I. LEGAL GROUND
• IP Law 50/2005 amended and supplemented in 2009, 2019 (IP Law);
• The Civil Code 2015 of Vietnam.
II. PATENT PROTECTION
An invention means a technical solution in form of a product or a process that is intended to solve a problem by application of laws of nature.
An invention shall be protected by mode of a grant of invention patent when it satisfies the following conditions:
(i) Being novel;
(ii) Involving an inventive step; and
(iii) Being susceptible to industrial application.
Unless it is common knowledge, an invention shall be protected by mode of a grant of utility solution patent when it satisfies the following conditions:
(i) Being novel;
(ii) Being susceptible to industrial application.
An invention shall be considered novel if it has not yet been publicly disclosed through use or by using a written description or any other form, inside or outside the country, before the filing date or the priority date, as applicable, of the invention registration application.
An invention shall be considered having not yet been publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret.
An invention shall not be considered having lost its novelty if it is published directly or indirectly by a person who has the right to registration or by a person who has information about the invention, provided that the invention registration application in Vietnam is filed within 12 months from the date of publication.
2. Inventive step
An invention shall be considered involving an inventive step if, based on technical solutions already publicly disclosed through use or by using a written description or any other form, inside or outside Vietnam, before the the filing date or the priority date, as applicable, of the invention registration application, it constitutes inventive progress and cannot be easily created by a person with average knowledge in the art.
Solution utility is an invention published in the case of “published directly or indirectly by a person who has the right to registration or by a person who has information about the invention”, and “published in the industrial property registration application or published in the industrial property registration certificate by management agency in charge of industrial property in case the publication is inconsistent with the provisions of law or the application is submitted by a person who does not have the right to register” shall not be used as a basis for examining inventive step of inventions.
3. Susceptibility of industrial application of inventions
An invention shall be considered susceptible to industrial application if it is possible to realize mass manufacture or production of products or repeated application of the process that is the subject matter of the invention and to achieve stable results.
4. There are some subject matters not protected as inventions under Patent Regulations of Vietnam IP Law
(i) Scientific discoveries or theories, mathematical methods;
(ii) Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;
(iii) Presentations of information;
(iv) Solutions of aesthetical characteristics only;
(v) Plant varieties, animal breeds;
(vi) Processes of plant or animal products which are principal of biological nature other than microbiological ones;
(vii) Human and animal disease prevention, diagnostic and treatment methods.
5. Principle of “first-to-file”
The principle of “first-to-file” is applied for the registration of inventions, utility solutions, industrial designs, trademarks in Vietnam.
Accordingly, in case many application are filed for registration of the same invention or similar inventions, or for registration of industrial designs identical with or insignificantly different from one another, the protection title may only be granted to the valid application with the earliest priority or filing date among application satisfying all the conditions for the grant of a protection title.
In case there are many registration applications filed at the NOIP and satisfying all the conditions for the grant of a protection title and having the same earliest priority or filing date, the protection title may only be granted for the object of a single application out of these applications under an agreement of all applicants. Without such agreement, all relevant objects of these application will be refused for the grant of a protection title.
6. Principle of priority
The applicant for registration of an invention or a utility solution may claim priority based on the first application for protection of the same subject matter if the following conditions are fully satisfied:
a) The first application has been filed in Vietnam or a member country of an international treaty having provisions on priority rights to which the Socialist Republic of Vietnam is a party, or a country having agreed with Vietnam to apply such provisions;
b) The applicant is a national of Vietnam or such a country referred to in subparagraph an of this paragraph, or is a resident of or has a business or production establishment in Vietnam or such a country referred to in subparagraph an of this paragraph;
c) The claim for the right of priority was mentioned in the application and a copy of the first application certified by its receiving office;
d) The application has been filed within the time limit provided for in the international treaty to which Vietnam is a party.
7. Prior use right to inventions
a) In case any person who has, before the publication date of a registration application for an invention or utility solution (hereinafter referred to as “invention”), used or made necessary preparation for use of an invention identical with the protected invention stated in the patent application but create independently (hereinafter referred to as “prior use right holder”), then after a Protection Title is granted such person shall be, without having to obtain the permission of or paying compensation to the owner of the protected invention, entitled to continue such use within the same scope and volume of use or preparation made before the publication date. Such exercise of the right of the prior use right holder of the invention shall not be regarded as an infringement of the right of the patent owner.
b) The holder of prior use right to an invention shall not be entitled to transfer such right to others, except where such right is transferred together with the business or production premise where such the use or preparation for use of the invention or industrial design was made. The holder of prior use right cannot expand the scope and volume of use unless it is so permitted by the owner of the patent.
8. Obligation to use inventions
The owner of a patent shall be obliged to manufacture the protected product or to apply the protected process to satisfy the needs of national defense, security, disease prevention, treatment and nutrition for people or to meet other urgent needs of the society. If the patent owner fails to perform such obligation when there arise any of the above mentioned needs, the State authority may grant licenses of the patent to others.
III. PATENT REGISTRATION
1. For PCT applications entry into Vietnam
(i) Name, address and nationality of applicant/inventor;
(ii) Information on the PCT application number or WIPO’s publication number;
(iii) Copy of amended patent specification (if any) for national phase entry;
(iv) Signed Power of Attorney of applicant appointing ELITE LAW FIRM as his/her patent agent in Vietnam; and
(v) Signed Deed of Assignment, if the applicant is not that of the international application.
• Language of filing: Vietnamese;
• Original documents (4) and (5) are required within 34 months from the priority date. Notarization is not required; and
• National phase deadline under both Chapter I and Chapter II is 31 months from the 1st priority date (the earliest filing date).
