What is the legal framework governing patent examination in Vietnam?

The legal framework for patent examination in Vietnam is primarily based on the following

(*) INTELLECTUAL PROPERTY LAW 2005, AMENDED IN 2022

Article 3. Subjects of intellectual property rights

1. Subjects of copyright include literary, artistic and scientific works; subjects of rights related to copyright include performances, sound recordings, video recordings, broadcast programs, and encrypted satellite signals.
2. Subjects of industrial property rights include invention patents, industrial designs, semiconductor integrated circuit layout designs, trade secrets, trademarks, trade names and geographical indications.
3. Subjects of rights to plant varieties are breeding materials and harvested materials.

Article 58. General conditions for protected patents

1. A patent is protected in the form of a Patent for Invention if it satisfies the following conditions:
2. a) It is novelty;
3. b) It has an inventive step;
4. c) It is industrial applicable.
5. A patent is protected in the form of a Utility Solution Patent if it is not common knowledge and meets the following conditions:
6. a) It is novelty;
7. b) It is industrial applicable.

Article 109. Formal examination of industrial property registration applications

Summary of Article 109: Formal Examination of Industrial Property Registration Applications

1. Purpose of Formal Examination:
   • Industrial property applications are examined to assess their validity.
2. Cases of Invalid Applications: An application is considered invalid if:
   • It fails to meet formal requirements.
   • The subject matter is not protected.
   • The applicant does not have the right to register, especially if multiple parties have rights but some do not consent.
   • It violates filing regulations in Article 89.
   • Insufficient fees are paid.
   • Security control regulations for patents (Article 89a) are not followed.
3. Handling of Invalid Applications:
   • The state agency notifies the applicant of the intended refusal, specifying reasons and allowing time for corrections or objections.
   • If defects are not corrected or objections are invalid, the application is refused.
   • For layout design applications, a refusal notice will be issued if requirements are not met.
   • If the applicant successfully corrects defects or presents a valid objection, the agency continues processing the application.
4. Processing Valid Applications:
   • If an application does not fall under the invalid cases, the agency will:
     • Issue a notice of acceptance.
     • Proceed with granting a protection certificate.
     • Record the application in the National Register of Industrial Property.
5. Rejected Trademark Applications:
   • They are considered not filed, except when used for priority right claims.

Article 110. Publication of trademark registration applications, publication of industrial property

Summary of Article 110: Publication of Trademark and Industrial Property Registration Applications

1. Trademark Registration Applications:
   • Applications not yet accepted as valid will be made public immediately upon receipt.
2. General Rule for Industrial Property Applications:
   • Once an application is accepted as valid, it will be published in the Industrial Property Gazette.
3. Publication Timelines:
   • Patent applications: Published in the 19^th month from the filing or priority date, or earlier upon request.
   • Industrial design, trademark, and geographical indication applications: Published within 2 months after acceptance.
   • Industrial design applications: Can be delayed upon request but must be published no later than 7 months from the filing date.
4. Layout Design Applications:
   • Made available for direct search but cannot be copied.
   • Confidential information is accessible only to competent inventorities and relevant parties in specific legal procedures.
   • Basic information is published within 2 months of granting the protection certificate.

Article 113. Request for substantive examination of the patent application

Summary of Article 113: Request for Substantive Examination of Patent Applications

1. Time Limit for Requesting Substantive Examination:
   • For invention patent applications: 42 months from the filing or priority date.
   • For utility solution patent applications: 36 months from the filing or priority date.
2. Who Can Request Examination?
   • The applicant or any third party may request the substantive examination, provided they pay the examination fee.
3. Consequence of Not Requesting Examination:
   • If no request is made within the specified time limits, the application will be deemed withdrawn.

Article 114. Substantive examination of industrial property registration applications

Summary of Article 114: Substantive Examination of Industrial Property Registration Applications

1. Scope of Substantive Examination:
   • Certain industrial property applications undergo examination to determine eligibility for protection and define the scope of protection, including:
     • Patents (if valid and requested for examination).
     • Industrial designs, trademarks, and geographical indications (if valid).
   • Layout design applications are not subject to substantive examination.
2. Use of Foreign Examination Results:
   • The Intellectual Property Office may consider foreign patent office examination results for identical inventions during the assessment process.
3. Regulatory Inventority:
   • The Minister of Science and Technology will issue detailed regulations on using foreign examination results.

