Under Article 86.1b, Vietnam IP Law Intellectual Property Law (Vietnam IP Law), the entities or individuals who have invested finance and material facilities to the inventors in the form of a job assignment or job hiring, shall be entitled to file patent applications for those inventions created by such inventors while on the job, unless otherwise agreed by the parties.

Thus, employers shall be entitled to obtain patents for such inventions and be given an exclusive right over the patented invention, while employees shall enjoy some moral rights over the invented technology in addition to some remuneration. For example, the employee-inventor shall be named as inventor in relevant patent letters as well as in any documents in which the invented technology is published or introduced. Employees shall also enjoy some remuneration in accordance with the law, which is stipulated as at least 10% of benefits obtained from using the invention, and 15% of the sum amounted from each royalty for granting a license to use the invention, unless otherwise agreed by the parties (Art. 135.2, Vietnam IP Law).

In Vietnam, there are not many cases relating to the remuneration matter. We know one fertilizer manufacturing company in Vietnam who specifies in its written regulations that the employed inventor(s) shall receive a remuneration of at least 20% of the benefits gained from the use of invention. The payment can be made in installments depending on the agreement between the relevant parties, and it is made for the whole life of the patent.

However, we do not know if such a regulation has been followed in practice since the relevant law and regulations in Vietnam contain no guidance/provision on how to determine the benefits obtained from using the invention. Since it is not easy to determine such benefits, it appears to be more common having the remuneration agreed by the parties.

Only POA is normally requested. However, for non-PCT patent applications claiming priority rights under the Paris Convention, certified copies of priority documents are also required.

Neither notarization nor legalization is required for patent filing in Vietnam. Simply signing is sufficient.

A certified copy of the priority document is actually the concerned first application as originally filed to and now truly certified (for the purpose of priority claim) by the patent office in the relevant priority country.

Please provide us with the original POA (and certified copies of priority documents, if required) in hard copy. Other documents can be sent to us in digital format (soft files).

a. After filing to IP VIETNAM, what do we do next? Wait for formality examination?

Yes. As to non-PCT patent applications, formality examination will be carried out right after the application is filed to IP VIETNAM. This procedure normally lasts for 01-02 months from the filing date. As to PCT applications, this duration shall be computed from the first date of the 32nd month after the 31-month anniversary for entry into Vietnam national phase.

b. Do we must request for each step? Such as request for publication, request for substantive examination, request for anything?

No request for publication is required. The application publication shall be automatically made within 02 months from the date of official acceptance of application formality (in case of PCT patent applications) or within the 19th month from the priority date (in case of non-PCT patent applications). In the latter cases, a request for early publication may be filed to IP VIETNAM in order for relevant applications to be early published (i.e. within 02 months from the date of official acceptance of application formality).

A request for substantive examination must be filed to IP VIETNAM, optionally right at the filing time or within 42 months for a invention application (or 36 months for a utility solution application) computed from the filing date or the priority date, as applicable.

Additionally, one may optionally file to IP VIETNAM requests for amendment of applications, or oppositions against any other application, or appeals against any decision of IP VIETNAM.

There is no grace period for filing a patent application in Vietnam.

If your country is a member of the Paris Convention, you can file such patent application in Vietnam with priority claim based on the patent application initially filed in your country. The time limit for making a priority claim for an invention/utility solution  application is 12 months computed from the priority date.

Priority claim should be advantageous for the following reasons:

– Prevent a lack of novelty caused by the disclosure of the original application.

– Enhance the probability of obtaining protection. Since IP Vietnam adopts the first-to-file principle, thus in cases where multiple applications are submitted for the same invention, a protection title may only be granted to the valid application with the earliest priority or filing date amongst applications which meet protection criteria. This is clearly beneficial to the application claiming the priority since the priority date is always earlier than the filing date.

The payment (including official and service fees) is carried out in stages throughout the application prosecution process, including:

– Filing stage: Fees for filing a patent application.

– Examination stage: Amendment fees, response fees, etc., if applicable.

– Granting stage: Fees for granting a patent and fees for the first annuity (if the patent application meets the protection criteria).

– Post-grant stage: Annual annuity fees (from the second annuity until the patent expires).

The 2^nd annuity and the subsequent annuities which have the due date coincide with the anniversary date of the grant date will be annually paid within six months prior to the due date.  An annuity can be paid late not over 6 months from the due date, and subject to 10% extra fees for each month overdue per each independent claim

IP VIETNAM will not inform you as well as our firm of the annuity payment. We will monitor deadlines by ourselves. You may rest assured that we will set reminders by way of our reliable monitoring system to inform you of annual annuity deadlines in due course.

IP VIETNAM does not offer a lump-sum fee option for all annuities to be paid. Instead, each annuity fee shall normally be paid to IP VIETNAM on a year-by-year basis.