2. For patent application to be filed directly to the NOIP (conventional & non-conventional filings)
(i) Name, address and nationality of applicant/inventor;
(ii) Copy of patent specification (in English);
(iii) Priority document where priority is claimed. Priority data (application number, filing date and country) is required at filing;
(iv) Signed Power of Attorney from applicant appointing ELITE LAW FIRM as his/her patent agent in Vietnam; and
(v) Signed Deed of Assignment, requested only if:
a) Applicant is individual not the inventor; or
b) Applicant is an organization not the applicant of the priority application.
• Language of filing: Vietnamese;
• Originally certified copy of the document (3) is required within 03 months from the patent application’s filing date; and
• Original documents (4) & (5) are required within 01 months from the patent application’s filing date. Notarization on legalization is not required.
3. Request for substantive examination
• Deadline for request for substantive examination is 42 months for inventions and 36 months for utility solutions from the patent application’s priority date or filing date
• Cost for a request for substantive examination is charged for each independent claim and the number of page of specification
4. Time limit of examination
a. Time limit under Patent Regulation:
i. Formality examination: 01 months (i) from the patent application’s filing date for conventional and non-conventional applications or (ii) from the 1st day of the 32nd month from the earliest priority date for PCT applications or within 01 month if additional documents are submitted
ii. Publication of application: (i) in 19th month from the priority date or within 02 months from the patent application’s formality acceptance date, whichever is later for conventional and non-conventional applications or (ii) within 02 months from the patent application’s formality acceptance date for PCT applications.
iii. Substantive examination: 18 months from the patent application’s publication date or date of receipt of Request for Substantive Examination, whichever is later;
iv. Granting a Patent: 15 working days from the payment date;
b. Time limit in current Patent examination in practice
Estimated time for obtaining a patent in practice: from 30-42 months from the patent application’s filing date in Vietnam.
5. Validity term and maintenance of patent validity
Patents have an effect on the territory of Vietnam.
Invention Patents shall have validity counted from the grant date and expiring at the end of 20 years as from the filing date.
Utility solution Patents shall have validity counted from the grant date and expiring at the end of 10 years as from the filing date.
In order to maintain the validity of a patent in Vietnam, the patent’s owner must pay patent annuity fees every year from the Patent grating date. If the Patent’s owner fails to pay patent annuity fees before or within the prescribed time limit, the validity of the Patent shall ex-officio/automatically be terminated from the first day of the year for which the annuity fees have not been paid.
A 6-month grace period for late payment of patent annuity fees is applied in Vietnam.
IV. PATENT RIGHTS AND ENFORCEMENT
1. Rights of Patent owners
The patent owner shall have the following property rights:
a) To use or permit others to use his/her patent;
b) To prohibit others from using his/her patent;
c) To dispose off his/her patent in accordance with IP Law of Vietnam.
2. The use of a patent
The use of a patent means carrying out the following acts:
a) Manufacturing the protected product;
b) Applying the protected process;
c) Exploiting the uses of the protected product or a product obtained by the protected process;
d) Circulating, or advertising, offering, stocking for circulating the product as provided in point (c) above;
e) Importing such products as provided in point (c) above.
3. Right to prevent others from using a patent
The patent owner shall have the right to prevent others from using his/her patent unless such use falls into the following acts:
a) Using the patent for personal needs or non-commercial purposes, or for evaluations, analysis, research or teaching, testing, pilot production or for developing information to carry out procedures for the license of production, importation or marketing of products;
b) Circulating, importing, exploiting uses of, the products having been legally put into the marketplace, including foreign markets, except for such products put into foreign markets by persons other than the mark owner or his licensee;
c) Using the patent only to maintain the operation of a foreign vehicle in transit or only temporarily being in the territory of Vietnam;
d) Using the patent by the person with prior user right;
e) Using the patent by the person authorized by the State competent agencies based on a Decision on grant of a patent compulsory licensing in accordance with IP Law of Vietnam.
4. Acts of infringement upon the rights to a patent
The following acts shall be regarded as an infringement of the rights of the patent owner:
a) Using the patent within the validity term of the patent without permission of the patent owner;
b) Using the patent without paying compensation as to a case of provisional rights to inventions or utility solutions as provided in IP Law of Vietnam.
5. Remedies against acts of infringement upon the rights to a patent
a) Organizations and individuals that have committed acts of infringement of other’s patents are liable to civil and/or administrative remedies, depending on the nature and extent of such infringement.
b) In appropriate cases, State competent agencies shall have the right to apply provisional measures, intellectual-property-related control measures about imports and exports and preventive measures and shall ensure that administrative penalties shall be imposed as provided in IP Law and other related laws and regulations.
6. Authorities in handling the infringement of patent rights in Vietnam
a) Courts, science inspectorate, custom offices, economic police agencies and the People’s Committees of all levels, within its duties and authorities, are entitled to handle acts of infringement of patent rights.
b) The application of civil remedies shall fall within the authorities of the courts. In appropriate cases, the courts are entitled to apply provisional measures in accordance with the laws and regulations.
c) The application of administrative remedies shall fall within the authorities of science inspectorate, economic police agencies, custom offices and the People’s Committee of all levels. In appropriate cases, the above-mentioned agencies are entitled to apply preventive measures and ensure that administrative penalties shall be imposed in accordance with the laws and regulations.
d) The application of intellectual property border control measures with regard to imports and exports shall fall within the authorities of custom offices.
ELITE’s Disclaimer: This is the introduction of general information of Vietnam Patent System of ELITE LAW FIRM and not our advice for a specific case. Please contact our Firm for more detailed advice on your specific case to avoid any legal risks. Thank you!
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