 

(*) DECREE 65/2023/NĐ-CP

Article 17. Dividing applications, withdrawing applications for industrial property registration; requesting substantive examination, converting patent applications

Summary of Article 17: Dividing, Withdrawing, Requesting Substantive Examination, and Converting Patent Applications

1. Dividing Industrial Property Applications:
   • Applicants can divide an application before a decision is issued on refusal or grant.
   • A new application number is assigned, and the filing/priority date remains the same.
   • Fees must be paid for independent procedures, but priority examination fees may be exempt.
   • The divisional application is formally examined and processed according to pending procedures.
   • Applicants must explain the changes when submitting the divisional application.
   • The original application continues to be processed separately.
2. Withdrawing Industrial Property Applications:
   • The withdrawal must be made in writing by the applicant or an inventorized representative.
   • The Intellectual Property Office (IPO) has 2 months to process the request:
     • If valid, the application is withdrawn and cannot be restored but may serve as a basis for priority claims.
     • If invalid, a notice of intended refusal is issued with a 2-month correction period.
     • If defects are not corrected, the withdrawal request is refused.
3. Converting Patent Applications:
   • Before a decision on refusal or grant, a patent application can be converted between a Patent for Invention and a Utility Solution Patent.
   • Partial conversions require application division before the conversion request.
   • Upon a valid request, the IPO processes the converted application without repeating previous procedures.
4. Third-Party Requests for Substantive Examination:
   • Any third party may request a substantive examination of a patent application.
   • Requests must follow the prescribed form and be submitted within the legal timeframe.
   • The requester must pay search and examination fees.
   • The applicant is notified within 3 months.
   • If the request is invalid, corrections must be made within 2 months; failure to comply results in rejection of the request.

 

(*) CIRCULAR 23/2023/TT-BKHCN

Article 9. Formal examination of applications

Summary of Article 9: Formal Examination of Applications

1. Purpose of Formal Examination:
   • Conducted as per Article 109 of the Intellectual Property Law.
   • Ensures compliance with formal requirements and determines application validity.
2. Cases of Invalid Applications:
   • Applicant lacks the right to register.
   • Application is filed incorrectly.
   • Subject matter is clearly unprotectable.
   • Violation of security control regulations for inventions before foreign registration.
   • Non-payment of required fees.
   • Failure to meet formal document requirements, such as incorrect classification, missing descriptions, inconsistencies, missing signatures, or lack of inventorization documents.
3. Filing Date Determination:
   • The filing date is the date the Intellectual Property Office of Vietnam (IPVN) receives the application.
   • For international applications designating Vietnam, the filing date is the international filing date.
4. Priority Date Determination:
   • No priority date if the claim is absent or rejected by IPVN.
   • If the priority claim is valid, the priority date is the date stated in the request and approved by IPVN.
   • Priority based on first-filed applications in Vietnam follows Article 91 of the IP Law.
5. Examination Results and Notifications:
   • For invalid applications: IPVN issues a notice of intention to reject, detailing reasons and allowing 2 months for corrections.
   • For valid applications: IPVN issues a decision accepting the application and provides details about the applicant, subject matter, filing date, application number, and priority date (if applicable).
   • If a priority request is rejected, the application remains valid unless other defects affect its validity.

