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New points of the Vietnam Intellectual Property Law 2022 related to patent

On June 16, 2022, the National Assembly voted to pass the Law amending and supplementing a number of articles of the Intellectual Property Law. Vietnam’s Intellectual Property Law 2022 takes effect from January 1, 2023, except for regulations on audio trademarks effective from January 14, 2022 and regulations on protection of test data. Agrochemical testing will take effect from January 14, 2024, the 2022 Intellectual Property Law with sweeping amendments is considered a major overhaul to Vietnam’s current patent system. Let’s take a look at the new points of the Vietnam Intellectual Property Law 2022 related to patent with Viet An Law.

Legal basis

  • The Law on Intellectual Property 2005 amended and supplemented in 2009, 2019 and 2022.

When thinking of secret inventions

The Law on Intellectual Property Amended and Supplemented in 2022 for the first time establishes separate regulations to regulate confidential inventions. Accordingly, Clause 12a, Article 4 of the Intellectual Property Law 2022 explains: “Confidential invention is an invention that is identified by a competent agency or organization as a state secret according to the provisions of the law on secret protection. government”.

The Law on Intellectual Property Amended and Supplemented in 2022 also adds a regulation assigning the government to detail the handling of confidential invention registration applications in Clause 3, Article 108, providing for the receipt of public property registration applications. Industry, filing date: “Application for registration of a confidential invention is made according to the Government’s regulations”.

The Law on Intellectual Property Amended and Supplemented in 2022 explains the concept of “secret invention” and stipulates related procedures to create the basis for the development and enforcement of regulations on confidential inventions. and security control over confidential inventions in particular and inventions in technical fields that affect national defense and security in general in Article 89a . However, at present, the government’s detailed regulations for secret inventions are still in the construction phase, not yet completed.

Conditions of protection for inventions

previous Intellectual Property Law , inventions with mentioned in a patent application with a filing date or priority date later than that of a previous patent application is not considered to have lost its novelty if it has been disclosed in another person’s patent application with a filing date. or priority date earlier but published on or after the filing date or priority date of that patent application.

This provision causes problems when it conflicts with the rights of other patent application owners to refer to the same invention . Specifically, the scope of technical status to assess the novelty of an invention under the old regulations does not include the previous application, but has not been published at the time of filing the first application of the later application , so it is not eligible. to be classified as a case of loss of novelty when “ publicly disclosed…before the filing date…”.

Therefore, to engrave to overcome the above limitation, the amended and supplemented Intellectual Property Law of 2022 has amended the provisions on novelty of inventions in Clause 1, Article 60, specifically adding a number of cases where an invention is considered to be lost. new is: “Disclosed in another patent application with an earlier filing date or priority date but published on or after the filing date or priority date of that patent application” besides the case of loss of novelty due to b is publicly disclosed by use, written description or any other form at home or abroad prior to the filing date of the patent application or prior to the priority date in the case of a patent application have the right of priority.

Because it only applies to applications of different owners, in the case of patent applications by the same applicant, the patent application has an earlier filing date or priority date but is published. publication on or after the filing date or priority date of a patent application with a later filing or priority date will not lose the novelty of a patent application with a later filing or priority date.

The new law in 2022 also amends Article 100 (General requirements for industrial property registration applications) to require the provision of documents explaining the origin of genetic resources or traditional knowledge about genetic resources in the application. invention, if the invention relates to genetic resources or traditional knowledge of genetic resources.

Control for inventions before filing overseas applications

The Intellectual Property Law 2022 has added provisions on security control for inventions before filing an application for registration abroad in Article 89a after Article 89.

According to Article 89a, which regulates security control for inventions before filing applications for registration abroad: “Inventions in technical fields that have an impact on national defense and security, are created in Vietnam and under the registration authority of an individual who is a Vietnamese citizen and permanently resides in Vietnam or of an organization established under Vietnamese law may only file an invention registration application abroad if an invention registration application has been filed. in Vietnam to carry out security control procedures” but what is “invention in technical fields that have an impact on national defense and security” needs to wait for more specific regulations in the near future.

An invention registration application is considered invalid in form

The Law on Intellectual Property supplements the case that an invention registration application is considered invalid in case it is filed in contravention of regulations on security control for inventions. Specific provisions at Point 2, Clause 2, Article 109: “Invention registration applications are filed contrary to regulations on security control for inventions specified in Article 89a of this Law”.

Patent registration rights

The new and greatest addition to an invention is the deletion of the provisions of Clause 2, Article 86 of the current Intellectual Property Law and the addition of a provision in Article 86a that provides for “the right to register inventions, industrial designs and layout designs are the results of scientific and technological tasks funded by the state budget”.

Accordingly, the right to register an invention that is the result of a scientific and technological task using the State budget belongs to the organization in charge of the science and technology task and this organization will become the owner of this invention, except for the case of inventions in the field of national defense and security, which will be registered by the State owner’s representative.

At the same time, related to the transfer of inventions in the above case, according to the newly added clause 6 of Article 139, the owner of the invention specified in Clause 1, Article 86a may only assign the right to another organization or individual when permitted approved by the owner ‘s representative .

Termination of the validity of a patent

In fact, the validity of a protection title may be terminated in whole or in part. However, in the 2005 Intellectual Property Law, although it mentioned the termination of the validity of a protection title in some cases, it is still not clear whether the entire or only one part of that protection title is terminated.

