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We would like to provide some Q&As regarding patent matters in Vietnam as follows.
Question 1. What is an invention/utility solution (hereafter, collectively called “invention”)?
Under Article 4.12 of the Law on Intellectual Property (IP Law), an invention is defined as a technical solution in the form of a product or a process for solving a determined problem by the application of laws of nature.
An invention must satisfy the requirements of:
– Absolute novelty
– Inventive step, and
– Industrial applicability.
A utility solution (utility model) is the same as an invention (during the prosecution, a patent application for invention may be converted into a patent application for utility solution and vice versa), except:
i. A utility solution must satisfy the requirements of:
– Absolute novelty
– Not being ordinary knowledge. This requirement is not clarified in the legal documents. The Vietnam Guidelines for patent examination provide only an example of a solution that would be considered ordinary knowledge: “The subject-matter claimed is a method of protecting a steel structure by covering the surface of the structure with anti-rust paint.” Though this requirement is inherently subjective, the implication is that the solution must be “unusual” to some degree, and not something that can be easily observed, and
– Industrial applicability.
ii. The period of protection is 20 years for patents for invention from the filing date, while it is 10 years for patents for utility solution from the filing date.
iii. The deadline for filing a request for examination in a patent application for invention is 42 months from the earliest priority date, while it is 36 months for a patent application for utility solution.
Question 2. Can a foreign granted patent take effect in Vietnam?
Only patents granted by the Intellectual Property Office of Vietnam (IPVN) can be valid in Vietnam. Vietnam does not have mechanisms like a validation or re-registration of a foreign granted patent for the same to take effect in Vietnam.
Question 3. Who has the right to file a patent application (who is the applicant)?
Under Article 86 of the IP Law, in general, the following organizations and individuals shall have the right to file the patent application:
i. Inventors who create the invention by their own labor and expenses; or
ii. Organizations or individuals who invest funds and facilities to the inventors in the form of a job assignment or job hiring unless otherwise agreed by the parties.
Question 4. Who is the prescribed filer?
Under Article 89 of the IP Law, it is required for foreign individuals not permanently residing in Vietnam, and foreign organizations and individuals without production or business establishments in Vietnam to file their patent applications through Vietnamese IP representatives.
For the rest, the filer can be the applicant.
Question 5. What are the required documents/information for filing a patent application?
1. For national phase applications of PCT applications
1.i. Specification
– A Vietnamese translation of the specification must be filed at the time of filing the application. No extension is possible.
– If there are amendments under PCT Article 19 or 34, Vietnamese translations of the amendments are required at the time of filing the application. And, when filing the application, the applicant has to indicate whether the applicant wishes the IPVN to examine the original specification or amended specification.
1.ii. Name, address and nationality of inventor, and name and address of applicant
– These data must be designated in an application form which must be filed at the time of filing the application.
– This information is reviewed quite strictly by examiners. For example, a small discrepancy of an address among the application documents may result in an office action. It is likely quite complex to deal with this issue in the national phase. Therefore, it is recommended to make requests under PCT Rule 92bis to avoid such discrepancies.
1.iii. Power of attorney (POA)
The IPVN requires an original POA or a copy of a general POA already filed. The non-extendable deadline for submitting the original POA or the copy is 34 months from the earliest priority date and notarization is not required.
2. For Paris Convention applications
2.i. Specification
A Vietnamese specification must be filed at the time of filing the application. There is no mechanism to file a specification in a foreign language first, and then, submit the Vietnamese specification.
2.ii. International Patent Classification (IPC) symbols and figures accompanying the abstract
– IPC symbols of the invention are required to be indicated in an application form which must be filed at the time of filing the application. If no symbol is indicated in the application form or incorrect symbols are indicated, the IPVN will classify the invention and charge a fee.
– One or more figures to accompany the abstract part of the application are often required to be indicated at the time of filing the application. The figures should be the ones which characterize the invention. A fee for figures from the second will be charged.
2.iii. Name, address and nationality of inventor; name and address of applicant; and filing date, receiving state and number of priority application
These data must be designated in the application form.
2.iv. POA
The IPVN requires an original POA or a copy of a general POA already filed. The non-extendable deadline for submitting the original POA or the copy is one month from the filing date and notarization is not required.
2.v. Priority document
– The non-extendable deadline for submitting the priority document is three months from the filing date.
– The IPVN also requires a Vietnamese translation of its cover sheets to determine the applicant of the priority application.
