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Best Practices of Patent in Vietnam

15

NOV

2018

Three subject matters: invention, utility solution and industrial design are patentable in Vietnam under the respective titles of protection as patent for invention, patent for utility solution (also equivalent to utility model, petty patent, innovation patent, small patent or minor patent in other jurisdictions), and patent for design. Like China, since Vietnam is the signatory to both of the Paris Convention and Patent Cooperation Treaty (PCT), below we would like to merely focus on the practices of protection of the two first subject matters (hereinafter referred collectively to as invention) under the 2005 IP Law as revised (the “IP Law”).

Legal Features at Glance

A. Definition: invention is a technical solution, in form of a product (substance, material, machine, composition of matter, article of manufacture) or a process (method), to resolve a specific problem by utilizing laws of nature which meets 3 criteria: novelty, creativeness (inventive step or non-obviousness), and industrial applicability. Where only the novelty and industrial applicability are satistifed, such invention may be protected as patent for utility solution. In brief, a patentable invention must be one of the following three types:

  • A product in the form of a tangible object (e.g. tool, machine, equipment, part, electric circuit, etc.) which is presented by a collection of information identifying a man-made product, characterized by signs (features) of its configuration, and functions (is utilized) as a device to meet a certain human need;
  • A product in the form of a material (e.g. material, component, food, pharmaceutical, etc.) which is presented by a collection of information identifying man-made product, characterized by signs (features) of its presence, ratios and state of its elements, and functions (is utilized) as a device to meet a certain human need; or a product in the form of a biological material (gene, genetically modified plant/animal, etc.) which is presented by a collection of information on a product containing genetic information modified by human manipulations and capable of self-regeneration;
  • A process (technological process; diagnosing, forecasting, checking or treating method) which is presented by a collection of information identifying the method of performing a given process or job, characterized by signs (features) of the order, conditions, components, methods and devices for performing manipulation to achieve a certain objective.

B. Subject matter ineligibility: discoveries, scientific theories, diagnostic and treatment methods, presentations of information, plant varieties, animal breeds, solutions of aesthetic characteristics only, computer programs including software.

C. Basis for the establishment of exclusive right: apart from the Section 131 provisional rights to inventions that rarely occurs in practice, exclusive rights are solely constituted on the basis of the grant of patent for invention (20-year validity) or patent for utility solution (10-year validity) and on the condition that their annual annuities shall be paid timely.

D. Basic requirements for application: specification including drawings (if any) and claims

E. Patent infringement: using the patent which is identical (literal) with or equivalent to, whether whole or partly, a substance, product or process are patented without permission of the patentee.

F. Defense to patent infringement: patent invalidity, exhaustion (first sale doctrine), prior commercial use, using in service of personal needs or non-commercial purpose, or for purposes of evaluation, analysis, research, teaching, testing, trial production or information collection for carrying out procedures of application for licenses for production, importation or circulation of products, using only for the purpose of maintaining the operation of foreign means of transport in transit or temporarily staying in the territory of Vietnam, using patented invention subject to non-voluntary licensing.

The Identification of Differences between Two Kinds of Applications for Patent

Those want to register their inventions in Vietnam are able to use either national route –i.e. applicant shall file a new invention claiming the Paris Convention priority in a period of 12 months (non-extendable) with the Vietnamese Patent Office –i.e. the NOIP (Convention Application or non-PCT Application), or international route –i.e. entry into the Vietnamese national phase based on a PCT application in 31 months from the earliest priority date (PCT Application). Below are the main characteristics and differences of these two common types of applications you should notice.

