The legal provisions related to the right to register Industrial Property objects, including the patent registration rights in Vietnam, are one of the new points of the revised Intellectual Property Law 2022, effective from January 2023. In particular, the right to register a patent is created on the basis of the State’s investment in order to synchronize and comply with the provisions of the Law on Management, use of public property, towards creating a real motivation for exploitation and commercialization of inventions.
Rights of patent registration in Vietnam
The following organizations and individuals have the right to register inventions:
- Authors create inventions with their own efforts and expenses;
- Organizations and individuals shall invest funds and material means for the author in the form of job assignment or employment, unless otherwise agreed by the parties and such agreement is not against the provisions of Clause 2, Article 86 of the Intellectual Property Law.
- In case many organizations and individuals jointly create or invest to create an invention, industrial design or layout design, those organizations and individuals have the right to register and that right of registration is only performed if agreed by all such organizations and individuals.
- The person having the right to register an invention which has the right to transfer the right of registration to another organization or individual in the form of a written contract, for inheritance according to the provisions of law, even if the application has been filed.
- The right to register inventions, which is the result of scientific and technological tasks which are funded by the state budget
- For inventions that are the result of scientific and technological tasks using the entire state budget, the right to register an invention is automatically assigned to the lead organization and without reimbursement, except for the case cases specified in Clause 3, Article 86 of the Intellectual Property Law.
- For inventions that are the result of scientific and technological tasks, which are invested with many sources of capital, including a part of the state budget, the part of the right to register an invention corresponds to the proportion of the state budget is automatically assigned to the lead organization and without compensation, except for the case specified in Clause 3, Article 86 of the Intellectual Property Law.
- Patent registration rights resulting from scientific and technological tasks in the field of national defense and security are performed as follows:
- In case scientific and technological tasks use the entire state budget, the right to register inventions belongs to the State;
- In case scientific and technological tasks are invested with many capital sources, including a part of the state budget, the part of the right to register inventions corresponds to the proportion of the state budget belonging to the State;
- The State owner’s representative shall exercise the right of registration.
Some new points of the 2022 revised Intellectual Property Law on rights of patent registration in Vietnam
Regulations on the right to register inventions as a result of scientific and technological tasks which are funded by the State budget
- In order to overcome pre-existing regulations, the revised Law on Intellectual Property of 2022 has added Article 86a, which stipulates that the right to register an invention is the result of a scientific and technological task that uses it. The use of the state budget belongs to the organization in charge of science and technology tasks and this organization will become the owner of the invention, except for the case of invention, industrial design, layout design in the international domain. National security and defense shall be registered by the representative of the State owner.
- The Intellectual Property Law amended in 2022 adds Article 133a, which establishes cases where the State assigns the right to register inventions as a result of scientific and technological tasks using the state budget for organizations, other individuals, and cases where the State allows other organizations and individuals to use the invention, without the consent of the holder of the exclusive right to use.
Regulations on paying compensation to inventors
The revised Law on Intellectual Property of 2022 also specifically stipulates the obligation that the owner must pay to the inventor, the obligation to pay compensation for using the invention, and the obligation of presiding organization for inventions resulting from scientific and technological tasks using the state budget.
Patent registration rights of organizations and individuals managing genetic resources in Vietnam
Another important addition is that organizations and individuals manage genetic resources to supply and invest in genetic resources and traditional knowledge about genetic resources under contracts for access to genetic resources and benefit sharing, unless the parties otherwise agreed to also have the right to patent.
Patent registration procedures in Vietnam
Step 1: Determine the type of patent to be protected
After finalizing the invention, the owner needs to determine the type of protection of the invention and perform the classification of the invention according to the International Patent Classification (IPC).
Step 2: Research patents
Patent search is intended to determine the feasibility when a registered invention is granted an exclusive protection because the patent registration period is quite long.
Step 3: Submit patent application
- After searching and evaluating the patentability of the invention, the applicant submits an application for patent registration.
- Note: Applications for invention/ utility solutions should be subject to the International Patent Classification (IPC). In case the applicant fails to classify or classifies incorrectly, the NOIP will conduct the classification. Accordingly, the applicant needs to pay the classification fee according to the regulations (VND 100,000 / 01 international classification of inventions).
Step 4: Formality examination of the application
The time limit for formality examination of an invention registration application is 01 month from the date of filing the application.
Step 5: Publication of patent application
- Patent applications are published within the nineteenth month from the priority or filing date. If the application does not have a priority date or within 2 months from the date of accepting the valid application, whichever is later;
- An application for an invention registration under the Patent Cooperation Treaty (hereinafter referred to as the “PCT application”) published within 2 months from the date of acceptance of the valid application has entered the national stage;
- An application for registration of an invention/ utility solution requiring early publication shall be published within 2 months from the date the NOIP receives the request for early publication. Or from the date of acceptance of a valid application, whichever is later. For early publication, the applicant needs a written request for early publication. In which, the applicant should clearly state the reason for early publication. Requests for early publication do not have to pay fees or charges.
Step 6: Substantive examination of the application
- Substantive examination: no more than eighteen months from the date of publication of the application if the request for substantive examination is filed before the date of publication of the application, or from the date of receipt of the request for substantive examination if the request is filed after application publication date.
- At the end of the substantive examination, the NOIP will issue a Notice of intention to grant a patent for invention. Or notice of refusal to grant patent protection and reasons.
Step 7: Pay the protection title fee
After receiving the notice of intention to grant a protection title, the applicant shall pay the granting fee.
Step 8: Granting Patent Protection Title
After the title fee is paid within two to three months from the date of payment of the fee for the grant of a title, the NOIP will issue a patent protection title.
Step 9: Pay the annual patent maintenance fee
- An invention patent is valid from the date of grant and lasts until the end of 20 years from the filing date/international filing date. The protection effect should be maintained every year.
Clients who want to register a patent in Vietnam, or register a patent abroad, please contact Viet An Law for the most professional support!