Patent registration in Vietnam

Viet An law firm was established in 2007 and has been recognized as an Intellectual Property Representative Organization of Vietnam at The Intellectual Property Office of Vietnam. After 15 years of operation, Viet An Law is proud to be one of the most prestigious law firms, providing the best services to clients in the field of legal consultancy, services consultancy on intellectual property, and Intellectual Property Representative service in Vietnam. Viet An Law Firm details the procedures for patent registration in Vietnam as follows.

What is a patent in Vietnam?

An invention is a technical solution in the form of a product or process that solves a defined problem by applying the laws of nature. Inventions are exclusively protected in the form of an invention or utility solution patent.

What is the technical solution?

A technical solution is an object protected as a patient that includes a necessary and sufficient collection of information about technical methods and/or technical means of applying natural laws to solve a task service or a defined problem. Technical solutions exist in the following forms:

Technical solutions exist in the form of products

Products in the form of objects or structures

• Products in the form of objects, for example, tools, machines, equipment, components, and circuits are represented by a set of information that identifies a man-made product characterized by signs/ structural specifications, that product has a function or use as a means to meet certain human needs. For example: a pump or a motor part of the pump.

Product in substance form

• Products in the form of substances include single substances, compounds, and mixtures of substances. For example: materials, substances, foods, and pharmaceuticals…, are represented by a set of information that identifies a man-made product characterized by signs/specifications about the presence, proportions, and states of elements, which function or serve as a means to satisfy certain human needs. Products in the form of biological materials, for example, genes, genetically modified plants/animals…, are represented by a collection of information about a product containing genetic information altered under the influence of human activity, capable of self-regeneration. For example: a new medicine or vaccine, detergent.

Technical solutions exist in the form of processes or methods

Production processes, methods of diagnosis, prediction, inspection, and treatment are represented by a set of information that determines how to carry out a process, a specific job characterized by signs or characteristics of the order, participants, measures, and means of performing operations to achieve a certain purpose. For example, sugar making process or production process of a specific new product.

Legal basis and method of applying for patent registration of foreign individuals and organizations in Vietnam

Vietnam is a member of almost all international conventions on intellectual property rights such as the TRIPS Agreement, 1967 Paris Convention, 1971 Berne Convention, 1981 Rome Convention, 1989 Washington Agreement, Madrid Agreement, Madrid Protocol, and Patent Cooperation Treaty (PCT). Besides, Vietnamese law has very specific provisions, details on intellectual property rights in general, and rights to an invention in particular in the national laws and regulations: Vietnam Intellectual Property Law 2005 and others implementing regulations.

For patent application owners with foreign nationality

• Foreign individuals and organizations can register international patents under the Patent Cooperation Treaty (PCT) (when they are already members of the Treaty).
• Foreign individuals and organizations can only choose to file a patent application in Vietnam through an Intellectual Property Representative Organization such as Viet An Law Firm.

For patent application owners with Vietnamese nationality

• Vietnamese individuals and organizations can apply on their own to the National Office of Intellectual Property.
• Vietnamese individuals and organizations can choose to apply for patent registration through an Intellectual Property Representative Organization such as Viet An Law Firm.

Governing scope and conditions for the protection of inventions in Vietnam

Inventions shall be granted to objects that satisfy the conditions of protection including patents, utility solutions, and industrial designs.

Accordingly, an invention shall be eligible for protection in the form of the grant of a patent when it satisfies the following conditions:

• It is novel;
• It is of an inventive nature;
• It is susceptible to industrial application.

The invention must be a novelty

There is novelty (novelty is understood as new compared to techniques on a worldwide scale and new compared to itself). Therefore, before applying for a patent, an invention must not have been disclosed or it will lose its novelty. Thus, it is necessary to note the novelty of the invention as follows:

• Novelty compared to the world;
• Novelty compared to itself means that the invention has not been announced or publicly disclosed before filing the application for registration.

Except for some cases, an invention is not considered to lose its novelty if it is published in the following cases, provided that the invention registration application is filed within six months from the date of publication:

• The invention is published by someone else without the permission of the person who has the right to register the invention;
• The invention is published in the form of a scientific report;
• The invention is displayed at Vietnam’s national exhibition or at an official or officially recognized international exhibition.

Inventions must have a creative level

The creative level is understood as not being obvious or easily created by people with average knowledge of the respective field.

The invention is capable of industrial application

The capability of industrial application is understood as being able to be applied or put into mass production.

Inventions applying for protection in the form of utility solution must meet the following criteria:

• Novelty;
• It is not common knowledge;
• Capable of industrial application.

Principles for filing patent applications in Vietnam

When there are multiple applications for registration of identical or equivalent inventions, the protection title will only be granted to the invention in the valid application with the earliest priority date or filing date among the applications that meet the conditions for registration to grant protection title (according to Clause 1, Article 90 of the Intellectual Property Law).

