FAQs

How about patent procedure in Vietnam?

Applicants should be aware of the examination process a patent going through the National Office of Intellectual Property of Vietnam (NOIP). This process is begun with the filing of a patent application with NOIP and completed by granting a patent.

(1) Filing the application

In order to obtain the patent right in Vietnam, you must file the application for granting a Patent (for Invention and for Utility solution separately), directly or by mail, to the National Office of Intellectual Property of Vietnam (NOIP) or its brand offices in Ho Chi Minh City or Da Nang.

Organizations, individuals of Vietnam, foreign individuals permanently residing in Vietnam and foreign organizations and individuals having a production or trading establishment in Vietnam may file applications for a patent either directly or through a lawful representative in Vietnam.

Foreign individuals not permanently residing in Vietnam, foreign organizations and individuals not having a production or trading establishment in Vietnam shall file applications for a patent through a lawful representative in Vietnam.

Besides, foreign applicants can also obtain a patent right in Vietnam by filing an international application which designates or selects Vietnam through the PCT system. Applicant must carry out procedures for registration of an invention under the PCT’s provisions at NOIP within 31 months from the international filing date or from the priority date, if the priority right is claimed in the application.

The first-to-file principle

Vietnam adopts the first-to-file system, i.e. where two or more applications are filed by many different parties for registration of the same invention, the patent may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions for the grant of patent and having the same earliest priority or filing date, the patent may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement, all these applications shall be refused for the grant of a patent.

Accordingly, it is advisable to file an application for a patent as soon as possible after the invention and not to make the invention public before filing the application.

(2) Formality examination

A patent application filed with the NOIP shall be subject to formal examination for evaluating its validity.

The time limit for formality examination of an application is one (1) month from the filing date. In the course of formality examination, if the applicant corrects or supplements documents on his/her own initiative or upon the request of the NOIP, the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.

(3) Request for correction and amendment

Before the expiration of the time limit above, the NOIP shall complete the formality examination of applications and send notices on examination results to applicants.

For a valid application, the NOIP shall send to the applicant a notice on acceptance of valid application.

For an application failing to meet formal requirements, the NOIP shall issue:

– a notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal and set a time limit of two months from the date of notification for the applicant to give opinions or correct errors;

(4) Refuse to accept the valid application

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application and, upon the applicant’s request, refund the paid fees and charges for jobs to be done after the formality examination.

The applicant and all organizations and individuals having rights and interests directly related to decision may lodge complaints with the Director General of NOIP or initiate a lawsuit at court if they disagree with this decision within 90 days from the date the person having the right to complaint receives the notice of this decision.

Within 10 days from the date of receipt of a complaint about the decision of refusal, NOIP shall issue a notice of acceptance or rejection of such complaint, clearly stating the reason(s) for rejection.

Upon the expiration of the time limit for settlement of the complaint about the decision concerning the patent application (the 1st complaints), if the complaint is not settled or complainants disagree with complaint-settling decisions of the NOIP, the complainants or persons having rights and interests directly related to the decision may further lodge their complaints (the 2ndcomplaints) to the Minister of Science and Technology or initiate lawsuits at court within 30 days from the date of expiration of the time limit for settlement of the 1st complaint if by that date the 1stcomplaint is not settled, or from the date the person having the right to complaint receives or knows about the decision on settlement of the 1st complaint. Upon the expiration of the time limit for settlement of the 2nd complaint above or if the complainant disagree with complaint-settling decisions of the Minister of Science and Technology, such complainant or person may initiate lawsuits at court.

(5) Publication of the Patent Application

The patent application accepted as valid shall be published by the NOIP in its Industrial Property Official Gazette in the nineteenth (19) month from the date of priority 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, whichever is later for oppositions 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.

Patent applications containing a request for earlier publication shall be published within two (2) months from the date the NOIP receives that request or the date it is accepted as a valid application, whichever is later.

(6) Request for the Substantive Examination

An substantive examination of the application will be carried out only for which the applicant or a third party has filed a request for examination and paid the examination fees within 42 months as of the filing date or the priority date, as applicable, and the time limit for making request for substantive examination of an patent application involving a request for a utility solution patent shall be 36 months counting from the filing date or the priority date, as applicable.

