Invention is an object of industrial property rights. According to the provisions of the Intellectual Property Law, an invention is protected in the form of a patent if it meets the following conditions: is new, has a creative level; capable of industrial application. However, before being granted a patent, customers need to submit a patent application and go through examination stages from the Intellectual Property Office. So what are the stages of patent application examination?
- Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019,
- Decree No. 65/2023/ND-CP detailing a number of articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and management state on intellectual property.
- Circular No. 16/2016/TT-BKHCN amending and supplementing a number of articles of Circular No. 01/2007/TT-BKHCN detailing and guiding the implementation of a number of articles of the Intellectual Property Law on the property industry.
What is a patent?
A patent 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 patent or a utility solution patent.
How to register a patent?
Patent registration can be done in one of the following forms:
- Submit an application directly to the National Office of Intellectual Property;
- Register through the Intellectual Property Representative Organization. This is a mandatory method for patent applicants with foreign nationality. For patent applicants with Vietnamese nationality, filing through an Intellectual Property Representative Organization such as Viet An Law Firm is also encouraged. Because patent registration dossiers are very specialized and require specialized intellectual property lawyers to provide specific guidance, and advice and to be registered as quickly as possible, gaining priority.
Stages of examination for patent registration in Vietnam
Stage 1: Formality examination
The formality examination stage is checking compliance with formal regulations for an application, thereby drawing a conclusion that the application is valid or invalid.
Normally, the formality examination time is 1 month from the date of filing the patent application.
During this period, the National Office of Intellectual Property will check compliance with formal regulations for the application:
- Check whether the documents included in the application satisfy the provisions of the Intellectual Property Law and documents guiding its implementation;
- Check whether the documents included in the application are submitted within the time limit prescribed by the Intellectual Property Law and documents guiding its implementation;
- Preliminary check of the content of documents included in the application;
- Check to see whether the applicant has paid fees and charges and whether the amount of fees and charges is in accordance with the provisions of the Intellectual Property Law and documents guiding its implementation.
For valid applications:
- A registration application accepted as valid is published in the Industrial Property Official Gazette within the 19th month from the priority date or the filing date if the application does not have a priority date, or within 02 months from the date of thr valid application, whichever is later.
- Invention registration applications requiring early publication shall 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 content of the publication of the patent application is information related to the valid application recorded in the notice of acceptance of the valid application, the invention summary, and drawings (if any).
For invalid applications:
- In case the application is invalid, the National Office of Intellectual Property shall issue a notice of intention to refuse to accept the application, clearly stating the reasons and shortcomings that cause the application to be refused acceptance and setting a time limit of 2 months to accept the application. The applicant has comments or corrects errors. If the applicant does not correct the errors/corrects the errors unsatisfactorily/has no objections/unreasonable objections, the National Office of Intellectual Property will issue a decision to refuse to accept the application.
- If within the time limit specified above, there is no request for substantive examination of the application, the patent application will be considered withdrawn at the end of that time limit.
Stage 2: Substantive examination
Substantive examination of an application is to evaluate the protection ability of the technical solution stated in the application according to the patent protection conditions (novelty, creative level, and industrial applicability) at the same time. Evaluate each point mentioned in the scope (protection claim) in turn.
Normally, the time for substantive examination of a patent application is 18 months from the date of receipt of the request for substantive examination (if the request is filed after the date of publication of the application) or from the date of publication of the application (if that request is filed before the date of publication of the application)
Regarding substantive examination requirements:
- The National Office of Intellectual Property only conducts a substantive examination of a patent application when there is a request for substantive examination by the applicant or any third party and the person requesting the examination must pay a search fee. Evaluate content according to regulations. If there is no request for substantive examination, the patent application is considered withdrawn.
- The request for examination of the content of a patent application must be expressed in writing according to form No. 05 specified in Appendix 1 of Decree No. 65/2023/ND-CP or expressed in the declaration of the patent application. The deadline for submitting a request for examination of the content of a patent registration is 42 months from the filing date.
- For an invention registration application requesting a utility solution patent, the time limit for requesting substantive examination of the application is 36 months from the filing date. The time limit for submitting a request for substantive examination can be extended, but not more than 6 months if there is a legitimate reason.
General examination for all industrial property rights:
- Evaluate the compatibility of the subject matter stated in the application with the type of protection title requested to be granted;
- Evaluate the object according to each protection condition;
- Check out the first-to-file rule.
- The evaluation according to the protection conditions is conducted for each subject in turn (if the application includes many subjects while still ensuring consistency).
For a patent application, the evaluation is conducted in turn according to each point stated in the scope of protection (claim). The patent application must meet the following conditions:
- Have a creative nature;
- Industrial applicability.
The substantive examination of an invention is completed when the subject matter has been evaluated with all protection conditions and there are sufficient grounds to conclude that the subject matter does not meet or meets the protection conditions, specifically could be:
- Found reasons to conclude that the subject matter does not meet one/some/all of the protection conditions;
- Or there is no reason to conclude that the subject matter does not meet at least one protection condition.
- Before announcing whether an application is protected or not, the National Office of Intellectual Property is responsible for reviewing the results of the substantive examination of the application on the basis of checking related applications with earlier priority dates approved by the National Office of Intellectual Property received after the start date of substantive examination of the application.
If you have any difficulties or problems during the stages of examination for patent registration in Vietnam, please contact Viet An Law Firm for the most effective advice and support!