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 17 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?

An invention is a technical solution in the form of a product or process that aims to solve a defined problem by applying natural laws. 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 vaccine, or detergent.

The product is a genetic resource or traditional knowledge

• Genetic resources and traditional knowledge on genetic resources under contracts for access to genetic resources and benefit sharing.

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.

Confidential invention

The invention is determined by a competent agency or organization to be a State secret according to the provisions of the law on protecting State secrets.

Reasons to register a patent through a law firm as an 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 an invention. mechanism. In particular, only representatives with expertise and experience in patent registration can advise and write invention descriptions to ensure the novelty and protection requirements of each invention in various fields are highlighted. specifically.
• To become an industrial property representative, one must have expertise in specific scientific and technical fields, and must also study and pass many exams and obtain an industrial property representative certificate. Can advise and represent patent registration.
• Industrial Property Representative units will assist in resolving arising issues related to application objections and rejections of customers 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 customers.
• Viet An Law Firm is an Intellectual Property Representative organization, so customers will be guaranteed all benefits when using our patent registration services.

Procedure instructions on patent registration in Vietnam

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.

Conditions for patent protection in Vietnam

Inventions are protected in the form of patents if they meet the following conditions:

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;
• An invention is considered a novelty if it is not disclosed in another patent application that has an earlier filing date or priority date but is published on or after the filing date or priority date of the patent application. (This is a new regulation of the amended Intellectual Property Law 2022).
• Novelty compared to itself means that the invention has not been announced or publicly disclosed before applying 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 twelve 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 an official or officially recognized international exhibition (not more than 12 months old).

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 titles 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 granted a protection title (according to Clause 1, Article 90 of the Intellectual Property Law).

Procedure of patent registration in Vietnam

Detailed steps of patent registration procedures are as follows:

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.

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 dossier

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 patent application 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 concluding 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: Request for substantial examination of patent application

• The time limit for submitting a Request for substantive examination is 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.

Step 7: Substantive examination

• 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 8: Request to pay a fee

Step 9: Payment

Step 10: 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.

Step 11: Publication of patent protection title

After granting the title, it will be recorded in the National Register of Industrial Property.

Step 12: Pay annual patent maintenance fees and extend the protection term 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.

Filing a patent application for priority rights in Vietnam

According to Clause 3, Article 90 of the Law on Intellectual Property of Vietnam, most recently amended and supplemented in 2022, in case multiple patent applications meet the conditions for being granted a protection title and have the same priority date, the earliest application filing date, the protection title will only be granted to the subject of a single application among those applications according to the agreement of all applicants. If no agreement can be reached, the respective subjects of those applications will be refused a protection title in Vietnam.

The applicant’s request for priority rights will be accepted if the following conditions are met:

• The applicant is a Vietnamese citizen or a citizen of a country that is a member of the Paris Convention or resides or has a production or business establishment in Vietnam or in a country that is a member of the Convention.
• The first application has been filed in Vietnam or a member country of the Convention and that application contains a claim for priority right to patent registration.
• Invention registration applications are submitted within 6 months from the date of first filing. The priority period is calculated from the date of the first application, the date of the first application is not included in the priority period.
• In the registration application, the applicant clearly states his claim for priority rights. The applicant must submit a copy of the first application with confirmation from the first application-receiving agency in case of filing abroad.
• Pay the full fee to request priority rights.

Patent protection term in Vietnam

• The term of patent protection in Vietnam is 20 years from the date of grant of the patent and lasts until 20 years from the date of filing, provided that it is maintained under regulations. Thus, any invention protected in Vietnam with full maintenance fees can only be protected for a maximum of 20 years.
• For utility solution patents, they are valid from the date of issue and last until the end of 10 years from the date of application, provided that the validity extension fee is paid in full according to regulations.

