How can we file applications abroad?
For owners of industrial property objects, filing their applications for registration of such objects abroad is not less important than filing in Vietnam. If one obtains industrial property rights in Vietnam, the right does not extend to foreign countries. You need to file applications in each and every country in which you desire to hold the industrial property right. Moreover, when filing applications in other countries, if you miss the appropriate timing, you may end up being disqualified from obtaining the right. For example, if you develop an invention and file an application for a patent, unexamined applications will be published in 19 months. Once this publication has been released, the invention will be known to the public, so even if it is your own invention, you are generally no longer able to obtain the rights abroad, albeit with a few exceptions in a limited number of countries.
Laws are generally only effective within the territory of the country. Industrial property rights are also effective only within the country since they are rights that are protected by laws. Namely, the industrial property rights as obtained in Vietnam are only effective in Vietnam, and if there is a possibility of selling products based on the technology to other countries, it is necessary to file an application in the countries in question for the industrial property right in their territory. However, since more costs may be involved in filing an application abroad than in the case of a domestic application, including translation fees, etc., you need to work out the required costs and the effects you will get from them. For example, if you invent a break-through anti-cancer drug, you will need to file applications in many countries, since the invention would seem universally helpful to all people in any country.
To file an application in a foreign country for industrial property rights, you have two options. One method is to apply directly to the IP Office in that country, and the other apply to an international organization and then apply to the IP Office in the individual country. There is activity going on in various countries to execute international contracts among them with a view to protecting each other’s inventions, etc., thereby making people rich on a global scale. The treaties to which Vietnam subscribes include: (1) the Paris Convention, (2) the Patent Cooperation Treaty (PCT), (3) the Berne Convention, (4) the UPOV Convention (the International Convention for the Protection of New Varieties of Plants), (5) the Madrid Protocol, and (6) the World Intellectual Property Organization (WIPO).
Among the above listed treaties, either the Paris Convention or PCT route is generally used for applications for a patent. Whatever route may be used, the European Patent Convention (EPC) be used for application in the countries of Europe. With the EPC, one application extends to all the member countries in Europe. Also, in the case of a trademark, the Madrid Protocol is available, and it is a very convenient system that has the same effect as filing applications in many countries.
The Paris Convention was concluded in Paris in 1883 with the view of providing international protection for industrial property rights. The main provisions of this treaty include (1) principle of national treatment (nationals in a member country are given the same treatment as the members in other member countries), (2) principle of priority (if an application is filed in a member country A, and another application is filed in a member country B within a certain period of time, that application is deemed to have been received by member country B as of the same date on which the first application was received by member country A), and (3) principle of independence of a patent (a patent in one country and a patent in another country are independent of each other and treated as unrelated).
What kind of merit is available then if an application is filed in a foreign country using the Paris Convention? In order to file an application in a foreign country for an industrial property right, documentation needs to be translated into the language of that country. It also requires preparation of documents in line with the system in place in the country in question and execution of other established formalities. As all this process takes some time, it translates into a delay in filing an application in in a foreign country in the meantime, in all countries except the United States, the first-to-file system is in place whereby only the first to file an application can obtain the right.
If that is the case, an application abroad should also be made earlier than others, even by a day. It is the above mentioned “principle of priority” that comes into play here. Namely, if an application is filed in another member country within 12 months, in the case of a patent, and within 6 months in the case of a design or trademark, of the said application in Vietnam, the novelty and inventive step are determined as if the application was filed on the same date as the application in Vietnam, so the delay due to the time required for translation and so on does not translate into a disadvantage in the application.
Furthermore, under the “principle of national treatment,” an applicant is eligible for the same treatment as that which a national of the country enjoys in that country as an applicant and is not put at a disadvantage by being a foreigner.
The PCT was established as a system that is yet more advanced than the Paris Convention. Namely, it a PCT application is made in one member country, the same application is made in all member countries. Also it easier because an application can be made to the Intellectual Property Office of Vietnam (the IP Vietnam) in Vietnamese before the same is made in other countries. Also in this case, one can go through the International Search Report, and the international preliminary examination process is in Vietnamese.
The point to note here is that there is no such thing as an “ international patent” even when an international application is filed using the PCT route. The applicant is supposed to eventually apply to the designated countries, and only when it receives no rejection as a result of the examinations is it granted the industrial property right. Then, what is the practical merit of the PCT route? The merit lies in the fact that it is possible to file an application with the IP Vietnam in Vietnamese. As you can go through the International Search Report process and also request an international preliminary examination process, if your application turned out to be something on which it is far from possible to acquire a right, you could stop any further steps at this point and avoid any large subsequent expenditure. In addition, since the deadline for submission of a translation is 31 months away from the date of the initial submission, it is possible to take enough time to judge the value of the invention and make a market forecast in the individual countries during that period, making it possible to determine the countries that need to be finally selected.
So, how can we distinguish the Paris Convention from the PCT Routes? As stated above, the Paris Convention route is used to directly file an application in individual countries. If countries to which application is made are decided quickly, you have merits such as (1) low cost and (2) early establishment of rights. In particular, as the procedure is fairly simple if the number of countries to which the application is made is small (generally thought to be three months or less), many people seem to adopt the Paris Convention route. Also, if you wish to apply to many countries and cannot choose them with 12 months of the date of application in Vietnam, the PCT route will work out better. If you want to apply to many countries, it may be too much work to finish all procedures within 12 months, but if a PCT route is used, submission to the IP Vietnam in Vietnamese is all it takes to get the application processed at the beginning, and it is thus much easier. Also, if a prior art search is not sufficient at the time of application in Vietnam, the PCT route would allow you to request an International Search Report and international preliminary examination so that the chance of it being registered can be determined.