Saturday, October 21, 2017
FAQs about Patent in Vietnam

The National Office of Intellectual Property of Vietnam (NOIP)is in charge of receiving and examining patent applications. The process for a patent applications begins with filing the patent application with NOIP and finishes with granting a patent, if the related invention is eligible for protection.

In order to obtain the patent right in Vietnam, you must file the application for granting a Patent (for Invention and for Utility solution separately), directly or by mail, to the National Office of Intellectual Property of Vietnam (NOIP) or its brand offices in Ho Chi Minh City or Da Nang.

Besides, foreign applicants can also obtain a patent right in Vietnam by filing an international application which designates or selects Vietnam through the PCT system. The applicant must carry out procedures for registration of an invention under the PCT’s provisions at NOIP within 31 months from the international filing date or from the priority date, if the priority right is claimed in the application.

Organizations, individuals of Vietnam, foreign individuals permanently residing in Vietnam and foreign organizations and individuals having a production or trading establishment in Vietnam may file applications for a patent either directly or through a lawful representative in Vietnam.

Foreign individuals not permanently residing in Vietnam, foreign organizations and individuals not having a production or trading establishment in Vietnam shall file applications for a patent through a lawful representative in Vietnam.

Vietnam adopts the first-to-file system, i.e. where two or more applications are filed by many different parties for registration of the same invention, the patent may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions for the grant of patent and having the same earliest priority or filing date, the patent may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement, all these applications shall be refused for the grant of a patent.

Accordingly, it is advisable to file an application for a patent as soon as possible after the invention and not to make the invention public before filing the application.

A patent application filed with the NOIP shall be subject to formal examination for evaluating its validity.

The time limit for formality examination of an application is one (1) month from the filing date. In the course of formality examination, if the applicant corrects or supplements documents on his/her own initiative or upon the request of the NOIP, the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.

Before the expiration of the time limit above, the NOIP shall complete the formality examination of applications and send notices on examination results to applicants.

  • For a valid application, the NOIP shall send to the applicant a notice on acceptance of valid application.
  • For an application failing to meet formal requirements, the NOIP shall issue a notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal and set a time limit of one month from the date of notification for the applicant to give opinions or correct errors;

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application and, upon the applicant’s request, refund the paid fees and charges for jobs to be done after the formality examination.

The applicant and all organizations and individuals having rights and interests directly related to decision may lodge complaints with the Director General of NOIP or initiate a lawsuit at court if they disagree with this decision within 90 days from the date the person having the right to complaint receives the notice of this decision.

Within 10 days from the date of receipt of a complaint about the decision of refusal, NOIP shall issue a notice of acceptance or rejection of such complaint, clearly stating the reason(s) for rejection.

Upon the expiration of the time limit for settlement of the complaint about the decision concerning the patent application (the 1st complaints), if the complaint is not settled or complainants disagree with complaint-settling decisions of the NOIP, the complainants or persons having rights and interests directly related to the decision may further lodge their complaints (the 2nd complaints) to the Minister of Science and Technology or initiate lawsuits at court within 30 days from the date of expiration of the time limit for settlement of the 1st complaint if by that date the 1st complaint is not settled, or from the date the person having the right to complaint receives or knows about the decision on settlement of the 1st complaint. Upon the expiration of the time limit for settlement of the 2nd complaint above or if the complainant disagree with complaint-settling decisions of the Minister of Science and Technology, such complainant or person may initiate lawsuits at court.

The patent application accepted as valid shall be published by the NOIP in its Industrial Property Official Gazette in the nineteenth (19) month from the date of priority or the filing date in case the application has no date of priority or within two (2) months after being accepted as a valid application, whichever is later for oppositions and comments of third parties. Applicants shall pay a fee for such publication.

Patent applications under the Patent Cooperation Treaty (PCT) shall be published within two (2) months from the date it is accepted as a valid application and enters the national phase.

Patent applications containing a request for earlier publication shall be published within two (2) months from the date the NOIP receives that request or the date it is accepted as a valid application, whichever is later.

An substantive examination of the application will be carried out only for which the applicant or a third party has filed a request for examination and paid the examination fees within 42 months as of the filing date or the priority date, as applicable, and the time limit for making request for substantive examination of an patent application involving a request for a utility solution patent shall be 36 months counting from the filing date or the priority date, as applicable.

Where no request for substantive examination is filed within the time limit mentioned above, the invention registration application shall be considered having been withdrawn at the expiration of that time limit.

The purpose of substantive examination of patent applications is to assess the patentability of objects claimed in the application under the requirements and corresponding protection scope. A substantive examination will be carried out by examiners of the NOIP within 18 months from the date of the request for substantive examination or the date of the application publication, depending on which comes later.

If the applicant, in the course of substantive examination, corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the NOIP, the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.

On the date of expiration of the time limit for substantive examination of an application at the latest, the NOIP shall send to the applicant one of the following notices:

  • a notice on its intended refusal to grant a patent, clearly stating the reason(s) for refusal, possibly guiding the change of the protection scope and setting a time limit of two (2) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements (The applicant may request prolongation of the time limit), if the object claimed in the application fails to satisfy the protection conditions.
  • a notice on its intended refusal to grant a patent, clearly pointing out errors and setting a time limit of two (2) months from the date of issuance of the notice for the applicant to justify or correct errors. (The applicant may request prolongation of the time limit), if the object claimed in the application satisfies the protection conditions but the application still contains errors.
  • or makes reasonable justifications within the time limit abovea notice on its intended grant of a patent and request the applicant to pay the granting fees, if the object claimed in the application satisfies the protection conditions or makes reasonable justifications within the time limit above.