Article 12. Substantive examination of applications

Summary of Article 12: Substantive Examination of Applications

1. Purpose of Substantive Examination:
   • Evaluates the protectability of the subject matter in the application based on protection conditions.
   • Determines the corresponding scope of protection.
   • Not applicable to layout design applications.
2. Examination Process:
   • Examines:
     • Compliance with the requested protection certificate type.
     • Subject matter against protection conditions.
     • First-to-file principle.
   • Assessment Order:
     • Patents: Each claim point.
     • Industrial designs: Each product in a set or each design option.
     • Trademarks: Each trademark component for listed goods/services.
   • Conclusion:
     • The subject either meets or fails protection conditions.
     • Before issuing a notice of intent to grant a certificate, the first-to-file principle is checked.
   • Notification of Examination Results:
     • Issued for applications meeting requirements and having the earliest filing/priority date.
     • If an application does not meet the first-to-file principle, it may be refused or re-evaluated if earlier applications are withdrawn/rejected.
3. Applicant’s Obligations:
   • If the application lacks sufficient disclosure, the applicant must provide additional explanations within 3 months.
4. Time Limits for Examination:
   • As per Article 119(2) of the IP Law.
   • Time taken for applicant responses to IPVN notices is excluded from the examination period.
   • Time limits (extendable if the applicant amends or supplements the application):
     • Patents: Max 6 months.
     • Trademarks: Max 3 months.
     • Industrial designs: Max 2 months 10 days.
     • Geographical indications: Max 2 months.
5. Final Notification:
   • IPVN must send an official notice of the examination result before the deadline.

Article 13. Re-examination

Summary of Article 13: Re-examination

1. Cases of Re-examination: The Intellectual Property Office of Vietnam (IPVN) shall re-examine industrial property applications in the following cases:
   • Objections after substantive examination results (Article 118.2, IP Law), provided that:
     • The applicant or a third party submits a valid objection with supporting evidence.
     • The arguments are well-founded and differ from previous ones or were not previously considered.
   • Requests to amend or supplement applications after substantive examination results (Decree 65/2023/ND-CP, Article 16.3c).
   • Requests to record applicant changes due to trademark transfer after substantive examination (Decree 65/2023/ND-CP, Article 18.2c).
   • Requests from the certificate owner to amend descriptions or narrow protection scope (IP Law, Article 97.1b, 97.3; Decree 65/2023/ND-CP, Article 29.5b).
   • Requests to cancel a protection certificate (Decree 65/2023/ND-CP, Article 32.3a).
   • Complaints against decisions and notices related to applications (Article 38.4, 38.6b of this Circular).
2. Re-examination Process:
   • Time limits:
     • Inventions: Max 12 months.
     • Trademarks: Max 6 months.
     • Industrial designs: Max 4 months 20 days.
     • Geographical indications: Max 4 months.
     • Complex cases may have extended timelines but cannot exceed initial examination periods.
   • Content and procedure follow relevant provisions of this Circular, except for specific exceptions.
   • Each case is re-examined only once for the applicant and each third party.

Article 16. Substantive examination of patent applications

Summary of Article 16: Substantive Examination of Patent Applications

1. Request for Substantive Examination
   • The applicant can request the Intellectual Property Office (IPO) to conduct a substantive examination of the patent application.
   • The request must be in writing, following the prescribed form, and can be submitted at the time of filing or later within the legally specified timeframe.
   • Examination fees must be paid; otherwise, the request is invalid.
2. Examination Process
   • The IPO follows a general examination process as per regulations.
   • The application must meet the criteria for patentability, including:
     • Patent eligibility: The invention must be a technical solution (product or process).
     • Industrial applicability: The invention must be feasible and reproducible.
     • Novelty: It must not be identical or similar to prior published inventions.
     • Inventive step: It must not be obvious to a skilled person in the field.
3. Evaluation Criteria
   • If the invention does not meet patentability requirements, the IPO will issue a notice, allowing the applicant to amend or argue against the decision.
   • If defects remain unaddressed, the IPO will reject the application.
   • If the invention meets the criteria, a decision to grant a patent will be issued.

 

(*) REGULATIONS ON EXAMINATION OF PATENT APPLICATIONS

We would like to note that this is an internal guidelines of IPVN for examiners to refer to during the examination of patent applications. Please follow this link for the full text of this guidelines (Vietnamese only)

https://www.ipvietnam.gov.vn/documents/20182/856300/QUY+CHE+SANG+CHE.pdf/c459ef94-79f2-4057-be88-0b2ebebd1400

In addition, there is an Annex I of Guidelines for determining the eligibility for patent protection of claimed subject matter of computer program related inventions, which is issued on Dec. 31, 2021. Please follow this link for the full text of this guidelines (English version):

https://www.ipvietnam.gov.vn/documents/20195/1445832/Annex+I_Eng.pdf/2b2f6687-3866-43d9-9e4e-fe1be756ef6c