Patents 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 of consultancy on intellectual property and Intellectual Property Representative service in Vietnam. Viet An Law Firm details the procedures for patents registration in Vietnam as follows:

Legal grounds and method of applying for patents 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, 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.

Therefore, foreign individuals and organizations desire to apply for registration of patent protection in Vietnam may use either of the following methods:

• Foreign individuals and organizations may register international patents under the Patent Cooperation Treaty (PCT) (in case of the state party of the Patent Cooperation Treaty).
• Foreign individuals and organizations may choose the method of direct application for patent registration in Vietnam 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, industrial designs.

Accordingly, 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 patents 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.

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

Step 1: Vietnam invention search of the availability

General research whether the inventions are possible to be registered in Vietnam or not

Customers could do free general research through one of the following databases:

• Google patent: Global patents database administered by Google. Customers can visit the website at: https://patents.google.com/
• IP Lib: Vietnam’s patents database is administered by the National Office of Intellectual Property of Vietnam – NOIP. Customers can visit the website at: http://iplib.noip.gov.vn/WebUI/WSearchPAT.php

However, the research on these databases is very complicated and time-consuming, even somewhat outdated. Clients shall submit dossiers about the invention that are planed to register to Viet An Law Firm for the operation of profound research before filing an application.

Profound research before the filing of the application for registration of the inventions in Vietnam

Profound research is a completely voluntary procedure for applicants in Vietnam. However, customers should carry out this procedure because this is the first and important step for a preliminary assessment of whether an invention should apply for registration. Therefore, an invention search of the availability is only for reference and is not a base for a privately protected title.

Required dossiers for trademark search

For invention search, customers shall submit to Viet An Law the following dossiers:

• A description of the invention and an abstract of the invention;
• Drawings of such invention (if any);

Duration: This stage will last for 01-03 days with the result of a notice of inventions search results if operated by Viet An Law Firm

Step 2: Submitting the register invention dossier and supervising the registered progress at the National Office of Intellectual Property

After overall progress and it indicates that the invention is highly possible to be registered, Viet An Law Firm shall submit the dossier to the National Office of Intellectual Property.

Required dossiers for registration of the invention include:

• 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).

The process of filing of the application for registration of the invention in Vietnam:

Filing of the application for registration of the invention in Vietnam

On the day that Viet An Law submits the application for registration of the invention 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 registration of the invention 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 registration of the invention.)

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 registration of an invention 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.

Granting invention protection title in Vietnam

Where an application for registration of industrial property does not fall into the cases of refusal to grant protection titles stipulated in clauses 1, 2 and 3(b) of Article 117 of this Law and the applicant has paid the fee, the State administrative body for industrial property rights shall decide to grant a protection title and enter it in the National Register of Industrial Property.

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 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 right is fully paid.

The term of 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 customer must 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 must pay a validity extension fee.

Some points to note when carrying out procedures for trademark registration in Vietnam:

• Regarding Law on Intellectual property 2005, the objects are allowed to register for an invention in Vietnam includes 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 submit an application form 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.

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