Where no request for substantive examination is filed within the time limit mentioned above, the invention registration application shall be considered having been withdrawn at the expiration of that time limit.

(7) The Substantive Examination

The purpose of substantive examination of patent applications is to assess the patentability of objects claimed in the application under the requirements and corresponding protection scope. A substantive examination will be carried out by examiners of the NOIP within 18 months from the date of receiving the request for substantive examination.

If the applicant, in the course of substantive examination, corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the NOIP, the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.

(8) Notification of the Substantive Examination Results

On the date of expiration of the time limit for substantive examination of an application at the latest, the NOIP shall send to the applicant one of the following notices:

– a notice on its intended refusal to grant a patent, clearly stating the reason(s) for refusal, possibly guiding the change of the protection scope and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements (The applicant may request prolongation of the time limit), if the object claimed in the application fails to satisfy the protection conditions.

– a notice on its intended refusal to grant a patent, clearly pointing out errors and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to justify or correct errors. (The applicant may request prolongation of the time limit), if the object claimed in the application satisfies the protection conditions but the application still contains errors.

– or makes reasonable justifications within the time limit above, a notice on its intended grant of a patent and request the applicant to pay the fee as referred to in the Item (10), if the object claimed in the application satisfies the protection conditions or makes reasonable justifications within the time limit above.

(9) The Decision of Refusal

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application.

When dissatisfaction is in the decision of refusal of examiners, the applicant may appeal against the decision of refusal with Director General of NOIP or initiate lawsuits at court in accordance with procedures mentioned in the item (4) above.

(10) Request to pay fee

As mentioned in the Item (8), if the patent is granted, the NOIP shall request the applicant to pay the fee for the grant of a patent, the fee for notification of the patent grant decision, the registration fee and the fee for maintenance of the first year’s validity of the patent.

(11) Issue the Patent

Within 10 days after applicants pay fully and on time the fees and charges, the NOIP shall carry out the procedures for granting the patent for the invention.

(12) Entry into the National Register of Industrial Property and publication of the patent

The Patent shall be recorded in the National Register of Inventions and the decision on granting the patent shall be published by the NOIP in the Industrial Property Official Gazette within two (2) months from the date of issuance and after applicants pay a publication fee.

 Note:

(i)     As from the date an patent application is published the Industrial Property Official Gazette until prior to the date of decision on the grant of a patent, any third party shall have the right to present opinions to the NOIP in relation to the grant or refusal of the patent in respect of the application. Such opinions must be given in written form and be accompanied by materials or must specify the source of information used for proving.

(ii)   The time limit for re-examination of patent applications shall be equal to two thirds of, and in complicated cases extendable up to, the time limit for initial examination.

(iii)“PCT applications” include: (a) applications containing a claim for the protection in Vietnam and filed in any member countries of the PCT, including Vietnam (PCT applications designating or selecting Vietnam); (b) applications filed in Vietnam and containing a claim for the protection in any member countries of the PCT, including Vietnam (PCT applications originating from Vietnam).

How about design procedure in Vietnam

(1) Filing the application

In order to obtain right for industrial design in Vietnam,you must file the application for granting an industrial design patent, directly or by mail, to the National Office of Intellectual Property of Vietnam (NOIP) or its brand offices in Ho Chi Minh City or Da Nang.

Organizations, individuals of Vietnam, foreign individuals permanently residing in Vietnam and foreign organizations and individuals having a production or trading establishment in Vietnam may file applications for an industrial design patent either directly or through a lawful representative in Vietnam.

Foreign individuals not permanently residing in Vietnam, foreign organizations and individuals not having a production or trading establishment in Vietnam shall file applications for an industrial design patent through a lawful representative in Vietnam.

The first-to-file principle

Vietnam has adopted the first-to-file system, i.e. where two or more applications are filed by many different parties for protection of the same design, the patent may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions and having the same earliest priority or filing date, the industrial design patent may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement, all these applications shall be refused for the grant of the industrial design patent.

