The Ministry of Science and Technology (“MOST”) issued Circular 23/2023/TT-BKHCN (“Circular”) on 30 November 2023. Among other provisions, the Circular outlines detailed requirements for utilizing examination results of corresponding foreign patent applications to accelerate the examinations of Vietnamese applications. However, these provisions are not currently applicable. The details are as follows.
Conditions and Requirements for Using Foreign Examination Results
According to Article 16.9 of the Circular, applicants may file a request for using a foreign examination result for the examiner’s reference during the examination of the Vietnamese patent application. To do so, the following conditions must be met:
- The examination result is from a patent office included in a list of recognized patent offices by the MOST (see below).
- The application has not yet received a notification of examination results.
- At least one claim in the foreign examination result is considered patentable.
- The original or amended claims of the Vietnamese application must correspond to the patentable claims in the foreign examination result.
And, applicants are required to submit the following documents:
- A request form for using foreign examination result of a corresponding foreign patent application.
- A copy of the examination result; and, its translation if necessary.
- A copy of the allowed claims in the corresponding foreign patent application; and, its translation if necessary.
- Documents cited during the prosecution of the foreign application if necessary.
- An amended specification (conforming to the allowed claims), with an explanation/support for the amendment (if an amendment is made).
- Prescribed fees if applicable.
If these conditions and requirements are not met, the request will be deemed improper, and the Intellectual Property Office of Vietnam (IPVN) will issue a notification refusing the request. The application will then proceed under standard processing. Conversely, if the request fulfills these conditions and requirements, the IPVN will issue a notification of examination results within 12 months from the filing date of the request. However, if the application is amended during this 12-month period, resulting in non-compliance with one of these conditions, the application will be processed as if no request had been filed.
Recognized Foreign Patent Offices
As stated, the examination result must be from a patent office on a list of recognized offices by the MOST. Since this list has not yet been issued, the provisions are not yet in effect. Currently, in practice, the IPVN often relies on examination results from the EPO, USPTO, JPO, CNIPA, and KIPO. Although the official list is still pending, it is expected to include these patent offices. Once published, the list will provide a more formal basis, allowing applicants to take a proactive approach in filing their applications and accelerating the examination process, thereby helping to safeguard the rights of patent owners more efficiently and promptly.
By Nguyen Duc Thang and Ngo Khanh Linh
Patent Department
