Patent

ELITE: Before the VNIPO issues a decision to reject an application, refuse to grant a protection title, or grant a protection title, an applicant may convert a patent application into a utility solution patent application, or vice versa.

ELITE: A request for application conversion must include:

• Two registration declarations were typed according to Form No. 01 in Appendix I of Decree No. 65/2023/ND-CP. [Note: If the parent application is marked with an (x) in the “Request for patent” box, the converted application form must have the corresponding (x) in the “Request for utility solution” box, or vice versa.]
• Two descriptions of the invention or utility solution.
• A written document requesting the conversion of the invention or utility solution application.
• Power of attorney (if the request is filed through a representative).

ELITE: Paper applications can be submitted directly or by post to the following VNIPO:

• Hanoi Office: 386 Nguyễn Trãi, Thanh Xuân District.
• Ho Chi Minh City Office: 7th Floor, Hà Phan Building, 17/19 Tôn Thất Tùng, Phạm Ngũ Lão Ward, District 1.
• Da Nang Office: 3rd Floor, 135 Minh Mạng, Khuê Mỹ Ward, Ngũ Hành Sơn District.

If filing by post, a copy of the money transfer receipt must be attached as proof of payment.

ELITE: After receiving a valid request for application conversion, the VNIPO will continue handling the converted application according to relevant procedures. However, it will not repeat any steps that have already been completed before the conversion request was made.

ELITE: A divisional patent application must include:

• Two declarations for registration, formatted according to Form No. 01 in Appendix I of Decree No. 65/2023/ND-CP. The serial numbers and filing dates of the parent application must be clearly stated in the divisional application forms.
• Two descriptions of the invention or utility solution, specifying that the object claimed for protection in the divisional application originates from the parent application and differs from the objects remaining in the parent application.
• A written request proposing the division of the invention or utility solution application.
• A power of attorney, if the request is filed through a representative.

ELITE: Paper applications can be submitted directly or by post to one of VNIPO:

• Head Office in Hanoi: 386 Nguyen Trai, Thanh Xuan District.
• Ho Chi Minh City Office: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1.
• Da Nang Office: 3rd Floor, 135 Minh Mang, Khue My Ward, Ngu Hanh Son District.

If applying by post, the applicant must include a copy of the Money Transfer Receipt as proof of payment.

ELITE: Before the VNIPO issues a decision to reject an application, refuse to grant a protection title, or grant a protection title, an applicant may divide their application either on their own initiative or upon the VNIPO’s request. A divisional application must be assigned a new serial number but retain the filing date and priority date, if applicable.

ELITE: Before the VNIPO issues a decision on the rejection of an application, refusal to grant a protection title, or grant of a protection title, the applicant may amend the application on their own initiative or upon the request of the VNIPO.

ELITE: A patent/utility solution transfer application must include:

• Two declarations requesting application transfer were formatted according to Form No. 05 in Appendix II of Decree 65/2023/ND-CP.
• Documents proving that the transferee satisfies the registration right requirements, including essential details such as the full names and addresses of the assignor and assignee and the serial number or identifying information of the application.
• A power of attorney, if the request is filed through a representative.

ELITE: A request for application amendments must include:

• Two declarations requesting application amendments, formatted according to Form 04 in Appendix II of Decree 65/2023/ND-CP.
• Documents certifying the changes to the application, such as amended or supplemented copies of documents with a detailed explanation of the amended content. These amendments must not expand the protection coverage beyond what was originally disclosed.
• A power of attorney, if the amendment request is filed through a representative.

ELITE: The applicant may choose paper filing or online filing through the VNIPO’s online public service portal, specifically as follows:

