Patent is also an essential part of the amended Vietnam Intellectual Property Law 2022 (amended IP Law 2022) which was ratified by the National Assembly on June 16, 2022, and will take effect on January 1, 2023.
Among the amended and supplemented contents, there are 12 considerable patent-related aspects that we would like to share our point of views as follows:
Patent in Vietnam amended IP Law 2022
1. Amendment of provisions on novelty of inventions
The novelty of inventions is stipulated by Article 60.1 of the IP Law 2005 however it is still too general to ensure a balanced goal between the rights holder and the interests of the public. To address this issue, the amended Vietnam IP Law 2022 has adjusted Article 60.1 in the direction of clarifying two cases where an invention is considered to have lost its novelty. Specifically, an invention is considered novel if it does not fall into one of the following cases:
- Be publicly disclosed in the form of use, written description or any other form in the country or abroad before the filing date of the patent application, or prior to the priority date in case the patent application claims for the right of priority;
- Be disclosed in another patent application with an earlier filing date or priority date but published on or after the filing date, or priority date of that patent application.
2. Supplement of provisions on the Entitlement to registration of inventions
Firstly, the amended IP Law 2022 has supplemented provisions allowing the organizations and individuals who are assigned to manage genetic resources and provide genetic resources and traditional knowledge about genetic resources under contracts for accessing genetic resources and sharing benefits, shall have the right to register an invention (Article 86.1.b).
Secondly, the amended IP Law 2022 has added Article 86a, which stipulates the right to register inventions as a result of scientific and technological tasks using the state budget as follows:
- For inventions not in the field of national defense and security, which are fully funded by the state budget, the right to register inventions, industrial designs and layout designs is automatically assigned to the lead organization and without reimbursement;
- For inventions not in the field of national defense and security, which are invested with many capital sources, including part of the state budget, right to register inventions, industrial designs and layout designs is corresponding to the proportion of state budget allocated to the host organization automatically and without reimbursement;
- In case the invention is in the field of national defense and security, using the state budget, the right to register an invention is corresponding to the proportion of the state budget that belongs to the State. The representative of the state owner shall exercise this right of registration.
3. Supplement of the definition of “Confidential invention”
The IP Law 2005 does not mention the definition of “Confidential invention”. Accordingly, the amended Vietnam IP Law 2022 defines for the first time “Confidential invention” as “an invention that is determined by a competent state agency to be a state secret according to the law on protection of state secrets” (Article 4.12.a).
The Government of Vietnam will detail the order and procedures for processing Confidential invention applications by a separate Decree.
4. Supplement of provisions on security control for inventions before filing abroad
The amended IP Law 2022 has added the Article 89.a on the security control of inventions before filing applications abroad. Specifically:
- An invention in the technical fields affecting national defense and security, being created in Vietnam under the registration rights of an individual who is a Vietnamese citizen and permanently resides in Vietnam or of an organization established under Vietnamese law is only allowed to apply with foreign IP Offices if the patent application has been filed in Vietnam to carry out security control procedures;
- The order and procedures for invention registration under the above provisions will be guided by the Government of Vietnam in a separate Decree.
Accordingly, in case a patent application is filed in contravention of the above security control regulations, it will be refused.
5. Amendment and supplement of a number of provisions on Invalidation of Granted Patent
Compared to the IP Law 2005, the 2022 amended IP Law has adjusted and supplemented a number of provisions on Invalidation of granted Patent, specifically:
- Two cases of Patent Invalidation (as a whole) including:
- The patent application is filed in contravention of the security control regulations;
- The patent application is directly created on the ground of genetic resources or traditional knowledge on genetic resources but fails to disclose or incorrectly disclose the origin.
- Six cases of Patent Invalidation (as a whole or in part) including:
- The applicant neither has right to register the invention nor being assigned such right;
- The invention does not meet the protection conditions such as novelty, inventive step and industrial applicability; or inventions that are contrary to social ethics and public order, harmful to national defense and security;
- Amendments and supplements to a patent application widen the scope of the object disclosed or stated in the application or change the nature of the object requested for registration stated in the application;
- The invention has not been disclosed sufficiently and clearly to the extent that it is possible for a person with average skill in the art to carry out.;
- Patented inventions go beyond the scope of disclosure as specified in its original specification;
- The invention does not satisfy the “first to file” principle as provided for in Article 90 of the IP Law.
