What is an industrial design in Vietnam ?
Under Vietnam regulation, an industrial design means a specific appearance of a product embodied by three-dimensional configurations, lines, colors, or a combination of these elements.
Are there Limitations to Patent Rights in Vietnam?
Patent rights as mentioned above are subject to certain limitations as mentioned below:
Prior Users' Rights
An individual or entity that, prior to the publication date of the patent application, had used the invention, utility solution independently of the patentee, shall have the right to continue the use after the patent is granted. However, the prior user can not extend the scope or increase the volume of use compared with the use prior to the publication date of the application. Prior user's right can not be transferred.
The Ministry of Science and Technology (MOST) may grant a compulsory license in the following circumstances:
The patentee fails to use the patented invention, utility solution, or used but not compatible with the socio-economic development of Vietnam, without any justifiable reasons;
The person willing to use the invention, utility solution has tried by every means to negotiate with the patentee with a reasonable price to enter a license but failed;
The use of the patented invention, utility solution is to serve the demands of national defense and security, prevention and treatment of human disease or other urgent needs of the society.
The licensee of a compulsory license shall have to pay the patentee a certain amount of royalties as specified in the decision of granting compulsory license from the MOST.
The following cases are also not covered by the patent rights:
The use is not for commercial purposes;
The circulation and use of the products that are sold or marketed by the patentee, his assignee or licensee or a prior user;
The use of the patented invention or utility solution on foreign means of transportation which are in transit or temporarily located in the territory of Vietnam and such use is only for the purpose of maintaining the operation of such means.
What is the act of patent infringement in Vietnam ?
The following acts, committed without the consent from a patent holder, shall constitute a patent infringement:
(i) Manufacturing products using a patented invention or utility solution;
(ii) Using, importing, advertising or circulating products that have been manufactured using a patented invention or utility solution; and
(iii) Applying patented process in Vietnam.
What are the Rights and Obligations of Patent Owners under Vietnam regulation?
A patent owner shall be entitled to:
(i) Exclusive use of the patented invention or utility solution, including the right to license,
(ii) Request any person infringing his patent rights to cease from the infringement and ask for any damage suffered.
The patent owner has certain obligations including:
(i) To pay remuneration to the inventor(s),
(ii) Pay the annuity of the patent, and
(iii) Use or license the patented invention or utility solution to a third party in the form of compulsory license according to the decision of the competent State authority.
When a patent application in Vietnam will be published? What is the content of publication?
In general, patent applications in Vietnam will be published in the 19th month from the earliest priority date or the filing date in case the application has no date of priority or within two (2) months after being accepted as a valid application, which ever is later for opposition and comments of third parties. Applicants shall pay a fee for such publication.
Patent applications under the Patent Cooperation Treaty (PCT) shall be published within two (2) months from the date it is accepted as a valid application and enters the national phase.
Detailed information including full specification can be accessible at the NOIP under request and subject to prescribed fee.
How does the substantive examination for a patent application in Vietnam take place ?
The substantive examination is to assess the patentability and will be carried out by the examiners within 18 months from the date of the request or the date of publication (depends on which comes later).
The NOIP shall send the applicant one of the following notices:
- A notice of intended refusal, clearly stating the reasons and setting a time limit of 2 months for the applicant to give the opinions and fulfill the requirements.
- A notice of intended grant and request the applicant to pay the fees (including granting fee, publication and the fee for maintenance of the first year’s validity of the patent).
Within 10 days after applicants pay the fees, the NOIP shall carry out the process for granting the patent in Vietnam.
A patent for invention is granted if the technical solution meets the protection criteria of novel, inventiveness, and capability of industrial application. A patent of utility solution could be granted if a technical solution does not meet the required level of inventiveness but is not common knowledge.
How does the formality examination for a patent application in Vietnam take place ?
A patent application shall be subject to formal examination. The time limit for formality examination is within 1 month from the filing date with national applications, and within 32 months from the earliest priority date or 1 moth form the date of the request to the national phase early with PCT application.
- In case the patent application is filed sufficiently, the Vietnam Trademark Office shall send to the applicant a notice on formality acceptance.
- For an application that fail to meet the formal requirements, The NOIP shall issue a notice of intended refusal, clearly stating the reasons and setting a time limit to correct and set a time limit of one month from the date of notification to give opinions.
How to maintain the validity in order to protect a patent in Vietnam ?
- A patent for invention shall each have a validity starting from the grant date and expiring at the end of 20 years after the filing date.
- A patent for utility solution shall each have a validity starting from the grant date and expiring at the end of 20 years after the filing date.
Annuity needs to be paid in order to keep the patent valid. To have the validity of his/her invention protection title maintained, a protection title holder shall pay a validity maintenance fee within six months before the expiration of the validity term. The payment of the validity maintenance fee may be delayed for no more than six months after the expiration of the current validity term but patentee shall pay the maintenance fee plus 10% for each month of delayed payment.
What are the required documents for filing a patent application in Vietnam?
The application for a patent in Vietnam must consist of the following documents:
a) A request made in prescribed form (as prescribed in the Circular No. 01/2007/TT-BKHCN);
b) Documents, samples, information identifying the invention/utility solution claimed for protection as provided for in Articles 102 of the IP Law 2005 of Viet Nam (e.g. a request, a description of the invention, an abstract, and other requirements for inventions in the field of biotechnologies, pharmaceuticals, generic resources and traditional knowledge);
c) Power of attorneys, if the application is filed through a representative;
d) Documents evidencing the right to registration, if acquired by the applicant from another person;
e) Documents evidencing the priority right in case the application is filed under the Paris Convention, if claimed e.g. certified true copy of priority document and Deed of Assignment);
f) Receipt of fees and charges.
All documents of the application shall be in Vietnamese, except for the documents mentioned at point c, d, e and other documents supporting the applications, which can be made in another language but must be translated into Vietnamese at the request of the National Office of Intellectual Property of Vietnam (NOIP).
How to file a patent application in Vietnam ?
Vietnamese application, foreign individuals permanently residing in Vietnam and foreign organizations or individuals having production or business establishments in Vietnam shall file a patent application in Vietnam, directly to the National Office of Intellectual Property of Vietnam (NOIP) or its brand offices in Ho Chi Minh City or Da Nang.
Foreign individuals not permanently residing in Viet Nam, foreign organizations and individuals not having a production or trading establishment in Viet Nam shall file applications for a patent through a lawful representative in Viet Nam.
What can be considered as a patent in Vietnam?
In Vietnam, any technical solution (in forms of articles, materials, or processes) that is new, inventive, and industrially applicable.
What is the timeframe of responding to the Notice of refusal regarding the application of industrial design in Vietnam?
Please be advised that the time limit to filing response to Notice of refusal of industrial design application in Vietnam is 02 months as from the signing date of Notice of refusal. Incase the design application need more time to prepare the documents, the application could file a request to extend for a period of 02 months. At any time before the issuance of final Decision, the applicant has the right to supply evidences as well as any other relating documents for their industrial design application in Vietnam.
It is recommended that a temporary response should be submitted as soon as possible in case the applicant is not able to provide a thorough reply, followed by a fully response in 10-15 days later. At any time before the issuance of final Decision, the applicant has the right to supply evidences as well as any other relating documents.