1. Paper filing:
   • The applicant may submit an application for an invention/utility solution directly or via postal service to one of the VNIPO’s application receiving places, specifically as follows:
     • Head Office of VNIPO, address: 386 Nguyen Trai, Thanh Xuan District, Hanoi City.
     • Representative Office of VNIPO in Ho Chi Minh City, address: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City.
     • Representative Office of VNIPO in Da Nang City, address: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang City.
   • In case of filing an application for an invention/ utility solution by post, the application charges/ fees must be transferred by postal service, then a copy of the Money Transfer Receipt must be attached to the application and sent to one of the above-mentioned offices to prove the amount paid.
   • (Note: If the fee or charge is transferred to one of the above-mentioned VNIPO‘s application-receiving offices, the applicant must send the dossier to the corresponding application-receiving office).
2. Online filing:
   • Conditions for online filing: Applicants need to have a digital certificate, a digital signature, and a registered account which is approved by the VNIPO on the Online Application Receiving System.
   • Online filing: 
     • The applicant needs to complete the steps of filing an invention/ utility solution application form on the VNIPO‘s Online Application Receiving System. After that, a confirmation of online submission will be sent to the applicant.
     • The confirmation of online submission must be presented to one of the VNIPO and the applicant needs to attach documents (if any) and pay fees/ charges as prescribed within 01 month from the date of online submission.
     • If all documents and fees/ charges mentioned above are fully submitted as prescribed, a VNIPO will issue the application number in the Online Application Receipt System.
     • If one of the documents and fees/ charges is not fully submitted, the application will be denied. If the applicant fails to complete the prescribed application procedure, the online application procedure will be canceled and the Online Application Cancellation Notice will be sent to the applicant via the Online Application Receiving System.

ELITE: According to Article 110, and Article 119 of the Vietnam Intellectual Property Law  2005 (Amended and supplemented in 2009, 2019, 2022), from the date on which the registration application is received by the VNIPO, the registration application of an invention or utility solution shall be examined in the following order:

• An invention or utility solution registration application shall have its formality examination within 01 month from the filing date.
• Publication of invention registration applications:
  • An invention or utility solution registration application shall be published in the nineteenth month from the date of priority or the filing date in case the application has no date of priority or within 02 months after it is accepted as a valid application, whichever is later;
  • An invention or utility solution registration application under the Patent Cooperation Treaty (hereinafter abbreviated to PCT) shall be published within 02 months from the date it is accepted as a valid application and enters the national phase;
  • An invention or utility solution registration application containing a request for earlier publication shall be published within 02 months from the date the IPVN receives that request or the date it is accepted as a valid application, whichever is later.
• An industrial property registration application shall be substantively examined within the following time limits:18 months from the date of its publication if a request for substantive examination is filed before the date of application publication, or from the date of receipt of a request for substantive examination if such request is filed after the date of application publication.

ELITE:

• 02 Declaration for registration which are typed according to form No. 01 Appendix I of Decree No. 65/2023/ND-CP;
• 02 descriptions of the invention or utility solution must meet the regulations in Appendix I of Decree No. 65/2023/ND-CP. The description of the invention/utility solution includes a Description, Claims, and Drawings (if any).
• The description must adequately and clearly demonstrate the following:
  • Title of the invention or utility solution;
  •  Use field of the invention or utility solution;
  • Technical state of the use field of the invention or utility solution;
  • Technical nature of the invention or utility solution;
  • Brief description of accompanied drawings (if any);
  • Detailed description of inventionor utility solution realization variations;
  • Examples of inventionor utility solution; realization;
  • Benefits (effects) expected to be achieved];
  • 02 invention protection coverage (hereinafter referred to as the protection coverage or protection claim);
• Fee and charge receipts.

In addition, you can also prepare other documents if available:

• 02 copies of an invention or utility solution abstract [with no more than 150 words and be presented on an A4 paper sheet. An invention or utility solution abstract is not required at the time of applying and can be added later].
• Power of attorney (in case the request is filed through a representative);
• Paper on assignment of the right to apply (if any);
• Documents certifying the lawful right of registration (in case the applicant enjoys the right to file from another person);
• Documents evidencing the right of priority (if the patent application has a claim for priority right).

ELITE: According to Article 59 of Vietnam IP Law in 2005 (Amended and supplemented in 2009, 2019, 2022), The following subject matters shall not be protected as inventions:

• Scientific discoveries or theories, mathematical methods;
• Schemes, plans, rules, and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;
• Presentations of information;
• Solutions of aesthetical characteristics only;
• Plant varieties, animal breeds;
• Processes of plant or animal production which are principally of a biological nature other than microbiological ones;
• Human and animal disease prevention, diagnostic and treatment methods.

ELITE: According to Article 58.2 of Vietnam IP Law in 2005 (Amended and supplemented in 2009, 2019, 2022), stipulates as follows:

• An invention shall be protected by mode of grant of invention patent when it satisfies the following conditions:
  • Being novel;
  • Involving an inventive step;
  • Being susceptible of industrial application.
• Unless it is a common knowledge, an invention shall be protected by mode of grant of utility solution patent when it satisfies the following conditions:
  • Being novel;
  • Being susceptible of industrial application.