A divisional patent application is not defined under the Vietnam IP Law. However, it’s widely construed that from an original application, the applicant either proactively divides the application or, at the request of IP VIETNAM, divide one or multiple technical solutions from an original patent application into one or more new applications, referred to as divisional applications.

Under Vietnam Patent Regulations, a divisional application may be filed at any time during prosecution of the patent application (from filing to grant) but before the date of issuance of a Decision on granting patent/Decision on refusal of granting patent. Of note, division of an applicaton cannot be made in the appeal stages.

There is no continuation-in-part application in Vietnam.

Rules applicable for filing a divisional patent application are as below:

• A divisional application must bear a new filing number and is entitled to the date of filing or date(s) of priority (if any) of the parent application; and shall be published after the issuance of a decision on acceptance of the formality of the application.
• The divisional application must not broaden or exceed the protection scope (volume) or the contents disclosed in the specification of the parent application and must not change the nature of the subject matter stated in the parent application.
• For each divisional application, the applicant shall pay filing fees and all fees and charges for procedures carried out independently from the parent application but shall be exempted from fees for examination of the priority claim. The divisional application shall be subject to formality examination and further processed according to the procedures not yet completed for its parent application.
• The parent application (after being divided) shall be further processed according to the procedures for amendment of the application. In the meantime, the duration for substantive examination of a divisional application shall be the same as that of a normal application.

Yes. It is possible to file serial divisional applications on the applicant’s own initiative or at the request of IP VIETNAM before IP VIETNAM issues a decision on its rejection of the application or a decision on grant of a patent. The process and procedures for such filing are the same as those for filing divisional applications as advised above.

A patent application is considered to have unity if:

a) It requests protection of only one object; or,

b) It requests protection of a group of technically interrelated objects that demonstrate the sole inventive idea and fall into the following cases:

(i) An object is used to create (produce, manufacture or prepare) another object;

(ii) An object is used to accomplish another object;

(iii) An object is used to utilize another object;

(iv) Objects are of the same type and have the same function to secure the achievement of the same result.

The applicant can file opposion to utility objections by submitting arguments that demonstrate the application’s compliance with the unity requirements mentioned above. Alternatively, to overcome the unity objections, the applicant can file a divisional application from the parent application.

IP VIETNAM may refuse the application in Vietnam national phase based on such PCT search report.

The applicant can file any amendment during the examination of the application but before a decision on rejection of the application or grant of patent is issued by IP VIETNAM. Of note, amendment to an applicaton cannot be made in the appeal stages.

Any amendment must not broaden or exceed the protection scope (volume) or the contents disclosed in the specification of the original application and must not change the nature of the subject matter stated in the original application. Any new matter, if found or determined by IP VIETNAM’s examiners after their completed examination of such amendment will be subject to rejection.

Yes, provided that such addition does not go beyond the scope of the application as originally filed.

In the examination process, if a Decision such as a rejection decision for an application, a refusal decision for granting, or a decision for the issuance of a protection title, etc. is issued by IP VIETNAM and the person having the right to complaint disagrees with such a decision, they have the option to submit an appeal by following the prescribed appeal procedures.

In particular, the applicant and all organizations and individuals having rights and interests directly related to decision issued by IP VIETNAM may lodge complaints with the Director General of IP VIETNAM 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 or becomes aware of this decision.

Within 10 days from the date of receipt of a complaint about the decision of refusal, IP VIETNAM 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 1^st complaints), if the complaint is not settled or complainants disagree with complaint-settling decisions of IP VIETNAM, the complainants or persons having rights and interests directly related to the decision may further lodge their complaints (the 2^nd complaints) 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 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 1^st complaint. Upon the expiration of the time limit for settlement of the 2^nd 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.

The following contents are excluded from the subject of appeal:

• Requests for amendment or supplement or division of the subject application;
• New facts/details that   have   not been submitted during the examination  progress, which can change the appealed notice/decision;

In cases where the appellant is not the applicant, new  facts  that  are  not within  the  responsibility  of  IP VIETNAM during the examination. In such  cases,  the  appellant  may  file  a request for additional examination.

The subject matters named “a computer program”, “a computer software”, “a computer software/program product” or “a program carrying signal” and any similar or equivalent word/ expression shall not be accepted. Software/computer program invention can be patentable in the form of, for example, a method for operating a conventional device, a device installed to implement such method, a recorder (or a recording object) containing a program to implement such method.

You can cosider filing an application for copyright registration for software/computer program in Vietnam. Alternatively, if you still desire to protect such software/computer program as an invention, you can rewrite the claimed subject-matter, for example, into “a computer readable medium storing a computer program” within the specification to meet Vietnam patent requirements.