– If the applicant of the priority application is not the applicant of the Vietnamese application, it is required to submit an additional document like an assignment to prove that the applicant of the Vietnamese application has the right to claim the priority. The assignment may be an original or notarized/certified copy.
Question 6. What are the deadlines relating to a patent application? Is there any possible extension of the deadlines and if yes, how to obtain the extension?
1. Filing deadline
– Vietnamese national phase applications of PCT applications: the filing deadline is 31 months from the earliest priority date. No extension is possible.
– Paris Convention applications: The filing deadline is, as prescribed in the Paris convention, 12 months from the priority date.
2. Deadline for submitting POA and priority document
– Vietnamese national phase applications of PCT applications: the non-extendable deadline for submitting the original POA is 34 months from the earliest priority date. Priority document is not required.
– Paris Convention applications: the non-extendable deadline for submitting the original POA is one month from the filing date and the non-extendable deadline for submitting the priority document is three months from the filing date. A Digital Access Service (DAS) is not available in Vietnam.
3. Deadline for requesting examination
– For invention applications, a request for substantive examination together with examination fees must be lodged within 42 months from the earliest priority date.
– For utility solution applications, a request for substantive examination together with examination fees must be lodged within 36 months from the earliest priority date.
4. Other deadlines
– The deadline for responding to an office action in the formalities examination stage is two months and extendable once for two months.
– The deadline for responding to an office action in the substantive examination stage is three months and extendable once for three months.
– Voluntary amendments and divisional applications can be filed at any time during the prosecution.
– The deadline for paying granting fees and first annuity after receiving an intention of grant is three months and extendable once for three months.
5. Excuse: Circular No. 16/2016/TT-BKHCN specifies a force majeure event and objective obstacles which are defined as follows.
“A force majeure event is an event which occurs in an objective and unforeseeable manner (for example, natural calamity, enemy-inflicted destruction, etc.) and cannot be surmounted despite all necessary and possible measures having been taken. Objective obstacles are obstacles caused by objective circumstances (for example, sickness, going on a business trip, learning at a distant place, etc.) that make a person with rights or obligations unable to know that his/her legal rights or interests have been violated, or unable to carry out his/her legal rights or obligations.”
A late action can be excused if the applicant submits a petition and proper evidence demonstrating said events and the IPVN approves, after consideration. (For requesting examination, the deadline can be extended for further 6 months only in said cases).
Question 7. How much does it cost for filing a patent application?
The cost for filing a patent application in Vietnam depends on several factors, including:
i. Number of independent claims
ii. Number of pages of specification
iii. Number of priorities claimed
iv. Number of drawings accompanying abstract
Specifically, in accordance with Circular No. 263/2016/TT-BTC issued by the Ministry of Finance (MOF), detailed official fees for filing a patent application are as follows:
1. Filing application: 150,000 VND
2. Formality examination:
– 180,000 VND per independent claim
– 8,000 VND per page from the seventh page of the specification
3. Convention priority claim: 600,000 VND per priority
4. Publication of application:
– for bibliographic data, abstract and one drawing: 120,000 VND
– for each further drawing: 60,000 VND
5. Patent classification (if the applicant does not self-classify): 100,000 VND per subclass
6. Search and substantive examination (if requested at filing date)
– 1,320,000 VND per independent claim
– 32,000 VND per page from the seventh page of the specification.
Question 8. What are the subject matters excluded from patent protection?
Under Article 59 of the IP Law, the following subject-matters shall be excluded from patent protection:
1. Discoveries, scientific theories, mathematical methods;
2. Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;
3. Presentations of information;
4. Solutions of aesthetical characteristics only;
5. Plant varieties, animal breeds;
6. Processes for producing plant or animal which are principally in the nature of biology and other than microbiological processes; and
7. Methods of treatment, diagnosis and prevention of diseases for human and animal.
Question 9. What are the novelty, inventive step and grace period?
Under Article 60 of the IP Law, the requirement of novelty of invention:
(i) An invention is considered novel if it has not yet publicly been disclosed in the forms of use or written description or any other form, inside or outside the country, prior to the filing date of the patent application or prior to the priority date in case the application benefits a priority date;
(ii) An invention is considered as not yet publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret.
Under Article 61 of the IP Law, the requirement of inventive step:
An invention is considered as involving an inventive step if, based on the technical solutions already publicly disclosed in the forms of use or written description or any other form inside or outside the country, prior to the filing date of the patent application or prior to the priority date in case the application benefits a priority date, the invention is an inventive progress and cannot be easily created by a person skilled in the art.