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application.

When dissatisfaction is in the decision of refusal of examiners, the applicant may appeal against the decision of refusal with Director General of NOIP or initiate lawsuits at court.

As mentioned in the Item (8), if the patent is granted, the NOIP shall request the applicant to pay the fee for the grant of a patent, the fee for notification of the patent grant decision, the registration fee and the fee for maintenance of the first year’s validity of the patent.

Within 10 days after applicants pay fully and on time the fees and charges, the NOIP shall carry out the procedures for granting the patent for the invention.

The Patent shall be recorded in the National Register of Inventions and the decision on granting the patent shall be published by the NOIP in the Industrial Property Official Gazette within two (2) months from the date of issuance and after applicants pay a publication fee.

You may check patents in Vietnam at the IPLib online database of the National Office of Intellectual Property of Vietnam (NOIP): http://iplib.noip.gov.vn

Yes. The applications in Vietnam should be in Vietnamese.

In light of Vietnam regulations and law, the Vietnamese translation of the patent specification must be submitted right at the filing time. However, in urgent cases, we may facilitate to obtain approval for extension of time for submitting such translation (with certain surcharges on a case basis).

Only POA is normally requested.

In case of non-PCT patent applications claiming priority rights under the Paris Convention, certified copies of priority documents are also required.

Neither notarization nor legalization is required for patent filing in Vietnam. Simply signing is sufficient.

Only the original executed Power of Attorney must be a hard copy to be sent to us. To avoid any inconvenience for you, you may send us only the soft files of other documents than the original Power of Attorney.

TAGS: POA

A certified copy of the priority document is actually the concerned first application as originally filed to and now truly certified (for the purpose of priority claim) by the patent office in the relevant priority country.

a. After filing to NOIP, what do we do next? Wait for formality examination?
 
Yes. Formality examination will be carried out right after the application is filed to the NOIP. This procedure normally lasts for 01-02 months from the filing date. As to PCT applications, this duration shall be computed from the first date of the 32nd month after the 31-month anniversary for entry into Vietnam national phase.

b. Do we must request for each step? Such as request for publication, request for substantive examination, request for anything?

No request for publication is required. The application publication shall be automatically made within 02 months from the date of official acceptance of application formality (in case of PCT patent applications) or within the 19th month from the priority date (in case of non-PCT patent applications). In the latter cases, a request for early publication may be filed to the NOIP in order for relevant applications to be early published (i.e. within 02 months from the date of official acceptance of application formality).

A request for substantive examination must be filed to the NOIP, optionally right at the filing time or within 42 months computed from the priority date.

Additionally, one may optionally file to the NOIP requests for amendment of applications, for acceleration of applications in substantive examination stages, or oppositions against any other application, or appeals against any decision of the NOIP.

The PCT documents (such as international search report or international preliminary examination report) are not compulsory ones. However, they should be submitted to the NOIP to facilitate the application examination in the national phase.

If the ISR must be submitted, should it be translated to Vietnamese?

No. The ISR must not be translated into Vietnamese, but the international preliminary examination report should be translated into Vietnamese.

Does NOIP use this ISR result for his decision?

The NOIP shall use the ISR result for reference. The NOIP’s decision is normally based on the international preliminary examination report.

Does this NOIP process be accelerated by this ISR?

No. The ISR does not accelerate the application process.

- Grace period for PCT applications is 06 months.
- There is no grace period for applications with priority claim.
- There is neither deadline nor grace period for filing normal applications (i.e. non-PCT application without priority claim).

TAGS: Grace period

Is it mean that we can file the national phase in Vietnam within 6 months after the deadline of PCT (31 months from first filing)?
So we can file national phase in Vietnam within 37 months from first filing?
Is this grace period for only patent and petty patent not including design patent?

The grace period is 06 months after the deadline of PCT (31 months from the first filing). So, you can file the PCT patent within 37 months from the first filing.
Such grace period is not applicable to design patent.

Such grace period is not applicable to design patent.

In Vietnam practice, petty patent is called “utility solution patent”. As there has not been an IP specialized court in Vietnam, enforcement/litigation in Vietnam now meets certain difficulties and limitations. The most common way for enforcement in Vietnam is administrative proceedings, which some way proves strong enough to fight against infringements.

Enforcements for design patent and invention/utility solution patens are considerably the same. The level of complicatedness thereof varies from case to case.

As your country is also a member of the Paris Convention, you can file such patents in Vietnam with priority claim to the applications. Time limit for priority claim is 12 months for invention/utility solution, and 06 months for design, computed from the priority date.

Priority claim should be advantageous for the following reasons:

- it helps not to destroy novelty in the same way as in your country as you mentioned.

- Filing system of Vietnam is first-to-file one, i.e. those who first file the patent shall be granted protection. Thus, the NOIP bases their examination of novelty on the priority date, which is always earlier than the filing date. This is obviously beneficial to the applicant.

Is it one-time payment? Pay in a lump-sum?

Payment is normally made in two installments: one for filing and the other for granting and first annuity (if an invention is eligible for protection). There may arise other fees (for office actions, amendments, appeal….) during the application process.

The 2nd-20th annuity fees shall be paid annually and within 06 months before the paying deadline for each respective annuity.

The NOIP will not inform you as well as our firm of the annuity payment. We will monitor deadlines by ourselves. You may rest assured that we will set reminders by way of our reliable monitoring system to inform you of annual annuity deadlines in due course.

The NOIP does not have the lump-sum fee for maintaining the patent right for 20 years protection. Each annuity fee shall normally be paid to the NOIP on a year-by-year basis.

TAGS: Annuity fee

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