Convention Application (Non-PCT Application)

Filing Requirements

To enter the Vietnamese national phase of a PCT application, within a period of 31 months (not 30-month time limit commonly confused by many clients) counting from the earliest priority date or filing date, in addition to the published specification and abstract available in the WIPO’s patentscope retrievable by local patent agents, the applicant shall furnish the followings with the NOIP:

  1. A copy of the Vietnamese translation (required at time of filing) of the specification and abstract under the International Application (the specification and abstract under the as-published International Application or its copy of as filed originally (if the international application is not published), and copy of modification and explanation of modified contents, if the international application has been modified under Article 19 and/or Article 34(2)(b) of the PCT).
  2. A copy of the Vietnamese translation (normally required later at time of submission of the request for substantive examination) of the Annexes of International Preliminary Examination Report on Patentability (Form PCT/IPEA/409)
  3. A statement of re-confirmation claiming the priority date, and only where required by the NOIP, a copy of the Vietnamese translation of such priority documents must be provided.
  4. A copy of Power of Attorney simply signed by applicant (required prior to the expiry of 34th month from the earliest priority date or filing date), neither notarization nor legalization is required, must be filed.

Procedures for Formality and Substantive Examination

  1. Formality check: the completeness of the filing requirements indicated in above paragraph shall be checked by the NOIP in one month from the filing date before the NOIP issues its decision on formality acceptance of application
  2. Publication: application upon formality acceptance shall be published on the IP Gazette in the nineteen (19th) month computed from the priority date or from the filing date or within two (02) months from the date of formality acceptance, whichever date is the later.
  3. Substantive Examination: assessment of novelty, creativity and susceptibility of industrial application against as-filed invention are simultaneously conducted by the NOIP in eighteen (18) months commencing from the publication date and provided that a request for substantive examination has been lodged timely by the applicant (prior to the 42nd month for invention application or 36th month for utility solution application)
  4. Grant of Protection: a notice of allowance along with the payment of official fee including 1st year annuity are required within 3 months before the NOIP issues a patent in around 30-45 days thereafter.

PCT Application

Filing Requirements

To enter the Vietnamese national phase of a PCT application, within a period of 31 months (not 30-month time limit commonly confused by many clients) counting from the earliest priority date or filing date, in addition to the published specification and abstract available in the WIPO’s patentscope retrievable by local patent agents, the applicant shall furnish the followings with the NOIP:

  1. A copy of the Vietnamese translation (required at time of filing) of the specification and abstract under the International Application (the specification and abstract under the as-published International Application or its copy of as filed originally (if the international application is not published), and copy of modification and explanation of modified contents, if the international application has been modified under Article 19 and/or Article 34(2)(b) of the PCT).
  2. A copy of the Vietnamese translation (normally required later at time of submission of the request for substantive examination) of the Annexes of International Preliminary Examination Report on Patentability (Form PCT/IPEA/409)
  3. A statement of re-confirmation claiming the priority date, and only where required by the NOIP, a copy of the Vietnamese translation of such priority documents must be provided.
  4. A copy of Power of Attorney simply signed by applicant (required prior to the expiry of 34th month from the earliest priority date or filing date), neither notarization nor legalization is required, must be filed.

Procedures for Formality and Substantive Examination

  1. Formality check: the completeness of the requirements for the above PCT application filing shall be checked by the NOIP in one month only from the thirty-two (32) month onward commencing from the earliest priority date
  2. Publication: patent application upon formality acceptance shall be published on the IP Gazette in the nineteen (19th) month computed from the priority date or from the filing date (if there is no priority date) or within two (02) months from the date of formality acceptance, whichever date is the later.
  3. Substantive Examination: assessment of novelty, inventive step, and industrial applicability against as-filed application are simultaneously conducted by the NOIP in eighteen (18) months counted from the publication date.
  4. Grant of Protection: a notice of allowance along with the payment of official fee including 1st year annuity are required within 3 months before the NOIP issues a patent in around 30-45 days thereafter.

Some of the Best Practices for Successfully Getting a Patent

From our experience, below are some of the best practices that may be helpful for you:

  1. Government charges are charged on the basis of number of independent claims not dependent claims. Entry into the Vietnamese national phase shall be made in a period of 31 months not 30-month time limit, and the 6-month grace period after the 31-month deadline is no longer accepted.

