Patents 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 of consultancy on intellectual property and Intellectual Property Representative service in Vietnam. During the course of business, our company receives a lot of questions from customers, especially foreign ones. Here we would like to collect and address the most burning questions related to patent registration in Vietnam as follows:

Who has the right to register a patent in Vietnam?

Vietnamese Intellectual Property Law stipulates that only the following organizations and individuals shall have the right to register inventions:

• Authors who have created inventions by own labour and at their own expense
• Organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring, unless otherwise agreed by the parties involved and provided that such agreements are not contrary to the provisions of The Government on the right to register inventions created by using material and technical facilities and funds from the State Budget.

What object can be protected as a patents in Vietnam?

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

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

The scope of protection of the invention in Vietnam?

Under the Law on Intellectual Property (Article 12.4), Invention means a technical solution in the form of a product or process which is intended to solve a problem by application of natural laws.

Accordingly, the invention of foreign individuals or organizations must be:

• A technical solution in the form of a product or a process;
• Intended to solve a problem identified by the application of natural laws.

What is the invention filing rule of Vietnam?

Under the Law on Intellectual Property (Article 90.1), in case many applications are filed for registration of the same invention or similar inventions, or registration of industrial designs identical with or insignificantly different from one another, the protection title may only be granted to the valid application with the earliest priority or filing date among applications satisfying all the conditions for the grant of a protection title.

What is required for filing a patent application in Vietnam?

To apply for patents registration in Vietnam, customers need to provide the following dossiers:

• Invention registration declaration form published by the National Office of Intellectual Property (03 sets). Please contact Viet An Law Firm to get these forms;
• Power of attorney (Viet An Law Firm’s form);
• Invention/Utility solution description: invention/utility solution name, description, examples, protection requirement and abstract;
• Description images (if any);
• Copies of documents of priority privilege requirement which are verified by agencies where the priority form is submitted (only for priority privilege requirement according to Paris Convention). This category could be submitted within 03 months from the submitting day;
• For PCT dossiers in Vietnam, besides these documents above, more required documents, such as PCT application publication, international preliminary analysis report (PCT/IPER/409) (if any), a notice of changes in application (PCT/IB/306) (if any), international analysis report (PCT/ISA/210)… For this case, originals of power of attorney shall be added within 34 months from the priority day. Information needs to be provided:
• Full name, address, and nationality of the applicant;
• Full name, address, and nationality of invention/utility solution author;
• The name of the invention/utility solution;
• Priority application number, priority date, and countries (in case applicant requires priority privilege);
• International application number and international application publication number (in case the PCT form is submitted in Vietnam).

Procedures for filing of the application for patent registration in Vietnam include the following stages:

Filing of the application for patent registration in Vietnam

On the day that Viet An Law submits the application for patent registration at the Intellectual Property Office of Vietnam (NOIP), Viet An Law will send the customer a declaration form containing the application number and date of submitting the application for patent registration in Vietnam. (In case the application is accepted the invalid application – the date on which the application is accepted as valid will be the priority date of the application for patent registration.)

Formality examination of Vietnam inventions application

• The time limit for formality examination was one month from the filing date
• The National Office of Intellectual Property shall determine whether the application form satisfies the format, the owner of the application form, …
• In case the registration form contents with the requirements, the National Office Of Intellectual Property shall make an announcement of accepting the valid application and permitting to notifying the form.
• In the case of the unqualified application form, the National Office of Intellectual Property shall make an announcement of not accepting the application and suggesting the applicant have amendments. The applicant then will make amendments following the requirements and submit the statement of the amendment to the National Office of Intellectual Property.

Publication of Vietnam invention application on IP Gazette:

• NOIP shall publish the Vietnam invention applicant for any possible opposition on Vietnam IP Gazette within 02 months from the date the competent authorities release notification of valid dossier.
• The content of the application for patent registration shall include the information relating to the valid application form written in the notification of valid dossier, an abstract of the invention, drawings of such invention (if any);

Substantive examination of the invention in Vietnam:

• The time limit for substantive examination was nine months for substantive examination.
• National Office of Intellectual Property shall take the requirements of registration for invention into account and evaluate the ability to issue protection titles for the registering company.
• If the registration form meets all the requirements, the National Office of Intellectual Property will release the announcement of the intention of issuing a protection title for the invention which the company has registered.
• If the registration form is unqualified with the requirements, the National Office of Intellectual Property will make an announcement of not issuing a protection title for the invention which companies have registered. The company, then considers and sends the answer, the complaint against the National Office of Intellectual Property’s decision, and simultaneously provides evidence to prove the ability to issue protection title for the company’s goods, services.

Cases of claiming priority rights in Vietnam:

Under the Law on Intellectual Property (Article 90.3), Where two or more applications are satisfying all the conditions for the grant of a protection title and having 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 patent registration 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 patent registration;
• The registration application is filed within six months from the date of first filing;
• In the application for patent registration, 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 right is fully paid.

How long is the term of validity of patent registration 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.

How long is the term for submitting the application for maintenance and extension of the validity of protection titles in Vietnam?

• Within 12 months before the expiry date of the patent, the customer shall submit an application for an extension to the National Office of Intellectual Property of Vietnam;
• However, customers should note that in order to have the validity of a patent extended, the owner shall pay a validity extension fee.

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