Under Article 60.3 of the IP Law:
A grace period of 12 months is available. Briefly, a public disclosure made by the applicant or by a person who directly or indirectly obtained information on the invention from the applicant would not be considered when assessing the novelty and inventive step.
Question 10. What is the time frame of patent examination?
Patent applications will be examined as to formalities, then published, and then substantively examined as described below.
1. Vietnamese national phase applications of PCT applications
– The formalities examination results will be available within few months from the first date of the 32nd month from the priority date, if the applicant does not request to be early processed.
– The application will be published within two months after it passes the formalities examination.
– In principle, the substantive examination results will be available within 18 months from either (i) the date of receipt of the request for substantive examination, if the request is filed after the publication date, or (ii) the publication date, if the request is lodged before the publication date.
2. Paris convention applications
– The formalities examination results will be available within few months.
– The application will be published in the 19th month from the priority date, if the applicant does not request an early publication.
– In principle, the substantive examination results will be available within 18 months from either (i) the date of receipt of the request for substantive examination, if the request is filed after the publication date, or (ii) the publication date, if the request is lodged before the publication date.
Question 11. What is the “first to file” principle/double patenting in Vietnam?
The “first to file” principle is specified in Article 90 of the IP Law. Accordingly, in case there are multiple patent applications for identical or equivalent inventions, only one patent shall be granted for the application with the earliest priority or filing date among the applications. In case of the same priority or filing date, still only one patent is granted, and therefore, the applicants will have to discuss to reach an agreement on the patent.
The Vietnam Guidelines for patent examination mention this issue:
i. The scope of protection of an invention must be determined based on the terms and concepts in the claims, and the description and drawings are used for explaining the scope of protection.
b. To determine whether two inventions are identical, the examiners must compare the two sets of claims to each other and must not compare a set of claims with the whole disclosure of the other application.
c. If the scope of protection of a claim is identical to the scope of protection of a claim of the other application, the inventions in accordance with the two claims will be considered to be identical inventions.
d. If the two descriptions are the same, but the scopes of protection of the two sets of claims are different, the two inventions will not be considered to be identical. For example, both of two descriptions disclose the same product and the same process for producing the product, but one set of claims is directed to the product, and the other set of claims is directed to the process, then the two inventions will be considered to be different from each other.
e. If the scopes of protection of the two claims overlap partially, the two inventions will not be considered identical. For example, a claim of an application subsequently filed recites a continuous number range, if the range is not identical to a number range recited in a claim of the other application, the two inventions will not be considered identical.
Question 12. What is the requirement of unity of invention?
The unity of an invention is defined under Article 101 of the IP Law and Point 23.3 of Circular No. 01/2007/TT-BKHCN, in which a patent application will satisfy this requirement if it contains one invention only or a group of inventions so technically linked as to form a single general inventive concept. Specifically,
a) To claim only one subject-matter, or
b) To claim the group of subject-matters, in which:
i. one subject-matter is used for creating (producing, manufacturing or preparing) the other subject-matter;
ii. one subject-matter is used for accomplishing the other subject-matter;
iii. one subject-matter is used for utilizing the other subject-matter;
iv. subject matters are of the same type and have the same function to secure the achievement of the same result.
Overall, this requirement is similar to the requirement of the Patent Cooperation Treaty as well as the European Patent Office.
Question 13. What are the requirements for recordals of change or assignment on a pending application?
Under Article 115 of the IP Law, as long as the application is pending (no decision on refusal or grant has been issued), the applicant may request the recording of change or assignment.
The supporting documents would be a document evidencing the change or assignment.
– For a change, it is required to submit a document evidencing the change like a declaration of the change. Notarization is required for such a declaration.
– For an assignment, it is required to submit the assignment document that must contain the following main contents: (i) Full names and addresses of the assignor and of the assignee and (ii) Matter to be assigned (like a patent application number).
Such assignment document must be an original without notarization or a certified/notarized copy thereof. The IPVN strictly examines such documents. For example, if the document has more than one page, in addition to the signatures at the last page, each of the other pages must also be signed at one of its corners or the document would have to contain marks showing that its pages belong to one document like a notary seal overlapping on all of the pages.
For a patent application with multiple applicants, a written consent of the co-applicants for the recordal of assignment is also required.
Question 14. When a third party can file an opposition?
Under Article 112 of the IP Law, from the publication date of an application in the Official Industrial Property Gazette (Gazette) to the granting date, any third party may give written opinions to the IPVN regarding the granting or not of a patent.
