After filing a patent application, many subjects need to split the application to divide the protected technical solutions for certain purposes. To carry out the application splitting procedure according to the law, customers need to be knowledgeable and understand the application splitting procedure so as not to encounter any problems when carrying out the procedure. To assist customers with this procedure, in the article below, Viet An Law Firm will provide content related to the procedure for splitting patent application in Vietnam.
Legal basis
Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022;
Decree 65/2023/ND-CP detailing several articles and measures to enforce intellectual property laws on industrial property, protection of industrial property rights, rights to plant varieties, and state management on intellectual property;
Circular 263/2016/TT-BTC regulates the collection rates, the regime of collection, payment, management, and use of industrial property fees and charges.
General understanding of splitting patent application in Vietnam
Concept of splitting patent applications
Inventions are one of the protected subjects of current intellectual property law. According to intellectual property law, an invention is a technical solution in the form of a product or process to solve a specific problem determined by the application of natural laws. To establish their rights to an invention, the subject can submit a patent application to the National Office of Intellectual Property for legal protection.
Splitting a patent application is one of the procedures in which the subject from the original application, the application owner, actively separates or at the request of the National Office of Intellectual Property, the application will separate one or several technical solutions in the patent application into one or more new applications, called split applications.
Current legal regulations on splitting patent application in Vietnam
Deadline for splitting of applications
Application splitting is carried out at the time prescribed by law. Specifically, the applicant can only request a splitting of application:
Before the National Office of Intellectual Property issues a decision to refuse to accept the application (formality examination);
Before the National Office of Intellectual Property issues a decision to grant or refuse to grant a protection title (substantive examination).
Application splitting is carried out proactively or at the request of the National Office of Intellectual Property.
Content of splitting applications
The content of the splitting application must only be related to the splitting of one or several technical solutions in the patent application. This is the content that determines the scope of protection of a patent, so splitting a patent application is mainly to divide protected technical solutions to avoid duplication or enhance protected measures applied to each separate process/product part of the original invention.
Form of splitting applications
The original application (after being split) continues to be processed according to the application processing procedure or according to the application amendment procedure.
The splitting application carries a new application number and is given the filing date of the original application or the priority date(s) of the original application (if any).
Fees and charges: pay the filing fee and all fees and charges for each split application but do not have to pay the fee for examining the request for priority rights (except in the case of splitting an industrial design application due to lack of uniformity). The procedures for splitting an application are carried out independently of the original application (in addition to the procedures that have been carried out in the original application without having to re-do it in the split application), including formality examination, and continue to be processed under procedures that have not been completed for the original application.
The fee for filing a splitting application according to the provisions of Circular 263/2016/TT-BTC is 150,000 VND/application.
Publication of splitting application
The split application must be re-published and the applicant must pay a publication fee if the split application is made after the National Office of Intellectual Property has decided to accept the original application as valid.
Content of publication: name and nationality of the inventor; information related to the valid application to be split, the original application number of the split/converted application; patent abstract; featured drawing with summary (if any); date of request for content examination (if any); date of request for early announcement (if any); international patent classification; and other information (if any).
Procedures for splitting patent application in Vietnam
Documents for conducting procedures for splitting patent applications
Customers submit a patent application to carry out procedures that require preparing documents, including:
Patent registration declaration according to Appendix I, Decree 65/2023/ND-CP, on the split trademark registration declaration, must specifically state the application number and filing date of the original application;
Explanation of the subject matter requested for protection and the content of changes compared to the original application when filing a split application;
Power of attorney (if the application is filed through an Industrial Property Representation such as Viet An Law);
Copy of fee payment voucher (in case of payment of fees via postal service or direct payment to the National Office of Intellectual Property’s bank account).
Procedure for splitting patent application in Vietnam
Step 1: Apply to splitting of application
Applicants may submit their application in person or by mail to one of the following locations:
National Office of Intellectual Property, address: 386 Nguyen Trai, Thanh Xuan district, Hanoi city;
Representative office of the National Office of Intellectual Property in Ho Chi Minh City, address: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City;
Representative office of the Department of Intellectual Property in Da Nang City, address: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang City.
It is noted that with the form of submitting an amendment request by post, the applicant needs to complete the fee via the postal service, then photocopy the money transfer receipt, and attach it to the application.
Step 2: Processing documents
In case the application has no errors, the National Office of Intellectual Property shall issue a notice recording the amendment and publish it in the Industrial Property Official Gazette. In case of omissions or invalidity, the National Office of Intellectual Property shall issue a notice of intention to refuse to record the amendments, if the requester does not correct or supplement the omissions, or the correction does not meet the requirements or does not exist. If there are objections or unwarranted objections, the National Office of Intellectual Property shall issue a notice of refusal to amend the application.
The processing time for splitting an application is 01 month from the date of receipt of the application. The split application will have a new application number and be re-published if the split application is carried out after there has been a notice of valid application acceptance for the original application. The original application will continue to be processed according to the original procedure.
What should applicants keep in mind when splitting a patent application?
Clients need to note a few things when conducting the splitting procedure according to current law:
The split patent application will carry the new application number but still retain the filing date and priority date of the original application (split application);
For each split application, the application owner must pay fees and charges for procedures independent of the original application;
If the application is divided after the National Office of Intellectual Property has issued a notice of acceptance of the original application, the divided application must be re-published and the applicant must pay the application publication fee.
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