Reasons to register a patent through a law firm with the status of Industrial Property Representative

• Law Firms that are Industrial Property Representatives are truly units with expertise, experience, and knowledge to best advise and evaluate the novelty, creativity, and industrial applicability of a patent. In particular, only representatives with expertise and experience in patent registration can advise and write patent descriptions to ensure the novelty and protection requirements of each patent in various fields are highlighted.
• To become an industrial property representative, one must have expertise in specific scientific and technical fields. They must also study, pass many exams, and obtain an industrial property representative certificate, and then just can advise and represent patent registration.
• Industrial Property Representative units will assist in resolving arising issues related to application objections and rejections of Clients during the process of filing patent applications in Vietnam.
• The Intellectual Property Representative Organization has the function of signing applications on behalf of the application owner and representing the application owner to work with the Intellectual Property Office to ensure maximum benefits for Clients.
• Viet An Law Firm is an Intellectual Property Representative organization, Clients will be guaranteed all benefits when using our patent registration services.

Procedure for patent registration in Vietnam

Based on the above principle, Viet An Law Firm would like to send to our Clients the following procedures for patent registration in Vietnam:

Step 1: Research the patentability of your invention in Vietnam

Preliminary search for patentability of inventions in Vietnam

To do a preliminary search of the patentability of an invention, Clients can do a free search through one of the following two electronic data portals:

• Google patent: Global patent database built by Google. Clients can access the following address: https://patents.google.com/
• IP Lib: Vietnam’s patent database built by the Vietnam National Office of Intellectual Property NOIP. Clients can access the following address: http://iplib.noip.gov.vn/WebUI/WSearchPAT.php

However, performing searches on the above databases is very complicated and time-consuming, and is even somewhat outdated compared to reality. Clients can send documents about inventions to Viet An Law Firm for profound research before filing a patent application.

Profound research before filing a patent application in Vietnam

Profound research is a completely voluntary procedure for applicants in Vietnam. However, Clients should carry out this procedure because this is the first and most important step to preliminarily evaluate whether an invention should be submitted for protection or not. Therefore, the patent search is for reference only and is not a basis for granting a protection title.

Step 2: Prepare patent registration documents

Patent registration dossiers in Vietnam include:

• The patent registration application according to the form issued by the National Office of Intellectual Property (printed in 03 sets). Please contact Viet An Law directly to be provided with the prescribed declaration form.
• Power of Attorney (according to the form of Viet An Law Firm);
• Description of the invention/utility solution, including the name of the invention/utility solution, description, illustrative example, protection claims, and summary;
• Illustrations (if any);
• Copy of priority application documents certified by the agency where the priority application is filed (only required for priority applications under the Paris Convention). This document can be supplemented within 03 months from the date of application.
• For PCT applications submitted to Vietnam, in addition to the above documents, the following documents must be provided: PCT application announcement, International Preliminary Examination Report (PCT/IPER/409) (if any), Notice of changes related to the application (PCT/IB/306) (if any), Report on International Search Results (PCT/ISA/210)… For this case, it is possible to supplement the original Power of Attorney within 34 months from the priority date. Information needed to provide:
  • Full name, address, and nationality of the applicant;
  • Full name, address, and nationality of the author of the invention/utility solution;
  • Name of invention/useful solution;
  • Priority application number, priority date, and priority country of the application (in case the application requests priority rights);
  • International application number and international application publication number (in case of PCT application filed in Vietnam).

Step 3: Submit the patent registration application and monitor the patent registration process at the Vietnam National Office of Intellectual Property

After completing the application, the applicant proceeds to register the invention at the National Office of Intellectual Property.

Step 4: Formality examination of the invention in Vietnam

• Duration: 01 month from the date of application.
• The National Office of Intellectual Property will consider whether the application meets the formal conditions, thereby making a conclusion whether the application is valid or invalid.
• If the Client’s registration application meets the conditions, the National Office of Intellectual Property will notify the acceptance of the valid application and publish the application.
• If the Client’s registration application does not meet the conditions, the National Office of Intellectual Property will issue a Notice of non-acceptance of the application and request the Client to make amendments. The Client makes modifications as requested and submits the amended dispatch to the Intellectual Property Office.

Step 5: Publication of the patent application in Vietnam

The time limit for application publication is 19th-month from the priority date or filing date if the application does not have a priority date, or within 02 months from the date of acceptance as valid, whichever is later.

• If there is a request for early publication, it will 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.
• The published content is information related to the valid application recorded in the notice of acceptance of the valid application, the invention summary, and drawings (if any).