Some notes when carrying out patent registration procedures in Vietnam

• According to Vietnamese law, foreign individuals or organizations have the right to apply for patent registration in Vietnam.
• The right of priority in patent registration affects whether or not a protection title is granted to another subject’s patent application. During the period from the date of filing the first application to the date of applying in Vietnam, if another entity applies to the same subject as the first application, the first applicant’s application is still considered to have the same filing date as the filing date of the first application and receive priority protection.
• Subjects that are not protected as inventions are specified in Article 59 of the Intellectual Property Law. Detail:
  • Inventions, scientific theories, and mathematical methods;
  • Schemes, plans, rules, and methods for performing mental activities, training pets, conducting games, and doing business; Computer Programs;
  • The way to present information;
  • The solution has only aesthetic properties;
  • Plant varieties, animal varieties;
  • Plant and animal production processes are mainly biological and are not microbiological processes;
  • Methods of prevention, diagnosis, and treatment of diseases in humans and animals.

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.

Some new points of the Intellectual Property Law 2022 effective January 1, 2023, on patent registration

New regulations on patent registration rights (Article 86)

Supplementing regulations on patent registration rights of organizations and individuals assigned to manage genetic resources and provide genetic resources and traditional knowledge about genetic resources under contracts to access genetic resources and share benefits

New regulations on additional confidential inventions in section Explanation of terms (Article 4)

Supplementing the definition of a confidential invention: an invention that is determined by a competent agency or organization to be a State secret according to the provisions of law on protecting State secrets.

New regulations on patent’s novelty (Article 60)

Addition of cases where an invention is considered new if not 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 the patent application.

New regulations on security control of inventions before filing applications for registration abroad (Article 89a)

Applicable objects:

• Inventions in technical fields that impact national defense and security;
• Created in Vietnam;
• Subject to registration of individuals who are Vietnamese citizens and permanently reside in Vietnam; of an organization established under Vietnamese law.

Control procedures:

A patent application can only be filed abroad if a patent application has been filed in Vietnam to carry out security control procedures.

New regulations on invalidation of protection title (Article 96)

Additional cases of full cancellation of validity

• The patent application was filed contrary to security control regulations;
• Patent application for an invention that is directly created based on genetic resources or traditional knowledge about genetic resources but does not disclose or inaccurately discloses the origin.

Additional cases of full or partial cancellation of validity

• The invention is not fully disclosed to the extent that it can be implemented by a person with average knowledge of the relevant technical field;
• The patented invention exceeds the scope disclosed in the original description of the patent application;
• The invention does not meet the first-to-file principle.

Supplementing regulations to clarify the effect of protection titles whose validity is canceled in whole or in part:

Cancellation of all or part thereof shall not take effect from the time of granting.

New regulations on general requirements for patent applications (Article 100)

Supplementing regulations on documents explaining the origin of genetic resources or traditional knowledge of genetic resources for patents that are directly created based on genetic resources or traditional knowledge of genetic resources.

New regulations on receiving industrial property registration applications (Article 108)

Supplementing regulations assigning the Government to detail regulations on handling confidential patent applications.

New regulations on the formality examination (Article 109)

Adding a case of refusing to accept a valid application if the patent application is filed contrary to regulations on security control.

New regulations on substantive examination of applications (Article 114)

• Supplementing regulations allowing state management agencies in charge of industrial property rights to use the results of substantive examination of patent applications identical to the invention requested to be protected by a foreign patent office during the protection examination process.
• Supplementing regulations assigning the Minister of Science and Technology to detail the use of substantive examination results.

New regulations on refusal to grant protection titles (Article 117)

Additional cases of refusal to grant protection titles (similar to cases of cancellation):

• The claimed invention exceeds the scope disclosed in the original description.
• The invention is not fully disclosed in the patent description to the extent that based on which a person with average knowledge of the relevant technical field can carry out the invention.
• The patent application does not disclose or inaccurately disclose the origin of the genetic resources or traditional knowledge about the genetic resources.
• The patent application was filed contrary to security control regulations.

If you have any difficulties or problems related to patent registration in Vietnam, please contact Viet An Law for the fastest support!