Accordingly, it is advisable to file an application for an industrial design patent as soon as possible after the design was invented and not to make the design public before filing the application.

(2) Formality examination

An application for an industrial design patent filed with the NOIP shall be subject to formality examination for evaluating its validity.

The time limit for formality examination of an application is one (1) month from the filing date. In the course of formality examination, if the applicant corrects or supplements documents on his/her own initiative or upon the request of the NOIP, the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.

(3) Notification of the formality examination result

Before the expiration of the time limit above, the NOIP shall complete the formality examination of applications and send notices on examination results to applicants.

For a valid application, the NOIP shall send to the applicant a notice on acceptance of valid application.

For an application failing to meet formal requirements, the NOIP shall send to the applicant: a notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal and set a time limit of two months from the date of notification for the applicant to give opinions or correct errors;

(4) Refuse to accept the valid application

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application and, upon the applicant’s request, refund the paid fees and charges for jobs to be done after the formality examination.

Applicants and all organizations and individuals having rights and interests directly related to the decision may lodge a complaint with the Director General of NOIP or initiate a lawsuit at court if they disagree with this decision within 90 days from the date the person having the right to complaint receives the notice of this decision.

Within 10 days from the date of receipt of a complaint about the decision of refusal, NOIP shall issue a notice of acceptance or rejection of such complaint, clearly stating the reason(s) for rejection.

Upon the expiration of the time limit for settlement of the complaint about decisions or notices concerning the application for an industrial design patent (the 1st complaints) by the NOIP such decisions or notices, if the complaint is not settled or the complainant disagree with complaint-settling decisions of the NOIP, the complainant or person having rights and interests directly related to the decision may further lodge their complaints (the 2nd complaints) to the Minister of Science and Technology or initiate a lawsuit at court within 30 days from the date of expiration of the time limit for settlement of the 1st complaint if by that date the 1st complaint is not settled, or from the date the person having the right to complaint receives or knows about the decision on settlement of the 1st complaint. Upon the expiration of the time limit for settlement of the 2nd complaint above or if the complainant disagree with complaint-settling decisions of the Minister of Science and Technology, such complainant or person may initiate a lawsuit at court.

(5) Publication of the application

Within 2 months as from the date the application is accepted as formally valid, it will be published in the Industrial Property Official Gazette for oppositions and comments of third parties. Applicant shall pay a fee for such publication.

(6) Substantive Examination

The purpose of substantive examination of design applications is to assess the eligibility of objects claimed in the application under the requirements and corresponding protection scope. An examination will be carried out by examiners of the NOIP within 6 months from the date of publication.

If the applicant, in the course of substantive examination, corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the NOIP, the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.

(7) Notification of substantive examination results

On the date of expiration of the time limit for substantive examination of an application at the latest, the NOIP shall send to the applicant one of the following notices:

– a notice on its intended refusal to grant an industrial design patent, clearly stating the reason(s) for refusal and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements(the applicant may request prolongation of the above time limit),if the object claimed in the application fails to satisfy the protection conditions;

– a notice on its intended refusal to grant an industrial design patent, clearly pointing out errors and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to justify or correct errors (The applicant may request prolongation of the above time limit), if the object claimed in the application satisfy the protection conditions but the application still contains errors;

– a notice on its intended grant of an industrial design patent and request the applicant to pay the fee as referred to in the Item (9),if the signs claimed in the application satisfy the protection conditions or the applicant satisfactorily corrects errors or makes reasonable justifications within the time limit;

(8) Notification of refusal

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application.

When dissatisfaction is in the decision of refusal of examiners, the applicant may appeal against the decision of refusal with Director General of NOIP or initiate lawsuits at court in accordance with procedures mentioned in the item (4) above.

(9) Notification of intention to grant an industrial design patent and request to pay fee

If examiners judge that the application fulfills the requirements, NOIP will issue a notification of its intention to grant the industrial design patent and request to pay fee for the issue of an industrial design patent to the applicant.

(10) Issue the Industrial design patent

Within 10 days after applicants pay fully and on time the prescribed fees and charges, the NOIP shall carry out the procedures for granting the industrial design patent.

