1. Definition and Registrability A trademark is defined as a sign used to distinguish the goods or services of one…
1. Definition of Invention/Utility Solution
Inventions are technical solutions relating to a product or process which is to solve a specific problem by utilizing the laws of nature. To be protected in the form of a patent for invention, an invention must be new, involve an inventive step, and be industrial applicable. The inventive step is not required for a patent for utility solution.
2. Criteria for protection of invention
To be protected, an invention must at least meet the criteria of worldwide novelty and industrial applicability. In addition, an invention must have an inventive step to be protected under a Patent for Invention. These criteria are specifically defined as follows:
An invention shall be considered to be novel if it was not publicly disclosed by means of use, written description or in any other way inside or outside the country, prior to the filing date or, where priority is claimed, the priority date of the patent application.
An invention shall not be considered as publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret. Further, an invention shall not be considered to lack novelty if: (i) the invention was unauthorizedly disclosed by another person without will and acceptance of the applicant; (ii) it was disclosed by the applicant in the form of a scientific report; and (iii) the invention was displayed at a national exhibition of Vietnam or an official or officially recognized international exhibition, provided that the patent application for such an invention is filed within 6 months from the date of disclosure.
(ii) Inventive Step
An invention shall be considered as involving an inventive step if, having regards to technical solutions already disclosed to the public by means of use, written description or in any other way inside or outside Vietnam prior to the date of filing, or the priority date where priority is claimed, of the patent application, it constitutes an inventive progress and cannot be easily made by a person ordinarily skilled in the art.
(iii) Industrial Applicability
An invention shall be considered to be industrial applicable if it can be applied to mass production or manufacture of the product or it is possible to repeatedly apply the process that is the subject matter of the invention to get stable results.
3. The matters which cannot be granted patent
According to our current IP Law, the following shall be exempted from protection as an invention
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 of the human or animal body.
It is also explicitly stated under IP Law that inventions shall not be patented if they are contrary to social morality, public order, or detrimental to national defense and security.
4. Right to file patent application
The following organizations, individuals has right to file application for intergrated circuite layout design :
– Inventors who have created the invention by his/her own efforts and expenses.
– The organizations or individuals who have invested finance and material facilities to the inventors through employing or hiring in case an invention is created by the inventors during the course of employment or hire, unless otherwise agreed by the parties.
The right to file applications for inventions made by using the State budget belongs to the State.
In case more than one organizations or individuals have jointly created or invested in the creation of an invention, those organizations or individuals shall all have the right to registration and such right shall only be exercised with their consensus
In addition, persons entitled to file an application may assign that right to other organizations or individuals through written contract or inheritance in accordance with the law
5. “First to File” Principle
Vietnam applies the “first to file” principle. That means a patent will be granted to the person who is the first to file patent application for invention. If there are two or more patent applications filed for the same invention, all of the applicants are now required to reach an agreement to proceed with one application only. Without such an agreement, all those applications shall be refused.
Applicants for invention application are allowed to claim priority derived from the first application for the same subject matter filed in Vietnam or in a member country of an international treaty having provisions on priority rights, to which the Socialist Republic of Vietnam is a party, or a country having agreed with Vietnam to apply such provisions, provided that the applicant is a national of Vietnam or a member country.
To enjoy the priority right under the Paris Convention, a subsequent patent application for invention must be filed within twelve months from the filing date of the first application. If the subsequent application claims different priorities, the priority date for calculating the time limit shall be the date of the earliest priority. It is also possible for the applicant to claim multiple priorities in a single subsequent application derived from different earlier filed applications, provided that the corresponding contents of such earlier applications and the application in question are explicitly indicated.
In case event a patent applicant for a subsequent application for an invention succeeds in claiming priority derived from the first application earlier filed in Vietnam for the same invention, the patent shall only be granted to the subsequent application. The early filed application (also called priority application) shall be deemed to have been withdrawn.
For PCT applications, the time limit for entering the national phase in Vietnam under both Chapter I and Chapter II of PCT is thirty one months upon the priority date. However, as of 9 May 2007, a late entry of six months counted from the expiration of thirty one month period is allowed, provided that the applicant must pay late entry fee.
7. Process of examination of application
7.1. Formality Examination
All Vietnam patent applications, including PCT applications, shall be automatically examined as to formality within the period of one month from the filing date. If the formalities are met, a Notification of Formality Acceptance shall be issued to confirm the accorded filing date and assigned application number. The filing date may be
– The actual date on which the National Office of Intellectual Property receives the application and stamps the receiving seal thereon; or
– The international filing date of the PCT application if it is a PCT derived application.
7.2. Publication of Patent Application
All patent applications accepted to examination for patentability shall be published in the Official Industrial Property Gazette for the purpose of opposition. Applications for inventions 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 formality acceptance, 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.
7.3. Request for Substantive Examination of Patent Applications
The published Vietnam patent applications for inventions shall not be automatically examined. The examination shall be carried out only upon request for examination from either the applicant or a third party, subject to payment of prescribed fee. Such a request shall be submitted to the NOIP within 42 months for inventions from the filing date or the date of priority if the priority is claimed. The time limit for making request for substantive examination of utility solution application is 36 months.
The application shall be regarded as withdrawn if the substantive examination is not requested.
7.4. Substantive Examination and Grant of Patent
Substantive examination is conducted by the NOIP in order to determine whether the invention is patentable.
The time limit for substantive examination for invention applications is 18 months upon 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.
The applicant may, any time before the Notification of Issuance is made, either at the applicant’s discretion or at the request of the NOIP, make amendments to the patent application. However, the amendments are not allowed to go beyond the disclosure originally filed.
