NEW CHANGES ON PATENT REGISTRATION YOU SHOULD KNOW IN LAW ON IP OF VIETNAM AMENDED IN 2022
By Nguyen Tran Tuyen, ELITE Law Firm
Regulations on registration of protection for inventions and utility solutions have the following new points:
1.Clear provisions on loss of novelty of invention
Article 60.1.b of the IP Law 2022 stipulates that an invention is considered novel if it does not fall into one of the following cases: … b) It (invention application) is disclosed in another invention registration application with a filing date or priority date earlier but published on or after the filing or priority date of that patent application. Before 2022, the Law on Intellectual Property only stipulates the conditions of novelty in general. The IP Law amended in 2022 (IP Law 2022) has added this case of loss of novelty to complete the provision of the first-to-file principle.
Now, inventors and patent owners must be more careful in searching and assessing the novelty of an invention before registering it, to avoid losing the novelty of the invention due to lack of information. At the same time, the Patent Examination and Registration Office also has a clear legal basis to evaluate the novelty of an invention. On the other hand, this provision also minimizes the arising of disputes about the novelty of the invention.
2.Provisions on compensation for pharmaceutical inventions that are delayed in licensing
Article 131.a of the IP Law 2022 stipulates:
1) When conducting the procedure for maintaining the validity of a patent, the patent holder is not required to pay a fee to use the protection title for the period during which the registration procedure for the initial circulation of pharmaceutical products manufactured under such patent in Vietnam is delayed.
2) The circulation registration procedure of pharmaceutical products is considered delayed if two years from the date of receipt of a complete application for registration of circulation of pharmaceutical products, the authority competent to grant circulation authorization for pharmaceutical products does not give a first written response for the dossier. The delay period is calculated from the first day after the end of two years from the date the competent authority receives the complete dossier to the first written response.
3) The delay time due to the fault of the applicant or causes beyond the control of the competent authority shall not be included in the time periods stipulated in clause 2 of this Article.
4) In case the patent owner has paid the fee to use the protection title for the period considered delay, the fee paid will be deducted from the next period of validity or refunded.
5) In order not to have to pay the fee for using the protection title as prescribed in clause 1 of this Article, within twelve months period from the date on which the pharmaceutical product is licensed for circulation, the patent holder must submit the registration fee to the state management agency in charge of industrial design a document from the agency competent to grant circulation of pharmaceutical products certifying that the procedure for registration of circulation of such pharmaceuticals has been delayed. This is one of the new regulations included in the IP Law 2022 to internalize the provisions of the EU-Vietnam Free Trade Agreement (EVFTA).
It can be seen that, the main purpose of this supplement is to protect the legitimate rights and interests of pharmaceutical patent holders when the registration procedure is handled slower than prescribed by the state agency, help patent owners rest assured that there will be no risk, loss of benefits when the application is processed late in violation of regulations, thereby encouraging foreign investors to participate in the Vietnamese market. The addition of this clause also creates motivation for authors and researchers to actively improve methods and technologies so that scientific research works have high value and high practical application bringing long-term benefits for the national economy.
3.Adding the case that the patent application shall be refused to grant a protection title (Art. 117.1.a)
The IP Law 2022 has specifically added cases where an invention registration application shall be refused to grant a protection title in cases such as: the claimed invention exceeds the scope of disclosure in the initial description of the patent application; The invention is not sufficiently disclosed in the patent description that a person with average technical knowledge can implement the solution stated in the claim; Patent application for inventions which are directly created based on genetic resources or traditional knowledge about genetic resources but do not disclose or incorrectly disclose the origin of genetic resources or traditional knowledge about genetic resources in that application in the case of filing an application as stipulated at point b, clause 1, Article 86 of the IP Law 2022; Patent applications are filed contrary to the provisions on security control for inventions specified in Article 89a of the IP Law 2022.
Accordingly, this additional provision has created a clear legal basis, specifically in the Law for the examination and grant of patents. At the same time, this is also a specific basis for the cancellation of a patent if it is granted improperly.
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