The right to file a patent application ruled in a invalidation case

A Vietnamese patent was invalidated due to the fact that one of the inventors did not transfer the right to file the patent application to the applicant (the rest inventor). In Vietnamese Patent No. 21899, granted on Patent Application No. 1-2018-00393 filed 2018, Mr. Nguyen Van Chanh was recorded as the patent owner, with Mr. Nguyen Van Chanh and Mr. Nguyen Van Luong recorded as the two co-inventors. Accordingly, Nguyen Van Chanh is both the inventor and patent owner.

Nguyen Van Luong filed a request for invalidation of the patent with the Intellectual Property Office of Vietnam (IPVN), based on the ground that Nguyen Van Chanh (the recorded patent owner) did not have the right to file the application (one of the statutory grounds for patent invalidation). The IPVN informed Nguyen Van Chanh of the request and he filed arguments against the request.

The request and arguments showed that the two persons were friends and had discussions about the invention “360-degree rotating house in cistern”. However, the two documents told different stories about how the patent application was filed. Despite the difference, the IPVN referred to legal provisions to settle this case in Decision No. 3612w/QD-SHTT dated 24 February 2023 on the settlement of the request for invalidation.

Article 86.1 of the Law on Intellectual Property (effective at the time of granting the patent) states that the following organizations and individuals have the right to register inventions, industrial designs and layout designs:

(a) Inventors who have created inventions, industrial designs, layout designs by their own labor and at their own expense;

(b) Organizations, individuals who have supplied funds or material facilities to inventors in the form of job assignment, hiring, unless otherwise agreed by the parties involved.

Nguyen Van Chanh and Nguyen Van Luong were named as inventors in the patent. To show that they were inventors having the right to file the application:

– under Article 86.1(a) above, they needed to prove that the invention was created by their own labor and at their own expense, or

– under Article 86.1(b) above, they needed to prove that they held an agreement under this Article indicating that they had the right to file the application.

However, neither of the two inventors could prove this. As a result, the IPVN assumed that the two inventors shared the right to file. This resulted in the sole patent owner (one of the two inventors) needing to prove that the other inventor transferred the shared right to file the application to him. However, the inventor/patent owner failed to prove this. As a result, the IPVN concluded that the sole patent owner did not have the full right to file the application and the patent was invalidated accordingly.

By Nguyen Duc Thang and Dinh Thi Thuy Trang

Patent Department