The revised Law on Intellectual Property of 2022 has corrected that provision, replaced by: protection titles are terminated in whole or in part in certain cases.

The new law also amends Article 96 (Termination of the validity of a protection title) by adding a number of cases where the validity of a patent is annulled in whole or in part, such as the case of amendment of a patent application . registration expands the scope of the exposed object; the invention is not fully and clearly disclosed; patent extend beyond the scope of disclosure; patent applications are filed contrary to security controls or fail to disclose / inaccurately disclose the origin of genetic resources or traditional knowledge about genetic resources.

In addition, the revised Law on Intellectual Property of 2022 also adds provisions to clearly define the time of termination of the validity of a protection title in some cases. Accordingly, the validity of a protection title shall be terminated from the date the state management agency in charge of industrial property rights issues a decision to terminate the validity of a protection title when the patent holder no longer exists and The validity of a protection title shall be terminated from the date the state management agency in charge of industrial property rights receives a written declaration of renunciation of industrial property rights from the protection title holder.

Responds to patent applications

The response time:

The 2005 Intellectual Property Law does not specify a time limit for objecting to a patent application, and third-party comments may be filed during the patent examination, provided that such comments are filed before the National Office of Intellectual Property makes decisions to grant protection titles. One of the important new points in the revised Intellectual Property Law of 2022 related to the object of invention is the addition of a provision on the time limit for objecting to a patent application, specifically, this time limit is nine months from the date of registration from the date the patent application is published.

About the procedure:

If the 2005 Intellectual Property Law stipulates that the NOIP will only accept the opinions of a third party, but may not respond or have to set up a separate procedure to deal with the opinions of the third party. Then, in the Intellectual Property Law of 2022, it is more detailed and clearer: Department of if the intellectual property owner receives feedback, issues a response number, a mechanism, order and procedure must be established to deal with objections as an independent procedure, similar to the procedure for termination, cancellation quit or appeal.

About fees :

According to the 2005 Intellectual Property Law, the application for an objection to the grant of an invention protection title will not have to pay fees, while the Intellectual Property Law of 2022 requires the payment of fees and charges, as specified in Clause 2, Article 112a. : “The objection must be made in writing, enclosed with documents or cited as an information source for proof, and must pay fees and charges”.

Compensation for patent licensing delays

The Intellectual Property Law of 2022 to implement the EVFTA Agreement has added Article 131a on compensation to patent owners for delays in the issuance of marketing authorization for pharmaceutical products. The text of this Article is taken from the Resolution ratifying the EVFTA Agreement.

Refusal to grant protection title

Compared with the current Intellectual Property Law, the Intellectual Property Law 2022 adds the case of refusal to grant a protection title to an invention as follows:

  • There are grounds to assert that the applicant does not have the right to register the invention;
  • The modification or supplementation of the application expands the scope of the invention disclosed or stated in the application or changes the nature of the invention requested for registration stated in the application;
  • The invention claimed exceeds the extent of disclosure in the original description of the patent application;
  • The invention is not disclosed sufficiently and clearly in the invention description to the extent that it is possible for a person with average knowledge of the relevant technical field to make the invention;
  • The patent application does not disclose or incorrectly discloses the origin of the genetic resources or the traditional knowledge of genetic resources for inventions which are directly based on genetic resources or traditional knowledge of genetic resources;
  • The patent application was filed in contravention of the regulations on security control for with invention.

Examination of the content of a patent application

Law on Intellectual Property amended 2022 provides for substantive examination of industrial property registration applications:

  • The state management agency in charge of industrial property rights may use the results of substantive examination of an invention registration application that is identical with the claimed invention conducted by a foreign patent office during the assessment process. protection ability.
  • The Minister of Science and Technology shall detail the use of results of substantive examination of invention registration applications.

The Intellectual Property Law 2022 adds a provision that allows the state management agency in charge of industrial property rights to use the results of the substantive examination of an invention registration application that are identical with the invention claimed for protection. foreign patent office during the patentability assessment process.

Supplementing grounds for compulsory licensing of inventions and exemption from compensatory obligations upon compulsory licensing of inventions

Compulsory licensing of an invention means the transfer to another organization or individual the right to use an invention under a decision of a competent state agency without the consent of the patent owner. invent.

The revised IP Law in 2022 has added at point d, clause 1, Article 145 of the compulsory license of the right to use inventions in the case in order to meet the needs of the eligible importing countries according to the provisions of the Agreement. According to TRIPS regulation, the use of inventions to meet the needs of pharmaceutical products for disease prevention and treatment of other countries are eligible for import under international treaties to which Vietnam is a member.

At the same time, the revised Law on Intellectual Property in 2022 has added provisions on exemption from compensation obligations when compulsorily transferring inventions. Accordingly, in case the right to use an invention is transferred under a compulsory decision to import pharmaceuticals under the mechanism of an international treaty to which Vietnam is a contracting party and the compensation for the use of the invention is transferred If a compulsory award has been paid in the exporting country, the licensee does not have to pay the patent holder a compensation.

Customers who need advice in the field of intellectual property, update new points of the Vietnam Intellectual Property Law 2022 related to patent, please contact Viet An Law Firm for the fastest support, the most effective!

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