Although the IPVN will take actions like forwarding the opinions to the applicant for comments, etc., such documents are to be consulted by the IPVN during the examination of the patent application, a response to the third party is not required. Therefore, this is a filing of written opinions and is not a true opposition.
Question 15. What should we do in case of receiving a decision on refusal?
After an office action, if the IPVN issues a decision on refusal, the applicant may take the following actions.
Step 1: The applicant may proceed with:
(i) Filing a first instance appeal to the IPVN within 90 days from the receiving date or the aware date of the decision; or
(ii) Bringing a lawsuit to the competent administrative court within one year from the receiving date or the aware date of the decision.
Step 2: In case the statutory period for first instance appeal is over and no decision is issued by the IPVN, or the appellant does not agree with the IPVN’s decision on settlement of the first instance appeal, the appellant may proceed with:
(i) Filing a second instance appeal to the IPVN’s supervising authority, the Ministry of Science and Technology (MOST), within 30 days either from the ending of the statutory period for the first instance appeal if no decision has been issued, or from the receiving date or the aware date of the decision on the first appeal; or
(ii) Bringing a lawsuit to the competent administrative court within one year either from the ending of the statutory period for settling the first instance appeal if no decision has been issued, or from the receiving date or the aware date of the decision on settlement of the first instance appeal.
Step 3: In case the statutory period for the second instance appeal is over and no decision is issued by the MOST, or the appellant does not agree with the MOST’s decision on settlement of the second instance appeal, the appellant can bring a lawsuit against the MOST’s decision to the competent administrative court within one year either from the ending of the statutory period for settling the second instance appeal if no decision has been issued, or from the receiving date or the aware date of the decision on settlement of the second instance appeal.
In practice, said periods for settling the appeal or the lawsuit are much prolonged.
Question 16. What are patent rights? What are exemptions from patent infringement?
A patent is valid from the granting date.
Before the grant, a provisional right is available under Article 131 of the IP Law. Briefly, after the application is published, the applicant can inform a third party who has used the invention for commercial purposes that the applicant already filed the application for the invention with the particulars: the filing date and the publication date of the application in the Gazette. If the third party continues to use, when the patent is granted, then the patent owner has the right to request compensation equivalent to the amount for licensing the right of use within the scope and period of time of said use.
Under Article 123 of the IP Law, a proprietor has the following rights:
i. To use or permit others to use the invention;
ii. To prohibit others from using the invention;
iii. To determine the invention (assignment for instance).
Under Article 124 of the IP Law, the use of an invention comprises the following acts:
i. Production of the protected product;
ii. Application of the protected process;
iii. Exploitation of the protected product or the product manufactured by the protected process;
iv. Circulation, advertisement, offer, storage for circulation of the products in (iii);
v. Importation of the products in (iii).
Under Article 125 of the IP Law, some exemptions are provided:
i. The use of the invention for personal needs or for non-commercial purposes, or for purposes of evaluation, analysis, research, teaching, testing, trial production or information collection for getting permission for production, importation or circulation of products;
ii. The circulation, importation, exploitation of products which were lawfully put on the market including overseas markets;
iii. The use of the invention only for the purpose of maintaining the operation of foreign means of transport in transit or temporarily staying in the territory of Vietnam;
iv. The use of the invention by persons with a prior use right;
v. The use of the invention by an entity under a compulsory license.
Question 17. What actions are needed to maintain the rights?
Annuity payments are required to maintain the validity. The first annuity is to be paid at the time of granting the patent and due dates for the second and subsequent annuities are the anniversary of the granting date of the patent. Within six months prior to the due date to pay an annuity, the patent owner must submit a request to pay the annuity. In case an annuity payment is not made by the due date, the patent will lapse on the due date. However, a six-month grace period is available with a surcharge of 10% of the fee for each month late.
In case an annuity is paid through an IP agent, the required document is a POA. The IPVN requires an original POA or a copy of a general POA already filed and notarization is not required. In addition, for a patent with multiple owners, only one POA of one of the owners is required for paying the annuity.
Question 18. What are the requirements for recordals of change, assignment and license on a granted patent?
These recordals may be requested with the IPVN.
– For a change, under Article 97 of the IP Law, a patent owner may request the IPVN to record a change. It is required to submit a document evidencing the change like a declaration of an owner name change. Notarization is required for such a declaration.
