A brief introduction of patent protection system in Vietnam

Patent protection in Vietnam was first in force as defined in the Decree 31/CP dated 23 January 1981 and Regulations on technical innovation, rationalization of production and patent. Accordingly, in Vietnam technical solutions shall be granted with Certificate for Inventors or Patent Certificate if they meet such protection conditions as novelty, inventive step and susceptibility of industrial application. This Decree came into effect until 11 February 1989 (as the birth date of Ordinance of industrial property protection). In this period, Vietnam only granted Certificate of Patent Author. This Decree came into effect until 11 February 1989 (as the birth date of Ordinance of  industrial property protection). In this period, Vietnam only granted Certificate of Patent Author. The protection of inventions in the form of inventor’s certificates was proved to be particularly inappropriate when Vietnam moved toward a market economy in 1986. Thus, the Regulations on Utility Solutions provided for in Decree 200-HDBT were passed in 1988, providing for the protection of utility solutions in the single form of patent. Also in 1988, the Regulations on Industrial Designs were issued under Decree 85-HDBT creating protection for industrial designs by certificates of industrial design.

Exclusive rights over inventions and utility solutions were introduced in Vietnam under the 1989 Ordinance (1989 Ordinance) on Protection of Industrial Property, which established patents as the title of protection for inventions and utility solutions. After the 1989 Ordinance, Decree 84-HDBT was passed by the Council of Ministers (now the Government) to make amendments and additions to the Regulations on Inventions, Utility Solutions, and Industrial Designs.

Under the Civil Code of Vietnam which was introduced in 1995, the patent regime in Vietnam came under the governance of such law and its implementing regulations related to IP matters. The regulations included Government Decree 63/CP dated 24 October 1996 on Industrial Property (Decree 63/CP), Circular 29, and Circular 30. Various changes have been made to inventions or utility solutions as compared to the 1989 Ordinance.

Law on Intellectual Property of Vietnam was passed by the National Assembly of Vietnam on 19 November 2005 and came into force on 01 July 2006. According to Vietnam IP Law 2005, legal provisions on patent protection in Vietnam are almost in conformity with international standards provided in TRIPS Agreement.

Definition

A patent is a right granted to the owner of an invention to prevent others from making, using, importing or selling the invention without the owner’s permission. A patent may be obtained for a product or a process that gives a new technical solution to a problem or a new method of doing things, the composition of a new product, or a technical improvement as to how certain objects work. Per Article 4.12 of Vietnam IP Law, 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. Invention is one category of industrial property rights. Under Article 6.3 of Vietnam IP Law, industrial property rights to an invention shall be established on the basis of a decision of the competent State body to grant a protection title in accordance with the registration procedures stipulated in this Law or the recognition of international registration pursuant to an international treaty of which the Socialist Republic of Vietnam is a member. To qualify for patent protection, products or processes must show ‘inventiveness’ (a new technical solution or improvement to a product or process), ‘novelty’ (it has not been previously published or disclosed to the public), and an ‘industrial applicability’

Types of Patent in Vietnam

Under Vietnam IP Law, there are two types of patents:

1.  Patent for inventions;
2. Patent for utility solutions (known as  ‘Utility  Model Patents’ in China and several EU countries such as Austria, Belgium,  Denmark,  Finland,  France,  Germany,                                   Italy,  and  the  Netherlands,  among  others); 

Requirements for protection of inventions in Vietnam

Eligibility for patent protection in Vietnam

An invention shall be eligible for protection in the form of the grant of an invention patent in Vietnam when it satisfies 03 (three) conditions: (a) It is novel; (b) It is of an inventive nature; (c) It is susceptible of industrial application.

(i) Novelty of inventions (Article 60 of Vietnam IP Law): To meet the standard of novelty, inventions must not have been disclosed publically either inside Vietnam or elsewhere prior to the filing date (or ‘priority date’ if an application has already been made within 12 months in another Paris Convention member state). There are however some exceptional circumstances where a patent may still be granted even where the invention has been previously disclosed:

• If the person who previously disclosed the invention did not have the right to register the patent
• If the invention was disclosed by the applicant in the form of a scientific report
• If the applicant displayed the invention at a national exhibition in Vietnam or another officially recognised international exhibition

(ii) Inventive nature of inventions (Article 61 of Vietnam IP Law): An invention is deemed as being ‘inventive’ if the invention constitutes an inventive process, and cannot easily be created by a person with average knowledge in the relevant field. Assessments are made taking into account technical solutions that have already been publically disclosed prior to the filing (or priority) date.

(iii) Inventions which are susceptible of industrial application (or industrial applicability) (Article 62 of Vietnam IP Law): ‘Industrial applicability’ is defined as being capable of mass manufacture/production of the product or repeat application of the inventive process, in a way which achieves stable results.

Ineligibility for patent protection in Vietnam

Per Article 59 of Vietnam IP Law, for inventions, the following shall be exempted from protection under the current IP Law:

1. discoveries, scientific theories, mathematical methods;
2. schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;
3. presentations of information;
4. aesthetic solutions;
5. plant varieties, animal varieties;
6. essentially biological processes for the production of plants and animals except microbiological processes; and
7. preventative, diagnostic and therapeutic methods for treatment on the human or animal body

Patent application in Vietnam

Per Article 100, Vietnam IP Law, upon filing a patent application for invention in Vietnam, the following are required to be submitted to the Vietnam Patent Office:

•  Request for patent for invention made in the prescribed form;
• Specification of the invention, including description and claims;
•  Abstract of the invention;
• Document attesting the entitlement to file an application if the applicant has been assigned that right from another person;
• Priority document if priority is claimed (i.e. a copy of the first application(s) certified by the receiving office);
• Power of Attorney (if the application is filed through a representative); and
• Filing fee receipt.