(11) Entry into the National Register of Industrial Property and publication of the industrial design patent

The Industrial design patent shall be recorded in the National Register of Industrial Design and the decision on granting the patent design shall be published by the NOIP in the Industrial Property Official Gazette within two (2) months from the date of issuance and after the applicant pays a publication fee.

How about trademark procedure in Vietnam

(1) Filing the application

The application for a mark registration must be filed directly or by mail, to the National Office of Intellectual Property of Vietnam (NOIP) or its brand offices in Ho Chi Minh City or Da Nang.

Organizations, individuals of Vietnam, foreign individuals permanently residing in Vietnam and foreign organizations and individuals having a production or trading establishment in Vietnam may file applications for a mark registration either directly or through a lawful representative in Vietnam.

Foreign individuals not permanently residing in Vietnam, foreign organizations and individuals not having a production or trading establishment in Vietnam shall file applications for a mark registration through a lawful representative in Vietnam.

Foreign applicants can obtain a mark registration in Vietnam by filing an international application with the International Bureau of the World Intellectual Property Organization (WIPO) which designates Vietnam through the Madrid Agreement or the Madrid Protocol or both of them.

The first-to-file principle

Vietnam has adopted the first-to-file system, i.e. where two or more applications are filed by many different parties for registration of the same mark, the registration may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions and having the same earliest priority or filing date, the registration may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement, all these applications shall be refused for the grant of a mark registration.

Accordingly, it is advisable to file an application for a patent as soon as possible after the invention and not to make the invention public before filing the application.

(2) Formality examination

An application for a mark registration filed with the NOIP shall be subject to formality examination for evaluating its validity.

The time limit for formality examination of an application is one (1) month from the filing date. In the course of formality examination, if the applicant corrects or supplements documents on his/her own initiative or upon the request of the NOIP, the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.

(3) Request for correction and amendment

Before the expiration of the time limit above, the NOIP shall complete the formality examination of applications and send notices on examination results to applicants.

For a valid application, the NOIP shall send to the applicant a notice on acceptance of valid application.

  For an application failing to meet formal requirements, the NOIP shall send to the applicant:

– a notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal andset a time limit of two months from the date of notification for the applicant to give opinions or correct errors.

(4) Refuse to accept the valid application

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application and, upon the applicant’s request, refund the paid fees and charges for jobs to be done after the formality examination.

Applicants and all organizations and individuals having rights and interests directly related to decision may lodge a complaint with the Director General of NOIP or initiate a lawsuit at court if they disagree with the decision within 90 days from the date the person having the right to complaint receives the notice.

Within 10 days from the date of receipt of a complaint about the notice of refusal, NOIP shall issue a notice of acceptance or rejection of such complaint, clearly stating the reason(s) for rejection.

Upon the expiration of the time limit for settlement of the complaint about the decision or notice concerning the application for mark registration (the 1st complaints) by the NOIP, if the complaint is not settled or the complainant disagree with complaint-settling decisions of the NOIP, the complainant or person having rights and interests directly related to those decision may further lodge their complaints (the 2nd complaints) to the Minister of Science and Technology or initiate a lawsuit at court within 30 days from the date of expiration of the time limit for settlement of the 1stcomplaint if by that date the 1st complaint is not settled, or from the date the person having the right to complaint receives or knows about the decision on settlement of the 1st complaint. Upon the expiration of the time limit for settlement of the 2nd complaint above or if the complainant disagree with complaint-settling decisions of the Minister of Science and Technology, such complainant or person may initiate a lawsuit at court.

(5) Publication of the application

Within 2 months as from the date the application is accepted as formally valid, it will be published in the Industrial Property Official Gazette for oppositions and comments of third parties. Applicants shall pay a fee for such publication.

(6) Substantive Examination

The purpose of substantive examination of mark applications is to assess the eligibility of objects claimed in the application under the requirements and corresponding protection scope. An examination will be carried out by examiners of the NOIP within 6 months from the date of publication.

If the applicant, in the course of substantive examination, corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the NOIP, the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.