– An assignment takes effect only if it is already recorded at the IPVN, under Article 140 of the IP Law, the assignment must contain the following main contents:
i. Full names and addresses of the assignor and of the assignee;
ii. Matter to be assigned (like a patent number);
iii. Assignment price; and
iv. Rights and obligations of the assignor and the assignee.
– If a license is not recorded at the IPVN, based on the license, one party can take action against the other party, but cannot take action against a third party – the licensee does not have the right to prevent a third party from an infringement for instance. Under Article 144 of the IP Law, the license contract must contain the following main contents:
i. Full names and addresses of the licensor and of the licensee;
ii. Matter to be licensed (like a patent number);
iii. License type (exclusive or non-exclusive);
iv. The scope of the license, including a limitation to the use right and a territorial limitation;
v. Contract term;
vi. The price of licensing the use right; and
vii. Rights and obligations of the licensor and of the licensee.
Such assignment/license must be an original without notarization or a certified/notarized copy thereof. The IPVN strictly examines such documents. For example, if the document has more than one page, in addition to the signatures at the last page, each of the other pages must also be signed at one of its corners or the document would have to contain marks showing that its pages belong to one document like a notary seal overlapping on all of the pages.
For a patent with multiple owners, a written consent of the co-owners for the recordals of assignment or license is also required.
Question 19. What is the termination of the validity of a granted patent?
Under Article 95 of the IP Law, the validity of a patent shall be terminated in the following cases:
i. Annuity is not paid: The validity of the patent will terminate on the annuity due date. Nevertheless, a six-month grace period is available.
ii. The patent owner declares the abandonment of the patent: The validity will be terminated from the filing date of the declaration.
iii. The patent owner no longer exists: A third party may request the IPVN to terminate the validity.
Question 20. What are the grounds for the invalidation of a patent?
A patent could be invalidated at any time during its protection term. The grounds for the invalidation, under Article 96 of the IP Law, are:
i. The applicant did not have the right to file the patent application; and/or
ii. The invention did not meet the requirements of patentability (novelty, inventive step and industrial applicability) at the time of granting the patent.
The patent could be invalidated partially or completely. The invalidation procedure is:
– The third party files a request for invalidation to the IPVN;
– Within one month from the filing date of the request, the IPVN shall send a notice of the request to the patent owner and set a time limit of two months from the date of the notice for the patent owner to respond;
– The IPVN shall issue a decision to invalid a part or whole of the validity of the patent or a notice on refusal of the request within three months from the expiry date of said two-month time if no response is filed, or from the filing date of the response. The time limit for the IPVN to issue the decision may be extended for three additional months at maximum if the patent owner has opinions different from the third party’s opinions.
– The decision shall be recorded in the National Register of Industrial Property and published in the Gazette within two months from its issuance date.
Although the statutory timeline in the procedure is short as mentioned above; in practice, the invalidation procedure in Vietnam is much prolonged somewhat because of unspecific regulations like “time for performing other relevant proceedings necessary for solving the request is not counted for said time”.
Question 21. Is it possible to amend the claims of a patent?
Under Article 97 of the IP Law, a patent owner can request the IPVN to narrow the scope of protection of the granted patent. In such case, the application on which the patent was granted will be substantively re-examined.
Question 22. Is a post-grant opposition available?
A post-grant opposition is not permissible in Vietnam. Instead, in addition to the invalidation procedure, if a third party can prove that their rights and interests are directly affected by the decision to grant a patent, the party may file an appeal against that decision. The time limit for filing the appeal will be 90 days from the date of awareness of the decision. Nevertheless, such decisions are not published, even are not sent to the patent owners, and therefore, the action is considered to be not effective in practice.
Question 23. What are the available remedies for dealing with a patent infringement?
Under Article 199 of the IP Law, the available remedies for dealing with a patent infringement are civil, administrative or criminal ones, depending upon the nature and seriousness of the infringement.
However, after amendments, no criminal remedy concerning patent infringements is available in the current Criminal Code. Therefore, there are two remedies for dealing with a patent infringement within Vietnamese jurisdiction, administrative and civil remedies.
Question 24. Are there specialized courts for patent infringements?
Although patent infringements have started being widespread and popular in Vietnam, not many cases have been brought to courts so far.
Vietnam does not organize a separate and professional court system for handling patent infringements. The court of jurisdiction over patent infringement shall be the administrative tribunal or civil tribunal in the People’s Court of the city or province where the administrative organization or defendant involved is located, respectively.
By Nguyen Duc Thang and Do Tuyet Nhung
INVESTIP IP LAW FIRM
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