* A patent application for invention is allowed to be converted into a patent application for utility solution and vice versa. The time limit for conversion is any time prior to any Notification either for Refusal or Grant of a patent is made.
7.5. Appeal/Opposition Proceedings
At any time during the period from the publication to the issuance of a patent, the applicant or any third party whose rights and interests are directly related to the granting of a patent shall be entitled to file written opposition with the NOIP, opposing either the grant or refusal to grant a patent.
Any opposition/appeal must be made in writing, accompanied by argumentation, and/or evidence to support the opposition. The opposition/appeal on the first instance must be submitted to the NOIP within 90 days from the date of receipt or awareness of the NOIP’s notification relating to refusal or grant of a patent as referred to above. In the event the party who file the opposition/appeal does not agree with the NOIP’s decision on the opposition, the party may appeal either to the MOST or the court.
8. Patent Term and Maintenance
Vietnamese patents come into effect on the date of issuance and end 20 years upon the filing date for inventions (subject to annuity payment), without any renewal term. The term of protection for the patent for utility solution is ten years from the filing date.
The patent owner of a Patent for Invention or Patent for Utility Solution is required to pay annuity fees in order to maintain its validity.
Annuities are not required for pending patent application(s). The first annuity should be paid on the date of grant of patent. A late payment of annuity is available within a grace period of six months counted from the due date of annuity, subject to an extra fee amounting to 10% of said annuity for each month overdue. No provision on the restoration of the validity of a patent is addressed in the current IP laws and regulations.
9. Rights and Obligations of Patent Owners
9.1. Patent Rights
A patent owner shall be granted the right to use or allow others to use the patented invention. The patent owner also has the right to prevent others from using the patented invention without his/her own authorization.
The use of an invention means carrying out the following acts: manufacturing the patented product; applying the patented process; exploiting the patented product or a product obtained by the patented process; circulating, advertising, offering for sale, stocking for circulation of and importing the above mentioned product.
9.2. Obligations of the Patent Owners
The patent owner has obligation to: (1) pay remuneration to the inventor(s); (2) pay the annuity or renewal fee for maintenance of the patent; and (3) use or license the patented invention to another person upon decision of the State administrative authority (compulsory license).
The patent owner shall be under obligation to permit the owner of the dependent invention using his/her pioneer (basic) invention, provided that the dependent invention has been proved to have made an important technical advance in comparison with the pioneer invention and to have high economic value. In case the owner of the pioneer invention fails, without legitimate grounds, to satisfy the request made by the owner of the dependent invention, the State competent authority may, without permission of the owner of the pioneer invention, grant a license to exploit the pioneer invention to the owner of the dependent invention.
9.3. Limitations to Patent Rights
The patent rights as mentioned above shall be limited by prior user’s rights, compulsory license, and some others as follows:
9.3.1. Prior User’s Rights
The exercise of the prior user’s right to invention shall not be considered as an infringement of rights of the owner of the patented invention. Where a person who, before the publication date of an invention application, was using or had made substantial preparation toward the using of an invention independently created but identical with the invention claimed in the application, the said prior user shall be entitled to continue the use after the patent is granted, within the extent and volume of use or substantial preparation toward the using already made. The prior user shall not be entitled to enlarge the extent and volume of use unless it is so permitted by the owner of the patented invention. The prior user’s right shall not be allowed to be transferred except for the case it is transferred together with the business establishment where the prior user’s right is exercised.
9.3.2. Compulsory License
The right to use an invention shall, without permission of the patentee, be granted to another entity or individual upon decision of the State competent authority if (i) the use of the invention is intended for the public interest, non-commercial purposes, national defense, security, prevention and treatment of disease, for people’s nutrition, or meeting other urgent needs of society; (ii) the patentee fails to fulfill the obligation of using the invention after the expiration of four years from the date of filing of the patent application and three years from the granting date of the patent for invention; (iii) the person who wants to use the invention fails, within a reasonable period of time for negotiation on reasonable considerations and commercial conditions, to reach an agreement with the patentee on a license to use such an invention; or (iv) the patentee is regarded as performing an act of anti-competition prohibited under the competition law and regulations.
The following shall not be regarded as patent infringement:
1. Use of the invention for personal needs or non-commercial purposes, or for the purposes of evaluations, analysis, research, teaching, testing, pilot production or for collecting data to carry out procedures to obtain a production license, import or product marketing permit;
2. Use of the invention only for the purpose of maintaining the operation of a foreign vehicle in transit or only temporarily entering into the territory of Vietnam;
3. Use of the invention by prior user;
4. Use of the invention by the licensee of a compulsory license authorized by the State competent authority.
10. Cancellation or Suspension of Patents
After a patent is granted, any party may file a written request at any time with the NOIP to wholly or partially cancel or suspend such patent:
The grounds for cancellation are as follows:
a) The patentee was not entitled to apply for the patent, nor assigned that right from the entitled person; or
b) The patented invention did not meet the conditions for patentability at the time the patent was issued.
The patent shall be partly invalidated if the respective part of the subject matter failed to meet the conditions of protection.
The ground for suspension are as follow:
(a) The patentee fails to pay the prescribed annuity or renewal fee as prescribed;
(b) The patentee declares a disclaimer of the rights conferred by the patent; or
(c) the patent owner no longer exists, and there is no lawful successor.
The following acts shall be regarded as an infringement of the rights of the owner of an invention:
– Using the protected invention within the validity term of the Patent on Invention/Utility Solution without permission of the owner;
– Using the invention without paying compensation in accordance with the provisions on provisional right.