(7) Notification of substantive examination results

On the date of expiration of the time limit for substantive examination of an application at the latest, the NOIP shall send to the applicant one of the following notices:

– a notice on its intended refusal to grant a mark registration, clearly stating the reason(s) for refusal and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements. (the applicant may request prolongation of the above time limit), if the signs claimed in the application fails to satisfy the protection conditions;

– a notice on its intended refusal to grant a mark registration, clearly pointing out errors and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to justify or correct errors. (the applicant may request prolongation of the above time limit), If the signs claimed in the application satisfy the protection conditions but the application still contains errors;

– a notice on its intended grant of a mark registration and request the applicant to pay the fee as referred to in the Item (9), if the signs claimed in the application satisfy the protection conditions or the applicant satisfactorily corrects errors or makes reasonable justifications within the time limit above.

(8) Notification of refusal

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application.

When dissatisfaction is in the decision of refusal of examiners, the applicant may appeal against the decision of refusal with Director General of NOIP or initiate lawsuits at court in accordance with procedures mentioned in the item (4) above.

(9) Notification of intention to grant a mark registration and request to pay fee

If examiners judge that the application fulfills the requirements, NOIP will issue a notification of its intention to grant the mark registration and request to pay fee for the issue of a mark registration to the applicant.

(10) Issue the Mark Registration Certificate

Within 10 days after applicant pays fully and on time the prescribed fees and charges, the NOIP shall carry out the procedures for granting the Mark Registration Certificate.

(11) Entry into the National Register of Industrial Property and publication of the Mark Registration Certificate

The Mark Registration Certificate shall be recorded in the National Register of Marks and the decision on granting the mark registration shall be published by the NOIP in the Industrial Property Official Gazette within two (2) months from the date of issuance and after applicant pays a publication fee.

For the international mark registered through the Madrid system, the NOIP shall, if accepted for protection, issue and publish a decision on acceptance for protection of an internationally registered mark in its Industrial Property Official Gazette. At the request of an internationally registered mark owner, the NOIP issues a certificate of protection in Viet Nam of the internationally registered mark.

Note:

(1) For an application for international mark’s registration designating Vietnam, the NOIP shall conduct the substantive examination of the application according to the procedures applicable to mark registration application filed directly with the NOIP. Within 12 months after the International Bureau issues the notice, the NOIP shall make a conclusion on protectability of the mark.

(2)Procedures for mark international registration applications originating in Vietnam: the procedures for processing mark registration applications will also apply to the processing of mark international registration applications at the NOIP.

(3) Rights to well known marks are protected and belong to proprietors of those marks without any registration procedures. If a well-known mark is recognized according to civil procedures or under a recognition decision of the NOIP, that well-known mark shall be recorded in the list of well-known marks kept at the NOIP.

(4) As from the date an trademark registration application is published the Industrial Property Official Gazette until prior to the date of decision on the grant of a Mark registration Certification, any third party shall have the right to present opinions to the NOIP in relation to the grant or refusal of a Mark registration Certification in respect of the application. Such opinions must be given in written form and be accompanied by materials or must specify the source of information used for proving.

What are the principal sources of law and regulation relating to patents and patent litigation?

The principal sources of law and regulations relating to patents and patent litigation in Vietnam are the following:

– Civil Code 2005, in particular section 6.

– Law on Intellectual Property 2005 (as amended in 2009).

– Decree No. 103/2006/ND-CP dated 22 September 2006 (as amended by Decree No. 122/2010/ND-CP dated 31 December 2010), providing detailed regulations and guidelines on a number of articles of the Law on Intellectual Property 2005.

– Decree No. 105/2006/ND-CP dated 22 September 2006 (as amended by Decree No. 119/2010/ND-CP dated 30 December 2010), providing detailed regulations and guidelines on IP regarding the protection of IP rights and state management of IP rights.

– Decree No. 99/2013/ND-CP dated 29 August 2013 on administrative penalties in the area of industrial property.

– Circular No. 11/2015/TT-BKHCN dated 26 June 2015, which provides guidance on the implementation of Decree No. 99/2013/ND-CP.

