Patent Filing Procedure: Vietnam

15th May, 2017 - 6:14 am Categories: Asia Patents Vietnam 0 Comments

Step 1: Filing:

• Who may apply: Article 86 and 89:
• Authors who have created inventions with their own efforts and expenses
• Organizations or individuals who have supplied funs and material facilities to authors in the form of job assignment or hiring unless otherwise agreed by the involved parties.
• Foreign nationals residing permanently
• Foreign organizations having a production or trading establishment
• Non-resident foreign nationals or organizations not having a production or trading establishment shall apply through a lawful representative.
• Documents required: Section 100
• Declaration for registration in the prescribed form
• Documents, samples and information identifying the invention
• Power of attorney (if applied through representative)
• Documents evidencing the registration right if such right is acquired by another person
• Documents evidencing the priority right, if it is claimed
• Vouchers of payment of fees and charges
• A copy of the first application certified by the registration office
• Requirements of the registration application:
• Description of the invention, along with scope of protection
• The scope of protection must be described in the form of technical combinations which are necessary and sufficient to identify the scope of rights to such inventions, and compatible with the description and drawings (if any)
• Abstract, disclosing the principal features
• Fully and clearly disclosing the nature of the invention to the extent that such invention may be realized by a person with average knowledge in the art
• Briefly explaining the accompanied drawings, if any
• Clarifying the novelty, inventive step and susceptibility of industrial application of the invention
• Filing Date: Article 108:
• All applications shall be received by the State administrative authority.
• The filing date shall be the one on which the application is received by the state administrative authority.
• First to file: Article 90:
• Where two or more applications are filed by several people to register the same invention, protection may only be granted to the valid application with the earliest date of priority or filing date among the applications that satisfy all the requirements.
• Vietnam is a member of PCT, hence international applications are also accepted.
• Filing fees:
• Filed in paper form without digital database of the whole content of the application: 180 thousand VND.
• Filed in paper form with digital database of the whole content of the application: 150 thousand VND.
• Filed online: 100 thousand VND.
• PCT filing, excluding fees and charges collected by the international bureau: 500 thousand VND.

Step 2: Examination:

• The application shall be examined within 1 month from the filing date (Article 119).
• Formal Examination: Article 109:
• To verify the formal validity of the application, an examination process shall be conducted.
• Substantive Examination: Article 119:
• 12 months from the date of publication of invention. 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
• Invalidity in the following circumstances:
• The applicant does not fulfil the requirements of formality;
• The subject matter of the application is not eligible for protection;
• The applicant does not have the right to registration;
• The application was filed in contrary to the mode of filing;
• The applicant fails to pay the fees and charges.

Step 3: Acceptance/ Refusal:

• The application for registration may be accepted with or without amendments.
• Until the notice of refusal by the State administrative authority, the applicant shall have the following rights:
• To make amendment or supplement to the application;
• To divide the application;
• To request for recording changes in name or address of the applicant;
• To request for recording changes in the applicant as a result of assignment under the contract, as a result of inheritance, bequest, or under a decision of an authority;
• Any amendment or supplement to an industrial property registration application must not expand the scope of the subject matter disclosed or specified in the application and must not change the substance of the subject matter claimed for registration in the application and shall ensure the unity of the application.
• Fee for amending applications, including for request of supplement, separation, assignment, change (per each amendment/ application): 120 thousand VND.
• Refusal: Article 117:

Refusal to register an application may be on the following grounds:

• The subject matter claimed in the application does not fulfil the protection requirements;
• The application satisfies all the conditions for the issue of a protection title but is not the application with the earliest filing date or priority date as in the case referred to in Article 90.1 of this Law.
• The application falls within the cases referred to in Article 90.1 of this Law but a consensus of all the applicants is not reached.
• The State administrative authority shall serve a notice of an intended refusal to grant a Protection Title, in which the reasons are clearly stated with a set time limit for the applicant to oppose to such intended refusal.
• The State administrative authority shall serve a notice of the refusal to grant a Protection Title if the applicant has no objection or has unjustifiable objection to such intended refusal.

Step 4: Publication:

• Article 110: An industrial property registration application which has been accepted as being valid by the State administrative authority shall be published in the Industrial Property Official Gazette.
• An invention registration application shall be published in the 19th month as from the filing date or the priority date, as applicable, or at an earlier time at the request of the applicant.
• Fee for publication of application, including application for amendment, supplement, separation, assignment (each application): 120 thousand VND.
• The application for registration shall be examined as to its substance within 6 months from the date of its publication.
• Charge for substantive examination of application (for each group of six products/services) – without information searching charge: 420 thousand VND.

Step 5: Protection Title:

• Article 93 stipulates the validity of the protection titles:
• It is valid throughout the territory of Vietnam.
• The registration of Patent shall be valid up to 20 years from the date of filing. Their validity commences on the date of grant of protection.
• Rights accruing after registration: Article 122 and 123:
• Moral Rights:
• To be named as authors in invention or utility patents
• To be acknowledged as authors in documents in which inventions are published or introduced.
• Economic rights:
• Owners of inventions are obliged to pay remuneration to their authors, unless otherwise agreed by the parties.
• Minimum level of remuneration:
• 10% of the profit amount gained from the use of invention
• 15% of the total amount received by the owner in each payment for licensing of an invention
• To use or permit others to use the industrial property object in accordance with Article 124 and Chapter X of the law (Transfer of rights: Assignment and Licensing):
• Manufacturing the protected product
• Applying the protected process
• Exploiting utilities of the protected product or the product manufactured under the protected process
• Circulating, advertising, offering, stocking for circulation the product
• Importing the product
• To prohibit others from using the industrial property object in accordance with Article 125 (Right to prohibit others from using industrial property objects).
• To dispose of the industrial property object in accordance with Chapter X of this Law (Transfer of rights: Assignment and Licensing).