Patent Invalidation

Per Article 96.3, Vietnam IP Law, any natural or juridical party can file a patent invalidation request with the IP Office of Vietnam. No legal interest is required.

Per Article 96.1, patent invalidation in Vietnam can be filed based on either of the two grounds: (i) The applicant(s) has not or has not been assigned the right to file the application and (ii) The subject matter(s) failed to satisfy the protection conditions at the time the patent was granted. Timeline for patent invalidation in Vietnam is at any time during the validity of a patent.

According to Vietnam IP Law and its Regulations (Article 96, IP Law & Rule 21, Circular No. 01/2007/TT-BKHCN as recently amended by Circular No. 16/2016/TT-BKHCN), the invalidation procedure at the  could be summarized as follows:

  • In 01 month from receipt of the invalidation request (by any third party), the IP Office of Vietnam shall issue a written notification, informing the patent owner of the invalidation action, and set a period of 02 months from the date of notification for the patent owner’s response. Such a set period of time can be extended once for another 02 months. In practice, the IP Office of Vietnam usually gives each party at least 02 opportunities to submit counter-statements against the arguments of the other party. The IP Office of Vietnam may also arrange working sessions meeting with the parties, if necessary.
  • The patent subjected to the invalidation request shall be re-examined by the IP Office of Vietnam.
  • The request shall consider the arguments and evidence submitted by both parties, and then issue a decision on the invalidation case, which either (i) invalidate the whole or part of the patent, or (ii) reject the invalidation request if it is found ungrounded, and maintain the validity of the patent.

In practice, it may take about 35-55 months, or even longer, for a patent invalidation case from filing till receiving the IP Office of Vietnam’s final decision on the case


Staying infringement handling in case of a patent invalidation in Vietnam:

A majority of patent invalidation cases in Vietnam occurs in the context of patent disputes where the alleged infringers are accused of patent infringement, aiming at invalidating the patent in question as a defense mechanism, with the argument that if a patent is not valid, thus, it cannot be infringed.

As provided in Article 27, Decree No. 99/2013/ND-CP, in case of a dispute (e.g. a patent invalidation) that has already arisen before the filing date of the request for enforcement, Vietnamese enforcement authorities may take either of the following options:

  • To stay the enforcement proceeding and request the involved parties to settle the dispute at a relevant authority in Vietnam before resuming the enforcement; the enforcement will then be taken in compliance with the outcome of the dispute settlement proceeding, or
  • To request the patent holder to make an undertaking, or to request the IP Office of Vietnam to confirm the legal status of industrial property rights, on which the enforcement action is based, to decide whether the enforcement action can be taken or needs to await to outcome of the dispute settlement.

In practice, option (i) is preferable by most of Vietnamese enforcement authorities when information on a dispute comes to their attention.

"Fast track" to get the patent invalidated? If yes, how long does it take?

Under the current laws of Vietnam, “fast track” of both invalidation and appeal procedures is not available. In practice, patent invalidations are often complicated cases, which need quite a long time for the parties to submit argumentation and the IP Office of Vietnam to consider the whole case before issuing their decision. Appeals concerning decisions on patent invalidation cases are also complicated. Hence, we find it quite difficult to speed up both the procedures for patent invalidation and appeals related thereto.

However, in our practice of handling our cases, we always strive to contact the key officials of relevance to keep updated of the cases and to urge the officials in charge to finish the cases as soon as possible.

If a counter patent of that patent is invalidated in other countries, this helps shortening the period of taking the process of invalidation in Vietnam?

As a matter of principle, the IP Office of Vietnam is not required to depend on any decisions on invalidation cases issued by other jurisdictions for any family patents.

However, if a counter patent (family patent) of the patent being invalidated in Vietnam is invalidated by a strong jurisdiction (e.g., EU, Japan, US, Korea, etc.) based on the grounds of lacking novelty, inventive step, or industrial applicability, and if the claims of such counter patent are the same as of the subject Vietnamese patent, we are of the opinion that this might help shortening the period of the patent invalidation proceeding in Vietnam.