– Joint Circular No. 02/2008/TTLT-TANDTC-VKSNDTC-BVHTT&DL-BKH&CN-BTP providing guidelines on the application of a number of provisions of the law on the resolution of intellectual property disputes in the People’s Court, issued by the Supreme People’s Court, Supreme People’s Procuracy, Ministry of Culture, Sports and Tourism, Ministry of Science and Technology, and Ministry of Justice on 3 April 2008.

Vietnam is a member of the following international treaties:

– WIPO Paris Convention for the Protection of Industrial Property 1883.

– Patent Cooperation Treaty 1970.

– WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (Vietnam is a member country of the WTO).

Vietnam is not a party to the Agreement on a Unified Patent Court.

In the case of conflict, in theory, the following sources will take precedence in order of priority:

– International treaties.

– Law and codes, which are adopted by the National Assembly.

– Decrees, which are introduced by the government.

– Circulars and joint circulars, which are issued by the ministers in the relevant ministries.

However, in practice, as circulars and joint circulars often contain detailed guidelines and regulations for applying the laws in practice, the implementing and enforcement authorities usually give higher weight to them.

Which subject matters are patentable under Vietnamese patent legislation?

Under Article 4.12 of Vietnamese Intellectual Property Law2005 (IP Law 2005), which took effect from 1 July 2006, an invention is defined as ‘a technical solution, in form of a product or a process, to resolve a specific problem by utilizing laws of nature.’ In accordance with article 59 of the same law, ‘the following subject matter shall not be protected as inventions:

  1. Scientific discoveries or 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. Solutions of aesthetical characteristics only;
  5. Plant varieties, animal breeds;
  6. Processes of plant or animal production which are principally of biological nature other than microbiological ones;
  7. Human and animal disease prevention, diagnostic and treatment methods.

Relate to the item 7, before IP Law, in certain cases, such claims may survive if converted into the Swiss-type format. However, after implementing IP Law 2005, National Office of Intellectual Property of Vietnam (NOIP) has raised objections to ‘use-type’ claims on the grounds that they relate neither to a process nor a product, and therefore, cannot be regarded as a statutory subject matter. Another rewording format as “Compound/composition for use…” is also rejected in case the compound/composition is known because of interpreting as compound/composition per se without considering the functional features. Recently, even through the compound/composition meets all the patentability criteria, this type of claims is still rejected if it is dependent claims.

It is clear that the law explicitly excludes, inter alia, software, business methods and medical methods from protection. In practice, in order to determine whether a software-related or business method-related invention is patent-eligible, the NOIP applies a two-prong machine-or-transformation test. Normally, a computer program claim is acceptable if it is drafted in the form of ‘a computer-readable medium having a computer program embodied therein’.

Frequently Asked Questions about Patents in Vietnam

How long is the term of patent in Vietnam?

The term of validity for a patent for invention is 20 years, while such a term for a patent for utility solution is 10 years, counted from the filing date (in case of PCT application, the term will count from the PCT filing date).

May patent owner amend the patent claims during term of validity of patent?

During the term of validity of a patent, the patent owner may file a request for modifying the patent by cancellation of one or more claims in the patent, it means that patent owner may only narrow the scope of claims. Any third party may file a request for invalidation of a patent if the patent has been granted on non-patentable basis (enablement, support, novelty, inventive step and industrial applicability). The patent may be terminated if the owner does no longer exist, fails to pay maintenance fee or surrenders his or her patent.

During a lawsuit, a court may hold a claim valid or invalid but may not amend the claims in a challenged patent.

What is “first to file” principle?

The ‘first to file’ principle is principle for determining the priority right. In according to Article 90 of the IP Law, where two or more patent applications have been filed by several independent applicants for the same invention, a patent may only be granted to the patent application with the earliest filing date or priority date, where applicable. If more than one patent application has been filed by different applicants for the same invention and with the same priority conditions, namely with the same priority date, the Office shall invite all the applicants to jointly file a single patent application as co-applicants. If the applicants cannot reach such an agreement, all the subject patent applications will be rejected.

Is there observation procedure in Vietnam?

Article 112 of the current Vietnamese IP Law provides that as from the publication date of a patent application until prior the date of grant, any third party may request rejection of a patent application by submitting arguments together with relevant documents, information with respect to the patent application.

