (including novelty, inventive step, and industrial applicability), which determines the corresponding scope of protection.

Step 5: Make a decision to grant/refuse to grant a certificate of protection for the invention

• If the object stated in the application does not meet the requirements for protection, the NOIP shall issue a decision to refuse to grant a protection title;
• If the object stated in the application satisfies the requirements for protection, and the applicant fully and timely pays fees and charges, the NOIP shall issue a decision to grant a protection title, record it, and the National Register. patents and published in the Industrial Property Official Gazette.

Above are some answers to Viet An Law on the principle of first-to-file principle of patent registration in Vietnam, if you have a need to register for patent protection, please contact us for good support. best!