Requirements on applications for registration of inventions in Vietnam:

For PCT application:

• Name, address and nationality of applicant/inventor;
• Information on the PCT application number or WIPO's publication number;
• Copy of amended patent specification (if any) for national phase entry;
• Signed Power of Attorney of applicant appointing KENFOX as his/her patent agent in Vietnam; and
• Signed Deed of Assignment, if applicant is not that of the international application.

Notes:

• Language of filing: Vietnamese;
• Original documents (iv) and (v) are required within 34 months from priority date. Notarization is not required; and
• National phase deadline under both Chapter I and Chapter II is 31 month from priority date.

For Non-PCT application:

• Name, address and nationality of applicant/inventor;
• Copy of patent specification (in English);
• Priority document where priority is claimed. Priority data (application number, filing date and country) is required at filing;
• Signed Power of Attorney from applicant appointing KENFOX as his/her patent agent in Vietnam; and
• Signed Deed of Assignment, requested only if: (a) Applicant is individual not the inventor; or (b) Applicant is organization not the applicant of the priority application.

Notes:

• Language of filing: Vietnamese;
• Originally certified copy of document (3) is required within 03 months from filing date;
• Original document (4) is required within 01 month from filing date. Notarization is not
• Required; and
• Original document (5) is preferably submitted within 01 month from filing date. Notarization is not required.

Request for substantive examination of invention in Vietnam:

• Deadline for request for substantive examination is 42 months for inventions and 36 months for utility solutions from priority date.
• Cost for request for substantive examination is charged for each independent claim and depends on the number of pages of patent specification.

Timeline:

Formality examination of patent applications in Vietnam:

01 month from filing date. All patent applications shall be automatically examined as to form within the statutory period of one (01) month from the filing date. However, for PCT-derived applications, the formality examination of such applications shall not be conducted before the expiration of 31 month period unless the applicant otherwise requests.  If the formalities are met, a Decision on Formality Acceptance shall be issued by Vietnam Patent Office to confirm the accorded filing date and assigned application number. The filing date may be: (i) the actual date on which Vietnam Patent Office receives the application and stamps the receiving seal thereon; or (ii) the international filing date of the PCT application if national patent application is a PCT-derived application.

If the patent application is objected due to: (i) certain defects in form, (ii) the subject matter of the invention being statutorily unpatentable, (iii) the applicant not being entitled to file application, or (iv) the application being filed in an improper manner, a Notice of Defect(s) of the application shall be issued by Vietnam Patent Office and the applicant shall be given a 2-month period counted from the date of the Notice in order to correct such defects.  Such a set period of time can be extended once for another two months by filing a request for extension of time to Vietnam Patent Office. Such informalities shall not affect the filing date.

The applicant may, at any time prior to the Decision on Refusal or Decision on Grant, make amendments, additions, or divisions to the application, but not beyond the disclosure or so as to change the nature of the invention or industrial design originally claimed; or a fresh application needs to be filed.  The amendments may also be made to the name and address of the applicant, the name and nationality of the author(s), the change of the applicant as a result of the assignment of application or inheritance, merger, acquisition or division of legal entities or the like

Publication of patent applications in Vietnam:

in 19th month from the priority date or within 02 months from the date of acceptance as to form, whichever is later. All patent applications accepted as to form shall be published in the Official Industrial Property Gazette for the purpose of third party observation/opposition. Applications for inventions/utility solutions in Vietnam shall be published in the 19th month from the filing date, or the priority date where priority is claimed; or in the second month from the date of acceptance as to form, whichever is later. Early publication is available at the applicant’s request. A PCT-derived application is usually published in the second month from the date of acceptance of the application.

Substantive examination of patent applications in Vietnam:

18 months from publication date of application or date of receipt of Request for Substantive Examination, whichever is later.

The examination for patent applications in Vietnam shall be carried out only upon request for examination from either the applicant or a third party, subject to payment of an appropriate fee. Such a request shall be submitted to Vietnam Patent Office within forty two (42) months for inventions, counted from the filing date or the date of priority if the priority is claimed, or the application shall be deemed to have been withdrawn. The time limit for making request for substantive examination of a patent application for utility solution is thirty six (36) months.

Substantive examination is conducted by Vietnam Patent Office in order to determine whether the claimed invention is patentable. The time limit for substantive examination for invention/utility solution applications eighteen (18) months, computed from the publication date of the application if a request for substantive examination is filed prior to the publication date or from the date of receipt of a request for substantive examination if such request is filed after the publication date.

If the patentability requirements are met, or the applicant has properly rectified the deficiencies or successfully rebutted the examiner’s rejection(s), Vietnam Patent Office will issue a “Notification of Intention to Grant” notifying the applicant of its intention to grant a patent, and shall set an three month period of time for the applicant to furnish the IP Vietnam with the required fees for issuance, publication, registrar, and the first annuity

• Estimated time for obtaining patent: from 36-42 months from filing.
• Validity term: 20 years for patent for invention; 10 years for patent for utility solution, from the filing date.

Sample Patent Application in Vietnam: Download

Sample Invention Patent in Vietnam:    Download