  1. Even if lack of inventive step is advised in the International Search Report (ISR), International Preliminary Examination Report on Patentability (IPRP Chapter I), or Written Opinion of the International Preliminary Examining Authority (WO-ISA), applicant is able to enter the Vietnamese national phase as usual, if desirous, because of two reasons: (a) he can opt for, at the national phase, an option available in the request suggesting to convert such PCT-based application for patent for invention into application for patent for utility solution, and (b) the NOIP usually does not rely upon the above said ISR, IPRP and WO-ISA before it grants or denies, instead he tends to rely on the grant of protection of the patent families issued by the world’s leading patent offices like the USPTO, JPO or EPO.

  1. Novelty disclosure of non-convention patent application prior to the filing date is solely granted in very limited circumstances. Under Section 60 IP Law, in only three cases exception to lack of novelty are accepted on the condition that application for patent for invention is filed within 6 months from the date of publication, -i.e. (a) published by another person without permission of the person having the right to register it, or (b) published in the form of a scientific presentation by the person having the right to register it, or (c) displayed at a national exhibition of Vietnam or at an official or officially recognized international exhibition.

  1. “Use” claims are not presently regarded as patentable subject matters. Such formats as “Use” claim, the “Swiss-type” claim, second or further medical useclaim is not currently accepted by Vietnam at the formality examination because the NOIP always contends that these claims are not patentable subject matters by Section 4(12) of the IP Law defining patentable invention means a technical solution in the form of a product or process which is intended to solve a problem by application of natural laws, whilst claims featuring as “use of product X for…or use of product X as…” is neither a product nor a process. To be accepted by the NOIP that these claim formats are not non-patentable subject matters, applicant may proactively amend claims in the as-filed application or pending the NOIP’s office action before making amendment in the national phase, according to which they should be changed to “the composition, product… for use as…, or for use in…”. However, please bear in mind that the above NOIP’s acceptance is merely accepted provisionally as to formality, later on such type of claim will be probably rejected in the substantive examination phase because Circular 16/2016/TT-BKHCN of June 30, 2016 amending Circular 01/2007/TT-BKHCN as revised provides for that the function, utility of subject matter seeking protection is not the essential technical characteristics (signs) but solely embodies the purpose or acquired result of such subject matter. For the reason, applicant is advised to carefully consider retaining or omitting it from the as-filed invention

  1. Computer program including software, amongst other subject matters ineligible under Section 59, per se is not qualified for patentability. However, according to the NOIP’s patent examination guideline, computer program-based invention may be patentable if such program that runs in a particular computer can generate technical effect apart from the common interactive communication between the computer and program/software

  1. The status of patent family is often inquired particularly before the issuance of substantive examination report by the NOIP. This is a noteworthy practice that applicant should make good use, especially where the patent families were granted in the US, EU or Japan, by proactively providing the same for the NOIP in order for his Vietnamese application to be considerably accelerated and granted in a much shorter time, and which may be seemingly similar to the currently-running Patent Prosecution Highway (PPH) pilot between the NOIP and JPO.

  1. Annuity payment rule with abnormal 1st year annuity. Any patentee wishing to maintain validity of his granted patent shall annually pay annuity beginning from the 1st year. The time limit for paying annuity is 6 months prior to the expiry of due date on which annual annuities counting from the granting date must be paid. A grace period of 6 months is accepted provided penalty is made. However, in practice at the time of issuing a notice of allowance, to be more convenient the NOIP usually requires applicant to pay 1st year annuity together with grant and register fees. Upon receipt of grant fee including 1st year annuity, the NOIP will issue a patent in hardcopy on which indicating its decision on such grant of patent (this decision is kept internally and never sent to applicant/patentee) leading to the fact the time limit for 2nd year annuity payment and subsequent years is different from the 1st year, i.e. the due date shall be stably identified from the date of grant.

About the Firm

Bross & Partners
Address 21st Floor, Charm Vit Tower, 117 Tran Duy Hung Str., Cau Giay, Hanoi, Vietnam.
Tel 84-24-3555 3466
Fax 84-24-3555 3499
Email vinh@bross.vn
Link www.bross.vn

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