Step 6: Substantial examination of patent application in Vietnam

• Time limit for submitting a request for substantive examination: 02 months from the date of filing the patent registration application. If within the time limit specified above, there is no request for examination, the application will be considered withdrawn at the end of that time limit.
• Substantial examination is to evaluate the patentability of the invention stated in the application according to the protection conditions. The time for substantial examination is 18 months from the date of receipt of the request.
• The National Office of Intellectual Property reviews the conditions for patent registration and then evaluates the possibility of granting a patent for the invention that the Client registers. If the patent application meets the conditions, the National Office of Intellectual Property will issue a Notice of intention to grant a patent for the invention that the Client has registered.
• If the patent application does not meet the conditions, the National Office of Intellectual Property will issue a Notice of non-granting of a patent for the invention that the Client registered. In case the Client requests, Viet An Law will conduct procedures to respond and appeal the Department of Property’s decision while providing grounds to grant a patent protection title for the Client’s invention. Response and complaint fees are not included in the patent registration fee.

Step 7: Grant patent protection title in Vietnam

An industrial property registration application does not fall into the cases of refusal to grant a protection title and the applicant pays the fee, the state management agency on industrial property rights decides to grant a protection title. After granting the title, it will be recorded in the National Register of Industrial Property.

Step 8: Maintain the validity of the patent protection certificate in Vietnam

To maintain the validity of an invention patent or a utility solution patent, the protection title holder must pay an annual maintenance fee.

Cases of claiming priority rights in Vietnam

Under the Law on Intellectual Property (Article 90.3), where two or more applications satisfy all the conditions for the grant of a protection title and have the same earliest priority or filing date, a protection title may only be granted to a single application from such applications with agreement from all applicants. Without such an agreement, all such applications shall be refused the grant of a protection title.

An applicant for registration of an invention may claim priority based on the first application for registration of protection of the subject matter if the following conditions are fully satisfied:

• The applicant is a citizen of Vietnam or a member country of the Paris Convention or resides or has a production or production establishment in Vietnam or in that member country;
• The first application had been filed in Vietnam or a member country of the Paris Convention and contains a section relevant to the claim for the priority right in the application for registration of an invention;
• The registration application is filed within six months from the date of first filing;
• In the application for registration of an invention, the applicant clearly states his/her claim for the priority right and submits a copy of the first application with certification by the agency which receives the first application in case of overseas filing;
• The fee for the claim for priority rights is fully paid.

The term invention protection in Vietnam

Under the Law on Intellectual Property (Article 93): an invention patent shall be valid from the grant date until the end of twenty (20) years after the filing date; A utility solution patent shall be valid from the grant date until the end of ten (10) years after the filing date.

The term for submitting the application for maintenance and extension of validity of protection titles in Vietnam:

• Within 06 months before the expiry date of an invention protection certificate, the Client must submit an application for an extension to the National Office of Intellectual Property of Vietnam;
• However, Clients should note that in order to have the validity of a patent extended, the owner must pay a validity extension fee.

Keynotes for patent registration procedures in Vietnam

Under the Law on Intellectual Property, the objects are allowed to register for an invention in Vietnam including individuals and business organizations.

The priority date has a prominent impact on the decision on issuing or not issuing protection titles for other subjects. From the date when the first application form is sent to the date submitted an application form is in Vietnam if there is another subject submitting for the same object, the application form of the first object will be considered to have the same register date as the first registration date in other countries and is prioritized to protect.

Under the Law on Intellectual Property (Article 59), objects ineligible for protection as inventions include:

• Scientific discoveries or theories, mathematical methods;
• Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, and doing business; computer programs.
• Presentations of information;
• Solutions of aesthetic characteristics only;
• Plant varieties, animal breeds;
• Processes of plant or animal products which are principal of a biological nature, other than microbiological processes;
• Human and animal disease prevention methods, diagnostic and treatment methods.

Patent registration service of Viet An Law Firm

• Legal advice on conditions and procedures for patent registration in Vietnam and abroad;
• Consulting on the feasibility of obtaining an exclusive protection certificate for the invention.
• Research the novelty of inventions in Vietnam and around the world;
• Write an invention description, and prepare an invention registration file;
• Translate foreign patents registered in Vietnam and translate Vietnamese patents to register patents abroad.
• Representing patent registration for Clients during the patent registration process.
• Submit documents and monitor the registration and examination process at the National Office of Intellectual Property.
• Represent clients throughout the entire process of establishing rights and responding to official correspondence with the National Office of Intellectual Property on patent registration.
• Exchange and provide information to Clients during the patent protection registration process.
• Object and complain about contents related to patent applications.
• Receive the patent protection certificate and return it to the Client.

Please contact Viet An Law Firm to be consulted, given detailed information, and settled difficulties and problems with patent registration in Vietnam!