Termination validity of a patent in Vietnam

Patents are one of the “vital” weapons for intellectual property rights holders to gain a unique position in the market for patent-protected products; give the owner the exclusive right to commercialize the product, the right to license the invention to a third party to recover investment capital, and the right to prevent competitors from infringing on the patent. However, due to many subjective and objective reasons during use and operation, the certificate’s validity is terminated. In the article below, Viet An Law will answer questions related to the termination validity of a patent in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree 65/2023/ND-CP provides detailed regulations on industrial property, protection of industrial property rights, and management of plant varieties.

Some related concepts

What is a patent?

Vietnam’s Intellectual Property Law does not define an “invention patent” but only stipulates that inventions are protected in the form of patents if they meet the legal conditions. However, in the simplest terms, a patent is a certificate issued by a competent state agency to the inventor, which includes the exclusive rights that the inventor enjoys for a certain period of time.

• A patent is an exclusive right granted to protect an invention. A patent gives the owner the exclusive right to prohibit others from commercially exploiting the invention for a specified period of time in exchange for disclosing the patent information to the public.
• An invention patent is valid from the date of issue until the end of 20 years from the filing date/international filing date. Protection needs to be maintained annually.

What is patent termination?

Termination of validity of a patent means that the owner of the patent has the right to register and the protected object meets all protection conditions, the patent has been granted but for some reason cannot be maintained.

Pursuant to Article 95 of the Intellectual Property Law, it is stipulated that the patent protection certificate shall be fully or partially invalidated in the following cases:

• The owner of the protection title does not pay fees or charges to maintain its validity or extend its validity according to regulations;
• The owner of the protection certificate declares to give up industrial property rights;
• The owner of the protection certificate no longer exists.

The feature of patents

Patents must be granted by the state

In Vietnam, the agency competent to grant patents is the National Office of Intellectual Property. This is a patent registration certificate issued by a state agency that records the rights of the author and patent owner to his or her invention. Based on that, the inventor and invention owner will have personal rights and property rights according to the provisions of the law.

A patent records the patent owner’s right to use an invention for a certain period of time

Depending on the law of each country, the validity period of a Patent may vary, usually twenty years from the time of filing the request. The reason for this regulation is that inventions exist and gradually decrease in value as humanity progresses. The owner of a patent has the right to exploit the invention for a reasonable period of time sufficient to recoup the costs of creating the invention. After the protection term expires, the invention belongs to society to create conditions for new creations to be born.

Cases of termination validity of a patent in Vietnam

The patent owner does not pay the fee to maintain the validity or extend the validity according to regulations

Pursuant to Clause 1, Article 30 of the Intellectual Property Law as amended and supplemented in 2022, it is stipulated that in case the owner of a patent does not pay fees or charges to maintain validity within the prescribed period, at the end of the period. At that time, the validity of the protection title automatically terminates from the beginning of the first year of validity, and fees and charges to maintain the validity are not paid.

Components of the dossier to maintain the validity of a patent include:

• Declaration application according to Form No. 07 in Appendix II of Decree 65/2023/ND-CP.
• Valid authorization document (in case the request is submitted through a representative).
• Copy of fee payment voucher (in case of payment of fees and charges via postal service or direct payment to the account of the state management agency on industrial property rights).
• Requests to maintain the validity of the protection title and examination fees for the request to maintain validity, fees for maintaining the validity and use of the protection title, registration fees, and publication fees must be paid to the management agency of industrial property rights no later than 06 months before the end of the validity period.

Thus, in order to maintain the validity of a patent, within 6 months before the end of the validity period, the protection title holder must submit a request to maintain validity. The application to maintain validity can be submitted lately but no more than 06 months from the end of the validity period and the protection title owner must pay an additional fee for maintaining the validity late.

The owner of the protection title declares to give up industrial property rights

A patent is invalidated when the patent owner declares to give up industrial property rights. The National Office of Intellectual Property will consider and issue a decision to terminate the validity of the title from the date of receiving the declaration of the protection title owner.

Documents required to terminate the validity of a diploma include:

• Declaration (according to form 08 Appendix II issued with Decree No. 65/2023/ND-CP);
• Document explaining the reason for requesting termination;
• Power of attorney (in case the request is submitted through a representative);
• Copy of proof of payment of fees and charges according to regulations;
• Other documents (if necessary).

Examination duration: 10 days from the date of application submission.

Evaluation results:

• After 10 days of submitting the application, if the application is valid, the National Office of Intellectual Property will issue a decision to terminate its validity and publish it in the Industrial Property Official Gazette.
• In case the application is invalid, the National Office of Intellectual Property will issue a notice refusing to terminate the validity of the certificate.

Pursuant to Clause 1, Article 32 of Decree No. 65/2023/ND-CP, organizations and individuals requesting termination of protection titles must pay the request fee, appraisal fee for termination request, and registration fee. and publication fees. In particular, according to the table of announcement of fees and charges of the National Office of Intellectual Property, including:

• Fee for the request to terminate the validity of the patent: 50,000 VND/application
• Fee for examination of request to terminate validity of diploma: 180,000 VND/patent
• Fee for announcing the Decision to terminate the validity of the patent: 120,000 VND/application
• Registration fee for Decision to terminate the validity of the patent: 120,000 VND/ patent

The owner of the protection title no longer exists or the owner of the patent is no longer doing business without a legal successor

Pursuant to Point c, Clause 1, Article 95 of the Intellectual Property Law amended and supplemented in 2022, the validity of the protection title is terminated from the date of issuance decision on terminating the validity of the protection title by the state management agency on industrial property rights when the patent owner no longer exists or the owner of the patent is no longer doing business without a legal successor.

Pursuant to Clause 2, Article 32 of Decree No. 65/2023/ND-CP regulating the composition of required documents:

• Declaration requesting termination (according to Form No. 08, Appendix II issued with Decree No. 65/2023/ND-CP) ;
• Evidence (if any);
• Authorization document to carry out procedures in case the application is submitted through a representative;
• An explanation of the reason for the request to terminate the validity of the patent (clearly stating the patent number, reason, legal basis, content of request for termination) and other relevant documents;
• Copy of fee and charge payment voucher (in case of payment of fees and charges via postal service or direct payment to the NOIP account).

Consequences of patent termination

The Intellectual Property Law regulates several cases that lead to the termination of a patent. Consequences of patent termination:

• The termination of patent ownership or the validity of the protection title is considered to have not arisen.
• The previous owner of the patent will no longer have the exclusive right to commercialize the product, no longer have the right to license the patent to a third party to recover investment capital, and no longer have the right to prevent competitors from infringing on patent rights.

Above is a detailed article on the termination validity of a patent in Vietnam. If you have any difficulties related to intellectual property law, please contact Viet An Law Firm for the most effective support!