Legal ground
– IP Law 50/2005/QH11 amended and supplemented in 2009, 2019 and 2022 (IP Law);
– Decree 65/2023/NĐ-CP;
– Circular 23/2023/TT-BKHCN.
The state management agency in charge of industrial property rights: Intellectual Property Office of Vietnam (IPVN)
Patent’s subject matter
An invention means a technical solution in form of a product or a process that is intended to solve a problem by application of laws of nature.
Modes of protection, protection period and protection criteria
|
Mode |
Invention Patent |
Utility solution/Utility model Patent |
|
Protection period |
20 years counted from the filing date |
10 years counted from the filing date |
|
Substantive examination |
Yes |
Yes |
|
Protection criteria |
(i) Being novel; (ii) Involving an inventive step; and (iii) Being susceptible to industrial application |
(i) Being novel; (ii) Being susceptible to industrial application; and it is not considered as a common knowledge (but not meet an inventive step requirement) |
|
Value to enforcement |
Similar |
|
The subject matters not protected as invention
- Scientific discoveries or theories, mathematical methods;
- Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs (software);
- Presentations of information;
- Solutions of aesthetical characteristics only;
- Plant varieties, animal breeds;
- Processes of plant or animal products which are principal of biological nature other than microbiological ones;
- Human and animal disease prevention, diagnostic and treatment methods.
Register your patent in Vietnam and unlock endless possibilities
Principle of “first-to-file”
In case of many applications are filed for registration of the same invention or similar inventions, the patent only be granted to the valid application with the earliest priority or filing date. In case there are many registration applications having the same earliest priority or filing date, the patent only be granted for the object of a single application out of these applications under an agreement of all applicants. Without such agreement, all relevant objects of these patent application in Vietnam will be refused for the grant of a protection title.
Time limits
– Filing application claiming priority: late filing is not acceptable
+ For Non-PCT application: within 12 months counted from the priority date;
+ For PCT application: within 31 months counted from the priority date.
– Submitting the priority document: within 03 months counted from the filing date, late filing is not acceptable.
– Filing a request for substantive examination: late filing is not acceptable
+ For invention application: 42 months counted from the priority date;
+ For utility model/utility solution invention: 36 months counted from the priority date.
– Grace period for novelty:
+ 12 months counted from the disclosed date of such invention by its applicant.
– Time limit for responding to the Office Action/Notification of the IPVN and extension time:
+ 02 months counted from the signing date of the Office Action/Notice for case of formality such as Notification of formality examination; only one extension of 02 months is acceptable.
+ 03 months counted from the signing date of the Office Action/Notice for case of substance such as the Written Opinion on substantive examination result; only one extension of 03 months is acceptable.
Filing date
– For Non-PCT application: filing date is the date filing the application with the IPVN
– For PCT application: filing date is the filing date of the PCT application (not date entering national phase of Vietnam)
Maintenance of Patent in Vietnam
– The annuity for maintenance of patent in Vietnam is requested to pay every year after granting patent;
– There is no annuity for pending patent application;
– Due date is based on the granting date; late payment is acceptable within 6 next months.
For example:
– The filing date: 12/01/2020; – The granting date: 23/12/2033; So, the expired date: 12/01/2040 (20 years counted from the filing date)
– The maintenance is counted from the granting date:
+ The first annuity for 12 months (one year) is counted from 23/12/2033 to 23/12/2034 and requested to be paid together with the granting fees by a Notice of intention for granting and paying fees.
+ The deadline for paying the second annuity is 23/12/2034 and December 23 each year for next annuities until the final annuity; there is no any official Notice for such deadline, the patent applicant must actively control this deadline.
+ The final annuity is the seventh annuity with the deadline for paying the 7th annuity is 23/12/2039 for the final maintenance period from 23/12/2039 to 12/01/2040 (only one month of annuity is requested to be paid, not one year 2039-2040).