6. Supplement of provisions on general requirements for patent applications
The amended Vietnam IP Law 2022 has supplemented point d.1 of Article 100, specifically: “Documents explaining the origin of genetic resources or traditional knowledge about genetic resources in a patent application, for inventions directly created on the ground of genetic resources or traditional knowledge of genetic resources”.
7. New mechanism for patent opposition in Vietnam
The IP Law 2005 provides the mechanism for a third party to give written opinion to the IP Office of Vietnam (IPVN) on granting or not granting a protection title to a patent application:
- The time limit is from the publication date of the patent application in the Industrial Property Official Gazette until prior to the date of decision on grant of protection title;
- The written opinion of the third party is considered as a source of reference for the processing of patent application.
The amended IP Law 2022 introduces for the first time a new mechanism for patent opposition with the following regulations:
- The time limit is 09 months from the publication date of the patent application and prior to the date of decision on grant of protection title;
- The opposition opinion must be presented in writing, enclosed with documents or cited sources of information to prove objections, and must pay fees and charges.
- Order and procedures of processing opposition will be guided in detailed by the Minister Science and Technology.
8. Supplement of provisions on examination of patent application
The amended IP Law 2022 has added an provision allowing the IP Office of Vietnam (IPVN) to use officially the results of substantive examination of a corresponding patent application by a foreign IP Office in the process of examining patentability in Vietnam. The Minister of Science and Technology will provide detailed guidance on this provision.
9. Supplement of legal grounds for refusal of a patent application in Vietnam
The IP Law 2005 has stipulated three cases of refusal to grant Patent, which are:
- The patent application does not fully meet the protection criteria;
- The patent application does not meet the “first to file” principle;
- There is no consent from all of the applicants according to Paragraph 2 Article 90 of this Law.
The amended Vietnam IP Law 2022 has supplemented six more cases of refusal to grant Patent, which are:
- The applicant neither has right to register the invention nor being assigned such right;
- Amendments and supplements to a patent application widen the scope of the object disclosed or stated in the application or change the nature of the object requested for registration stated in the application;
- Patented inventions go beyond the scope of disclosure as specified in its original specification;
- The invention has not been disclosed sufficiently and clearly to the extent that it is possible for a person with average skill in the art to carry out;
- The patent application fails to disclose or incorrectly disclose the origin of the genetic resources or traditional knowledge of genetic resourses;
- The patent application is filed in contravention of the security control regulations.
10. Supplement of provision on Compensation for Patent holder due to delay in granting approval of pharmaceutical products in Vietnam
Compensation for patent holder due to a delay in granting approval of pharmaceutical products is an unprecedented provision in Vietnam’s IP law until Vietnam has joined the European Union–Vietnam Free Trade Agreement (EVFTA). The new Article 131.a is supplemented to the amended IP Law 2022 to be in line with Vietnam’s commitments under EVFTA. According to this supplement, Patent holder is not required to pay fee to use the protection title for the period of delay in the procedure for obtaining approval of pharmaceutical products in Vietnam. The Government of Vietnam will issue a Decree detailing this Article.
11. Compulsory licensing of patent
The IP Law 2005 provides four compulsory grounds for licensing of patent.
The amended IP Law 2022 has supplemented the fifth ground for compulsory licensing of an invention, specifically in the case of the use of an invention to meet the demand for pharmaceutical products for the prevention and treatment of diseases of another country that is eligible for import under international treaties to which Vietnam is a contracting party.
12. Amendment of provision on compensation in case of compulsory licensing of patent
According to the IP Law 2005, one of the conditions restricting the right to use an invention that transferred under a compulsory decision is “The licensee must pay the Patent holder a sum of satisfactory compensation depending on the economic value of such right to use in each specific case in accordance with the compensation price bracket set by the Government
The Vietnam IP Law 2022 has been amended that “The licensee must pay the patent holder an agreed-upon sum of compensation, in case no agreement is reached, the Government’s regulations shall be applied, except where the right to use an invention is transferred under a compulsory decision to import pharmaceuticals under the mechanism of an international treaty to which the Socialist Republic of Vietnam is a member and the compensation for the use of the invention transferred under a compulsory decision has been paid in the exporting country