ELITE: According to Article 16.3.b Circular 23/2023/TT-BKHCN, stipulates as follows:

Technical solution – the object protected under the name of an invention is a set of necessary and sufficient information on technical methods and/or technical means (application of natural laws) that is intended to solve a problem. 

Technical solutions may be in one of the following forms: 

1. Products in the form of objects, for example, tools, machines, equipment, components, circuits…, expressed in a set of information that identifies an artificial product characterized by technical signs (characteristics) of structure, that product functions (utilizing) as a means to meet certain needs of human; or products in the form of substances (including simple substances, compounds, and mixtures), for example materials, food, pharmaceuticals …, expressed in a set of information that identifies an artificial product characterized by technical signs (characteristics) of the presence, proportion, and state of the elements, functioning (utilizing) as a means to meet certain needs of human; or products in the form of biological materials, for example genes, genetically modified plants or animals …, represented by a collection of information about a product containing modified genetic information under human impact, capable of self-replicating;
2. Process or method (production process; diagnostic, predictive, test, process, etc.) is represented by a set of information that determines how to conduct a process, a specific job is characterized by signs (characteristics) of the sequence, participants, measures and means of performing operations to achieve a certain purpose.

ELITE: After receiving a valid request for application conversion, the VNIPO will continue handling the converted application according to relevant procedures. However, it will not repeat any steps that have already been completed before the conversion request was made.

ELITE: According to Vietnam Intellectual Property Law amended in 2022 (Article 96), invention, utility solution patent may be canceled by the NoIP in the following:

1. A patent protection tile shall be entirely canceled in the following cases:
   1. The registration application is filed contrary to the provisions on security control for inventions;
   2. The invention registration application which is directly created based on genetic resources or traditional knowledge about genetic resources but does not disclose or incorrectly disclose the origin of genetic resources or traditional knowledge about the genetic resources contained in that application.
2. A patent protection tile shall be partly or entirely cancellated if entirely or partly of that protection tile fails to satisfy the provision on register rights, protection conditions, amended, supplemented tile, invention disclosed, first–to–filed principle, in the following cases:
   1. The registration applicant has neither had nor been assigned the right to register the invention by the person having the right to register.
   2. An invention failed to satisfy the protection conditions;
   3. Amendment or supplementation of an application for registration of industrial property expand the scope of the subject disclosed or stated in the registration application, change the nature of the subject for registration stated in the application;
   4. The invention has not been published sufficiently and clearly for a person with average knowledge of the relevant technical field to do;
   5. The patented invention extends beyond the scope of disclosure in the original description of the registration application;
   6. The invention does not satisfy the first filing principle of the IP Law.

According to Vietnamese regulations, if a patent/utility solution is partly cancellated or entirely cancellated in those cases mentioned above, entirely or partly of the Patent/Utility solution patent will be invalidated from the grant date of the protection tile.

ELITE: Required documents of an appeal against a Decision on refusal of granting a Patent are as follows:

1. An Appeal Application (under the Form);
2. An official letter explaining legal reasons/grounds for the Appeal enclosed with the Appeal Application and evidence or supporting documents (if any);
3. A copy of the NOIP's Decision on refusal of granting a Patent;
4. An original Power of Attorney signed by the Appellant (in case the Appeal is filed through an IP Representative/Agent);
5. A copy of the fee payment for the Appeal

ELITE: According to regulations (Art. 28 and Art. 37 of the Law on Appeal in 2011), the time limit for resolving the first-time Appeal against the Decision on refusal to grant a Patent for an invention application at NOIP must not exceed 30 days from the acceptance date of the Appeal; for complicated cases, the time limit for resolving/settlement may be prolonged, but must not exceed 45 days from the acceptance date. The time limit for resolving a second-time Appeal must not exceed 45 days from the acceptance date of the Appeal; for complicated cases, the time limit for resolving may be prolonged, but must not exceed 60 days from the acceptance date.

ELITE: The purpose of filing an appeal against the Decision on the refusal of granting a Patent for an invention application is to protect the Invention Applicant’s legitimate rights and interests by the law, specifically, requesting the NOIP to reconsider and withdraw the previous refusal Decision and issue a fresh Decision to grant a Patent for the Appellant.

ELITE: An appeal against a Decision on the refusal of granting a Patent for an invention registration means that the Invention Applicant having such a refusal Decision issued by the National Office of Intellectual Property of Vietnam (NOIP) requests the NOIP to reconsider and withdraw such refusal decision if there are sufficient legal grounds to prove that this Decision is contrary to law provisions, directly infringing upon the Invention Applicant’s legitimate rights and interests.