Requirements for filing patent application in Vietnam
|
Common Requirements |
For PCT application |
For Non-PCT application |
Note |
|
Name, address and nationality of applicant and inventor |
Yes |
Yes |
Information on nationality is often missing by the applicant and inventor |
|
Information on Priority rights (if any) |
Yes |
Yes
|
|
|
Information on the PCT application/WIPO’s publication number |
Yes |
No |
|
|
Power of Attorney (only signature is required, no notarization and no legalization) |
Yes |
Yes |
|
|
Certified true copy of priority document |
No |
Yes |
|
Time Frame for prosecution of the patent application in Vietnam
|
Stage |
For PCT application |
For Non-PCT application |
|
Formality examination |
Within 32th months counted from the priority date; or earlier if requested |
Within 01 months counted from the filing date |
|
Publication of application |
After 2 months counted from the acceptance date |
Within 19th month counted from the priority date; or Within 02 months counted from filing a request for earlier publication or acceptance date, depending on the date comes later |
|
Substantive examination |
Within 18 months counted from the publication date or requesting date of the substantive examination depending on the date comes later. |
The same as for PCT application |
Opposition/Observation
|
|
Opposition |
Observation (as opinion of the third party) |
|
Time limit |
Within 09 months counted from the publication date (newly applied) |
From the publication date to before granting date |
|
Procedure |
– The opposition is notified to the application to respond, – The response may be forwarded to the opposer if it is necessary; and – A dialogue between the two party can be held by the IPVN; – The final result will be notified to the opposer. |
There is no regulation for this specific action, it is considered as a reference for examiner and there is no official notification sent to the third party. |
Accelerate examination
Base
– PPH program between IPVN and KIPO and between IPVN and JPO;
– ASPECT program between IPVN and IPO of ASEAN countries;
– Using the examination result of corresponding patent application in the foreign countries (newly applied): there is no specific regulation in relation of list of the acceptable foreign countries but under our experience the following countries are preferred: China, US, EAPO, Russia, EPO, KIPO, JPO.
Advantages
The time frame of the substantive examination of the patent application in Vietnam is shortened from 18 months as normal or more as practice to 9-12 months counted from the request for accelerating examination is approved.
The Foreign Filing License
Regulation relating to the foreign filing license is presented as the regulation of the first filing requirements as follows:
The first filing requirements: the application must be firstly filed in Vietnam to be subjected of security control procedures, if not this application will be refused in Vietnam or considered withdrawn (newly applied)
“firstly filed in Vietnam” means that:
- the first patent application is filed with the IPVN as domestic application; OR
- the first patent application is filed in Vietnam as PCT originated from Vietnam with IPVN is the Receiving Office.
Grounds for invention being a subject to the first filing requirements:
(i) The technical field of the invention impacts the national defence and security: it is determined by list of the following subjects:
Weapons include ammunition; chemical, biological, nuclear weapons and other weapons used in the military; Explosives; Military equipment; Equipment, technology used for intelligence, espionage, and criminal investigation activities; Support tools, means, technical equipment, and methods used in activities related to security and the national defence.
(ii) The invention is created in Vietnam: There is no specific regulation related to this condition but under our experience this condition is applied as all of inventors are Vietnamese having residence in Vietnam; and
(iii) The applicant is Vietnamese individual having residence in Vietnam or is organization established under Vietnamese law.
Security control procedure
|
Domestic application |
PCT application |
|
The applicant must determine by themselves that whether the subject matter of the invention belongs to the one of the listed subjects in the above Item (i) or not. If yes, the next actions are performed |
The receiving Office (IPVN) itself must determine that whether the subject matter of the invention belongs to the one of the listed subjects in the above Item (i) or not. If yes, the next actions are performed |
|
The applicant submits a notification intending to file the application to the foreign country to the IPVN and the Patent Examination Center will proceed the next steps |
The Registration Division sends a request to control security to the Patent Examination Center and the Patent Examination Center will proceed the next steps |
|
If there is doubt that the invention belongs to the list in item (i), stop proceeding the application; and inform this action to the applicant to wait for final decision whether the invention belongs to the list in item (i) or not. If yes, the applicant is required to carry out procedures in accordance with the provisions of the law on the protection of state secrets; and/or proceed to destroy application. The applicant may appeal against that decision if there are valid grounds. If not, the application is approved to file with the foreign IP Office. The State Agency determining/informing the impact of invention on the national defence and security: IPVN The State Agency to assist in determining the impact of patents on national security and defence: the Ministry of Defence and the Ministry of Public Security |
|
With over 20 years of experience in the intellectual property field, Ageless IP Attorneys & Consultants is a trusted licensed IP Agent for patent registration in Vietnam. Should you have any questions, please do not hesitate to contact us via email at info@ageless.vn