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.
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.
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.
According to the provisions of Article 90 of the Law on Intellectual Property of Vietnam, the first-to-file principle applies to:
Thus, an invention is one of the three technology owners subject to the first-to-file principle.
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:
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 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:
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:
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.
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)
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
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.
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!
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