After granted, any third party may file a request for invalidation of a patent if the patent has been granted on non-patentable basis.

Is it possible to appeal an adverse decision by the patent office?

Under the law, if dissatisfied with an adverse decision from the NOIP, an applicant or any third party may file a petition to appeal such decision with the minister of the Ministry of Science and Technology or file an appeal before the competent administrative court.

Must an inventor disclose prior art to the patent office examiner?

Vietnamese IP Law encourages inventors to disclose prior art to the patent office, in some cases, patent examiner can ask the applicant to provide non-patent documents which he/she searched, but does not contemplate any sanctions against the inventors who deliberately hide the prior art known to them.

Are any mechanisms available to obtain a compulsory license to a patent? How are the terms of such a license determined?

According to article 145 of the IP Law, compulsory licenses or non- voluntary license can be granted for use in the public interest or in the case of non-working or insufficient working of a patent, or based upon the interdependence of patents or a patent is being used contrary to fair business practice.

On a request of any person or organization, the Ministry of Science and Technology (MoST) or relevant ministries may grant a non-voluntary license if the working of the patented invention is considered necessary to meet the demand of national defense, national security, disease prevention and treatment, nutrition for people or other urgent social needs.

 The MoST or other ministries, as per a request of any person or organization, may grant a non-voluntary license if, the patented invention or utility solution has not worked or is insufficiently working in the country; the requesting person can prove his or her ability to work the patented invention or utility solution in the country; and the owner of the patent has received a demand from the requesting person to obtain a contractual license, but the requesting person has been unable to obtain such a license on reasonable terms and within a reasonable time without receiving justified grounds from the owner of the patent.

 The MoST, upon the request of the owner of a later patent (or its registered licensee or the beneficiary of a non-voluntary license), may grant a non-voluntary license if: the invention or utility solution claimed in the patent cannot work in the country without infringing a prior patent; and the owner of the earlier patent has received a demand from the requesting person to obtain a contractual license, but the requesting person has been unable to obtain such a license on reasonable terms and within a reasonable time without receiving justified grounds from the owner of the earlier patent.

 Any person or organization can seek a decision on grant of a non- voluntary license of a patented invention if the owner of this invention, with the granted monopoly, has undertaken anti-competitive conduct.

The IP law does not provide a specific term for such licenses, leaving it for the MoST’s determination.

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Provision 2 of Article 144 of the IP Law 2005 provides that a license contract shall not have provisions unreasonably restricting the right of the licensee, in particular, provisions not deriving from the rights of the licensor, including the following:

 – Prohibiting the licensee from improving the industrial property object, except trademarks; compelling the licensee to grant a free license or to assign to the licensor the right to industrial property registration or an industrial property right in respect of such improvements;

 – Directly or indirectly restricting the licensee to export goods produced or services supplied under the industrial property object license contract to the territories where the licensor neither holds the respective industrial property right nor has the exclusive right to import such goods;

 – Compelling the licensee to buy all or a certain proportion of materials, components or equipment from the licensor or the persons designated by the licensor without aiming at ensuring the quality of goods produced or services supplied by the licensee; and

 – Prohibiting the licensee from complaining about the validity of the industrial property right or the right to license of the licensor.

Frequently Asked Questions about Industrial Design in Vietnam

What is an industrial design under Vietnam IP Law?

An industrial design is the outer appearance of a product represented by lines, form and colors, or the combinations of such elements, which has new characteristics to the world and may serve as a pattern for the manufacture of industrial products or handicrafts.

 What are criteria for an industrial design to be protected?

To be protected, an industrial design must be worldwide novel and served as a pattern for manufacture of industrial or handicraft products. In addition, industrial designs are required to possess some kind of creativeness because the current rules exclude from patentability those designs easily created by a person with ordinary skill in the art.

 Are ornamental or other non-functional features and/or functional features of a design protectable?

External appearance of an article that is an embodiment of ornamental or other non-functional features is patentable under Vietnam IP law. External appearance of an article that is determined merely by its technical function is excluded from protection as an industrial design. The design incorporating both functional and non-functional features may be protected as whole or only non-functional features.