KENFOX IP & Law Office > Patent protection in Vietnam

Patent protection in Vietnam

1. Legislation

 

      (1)  Law No. 50/2005 of 29 November 2005 on Intellectual Property, amended and supplemented in 2009 (Vietnam IP Law).

      (2)  Decree No. 103/2006/ND-CP dated 22 September 2006 detailing and guiding the implementation of a Number of Articles of Vietnam IP Law regarding Industrial                      Property, supplemented and revised by Decree 122/2010/ND-CP.

      (3)   Decree No. 105/2006/ND-CP dated 22 September 2006 on detailing and guiding the implementation of a number of articles of the IP Law on protection of IPRs and                 State management of IP, amended and supplemented by Decree 199/2010/ND-CP.

      (4)  Circular No. 01/2007/TT-BKHCN of 14 February 2007, guiding the implementation of Decree No. 103/2006/ND-CP of September 22, 2006, detailing and guiding                     the Implementation of a Number of Articles of Vietnam IP Law regarding Industrial Property.

      (5)   Circular No. 16/2016/TT-BKHCN of June 30, 2016, amending and supplementing a number of Articles of Circular No. 01/2007/TT-BKHCN of 14 February 2007.

      (6)   Decree No. 99/2013/ND-CP of 29 August 2010 on sanctioning of administrative violations in industrial property.

      (7)  Circular No. 11/2015/TT-BKHCN June 26, 2015, detailing and guiding a number of articles of Decree No. 99/2013/ND-CP on sanctioning of administrative violation                  in the field of industrial property.

      (8)  Law No. 105/2016/QH13 dated 06 April 2016 on Pharmacy (Law on Pharmacy 2016)

 

2. A brief introduction of patent protection system in Vietnam

 

Patent protection in Vietnam was first in force as defined in the Decree 31/CP dated 23 January 1981 and Regulations on technical innovation, rationalization of production and patent. Accordingly, in Vietnam technical solutions shall be granted with Certificate for Inventors or Patent Certificate if they meet such protection conditions as novelty, inventive step and susceptibility of industrial application. This Decree came into effect until 11 February 1989 (as the birth date of Ordinance of industrial property protection). In this period, Vietnam only granted Certificate of Patent Author. This Decree came into effect until 11 February 1989 (as the birth date of Ordinance of  industrial property protection). In this period, Vietnam only granted Certificate of Patent Author. The protection of inventions in the form of inventor’s certificates was proved to be particularly inappropriate when Vietnam moved toward a market economy in 1986. Thus, the Regulations on Utility Solutions provided for in Decree 200-HDBT were passed in 1988, providing for the protection of utility solutions in the single form of patent. Also in 1988, the Regulations on Industrial Designs were issued under Decree 85-HDBT creating protection for industrial designs by certificates of industrial design.

Exclusive rights over inventions and utility solutions were introduced in Vietnam under the 1989 Ordinance (1989 Ordinance) on Protection of Industrial Property, which established patents as the title of protection for inventions and utility solutions. After the 1989 Ordinance, Decree 84-HDBT was passed by the Council of Ministers (now the Government) to make amendments and additions to the Regulations on Inventions, Utility Solutions, and Industrial Designs.

Under the Civil Code of Vietnam which was introduced in 1995, the patent regime in Vietnam came under the governance of such law and its implementing regulations related to IP matters. The regulations included Government Decree 63/CP dated 24 October 1996 on Industrial Property (Decree 63/CP), Circular 29, and Circular 30. Various changes have been made to inventions or utility solutions as compared to the 1989 Ordinance.

Law on Intellectual Property of Vietnam was passed by the National Assembly of Vietnam on 19 November 2005 and came into force on 01 July 2006. According to Vietnam IP Law 2005, legal provisions on patent protection in Vietnam are almost in conformity with international standards provided in TRIPS Agreement.

 

3.Definition

 

A patent is a right granted to the owner of an invention to prevent others from making, using, importing or selling the invention without the owner’s permission. A patent may be obtained for a product or a process that gives a new technical solution to a problem or a new method of doing things, the composition of a new product, or a technical improvement as to how certain objects work. Per Article 4.12 of Vietnam IP Law, invention means a technical solution in the form of a product or process which is intended to solve a problem by application of natural laws. Invention is one category of industrial property rights. Under Article 6.3 of Vietnam IP Law, industrial property rights to an invention shall be established on the basis of a decision of the competent State body to grant a protection title in accordance with the registration procedures stipulated in this Law or the recognition of international registration pursuant to an international treaty of which the Socialist Republic of Vietnam is a member. To qualify for patent protection, products or processes must show ‘inventiveness’ (a new technical solution or improvement to a product or process), ‘novelty’ (it has not been previously published or disclosed to the public), and an ‘industrial applicability’

 

4.Types of Patent in Vietnam

 

Under Vietnam IP Law, there are two types of patents:

(i) Patent for inventions;

(ii) Patent for utility solutions (known as  ‘Utility  Model Patents’ in China and several EU countries such as Austria, Belgium,  Denmark,  Finland,  France,  Germany,                       Italy,  and  the  Netherlands,  among  others); and

 

5.Conditions for protection of inventions in Vietnam

 

5.1. Eligibility for patent protection in Vietnam

 

An invention shall be eligible for protection in the form of the grant of an invention patent in Vietnam when it satisfies 03 (three) conditions: (a) It is novel; (b) It is of an inventive nature; (c) It is susceptible of industrial application.

 

(i) Novelty of inventions (Article 60 of Vietnam IP Law): To meet the standard of novelty, inventions must not have been disclosed publically either inside Vietnam or elsewhere prior to the filing date (or ‘priority date’ if an application has already been made within 12 months in another Paris Convention member state). There are however some exceptional circumstances where a patent may still be granted even where the invention has been previously disclosed:

  • If the person who previously disclosed the invention did not have the right to register the patent
  • If the invention was disclosed by the applicant in the form of a scientific report
  • If the applicant displayed the invention at a national exhibition in Vietnam or another officially recognised international exhibition

 

(ii) Inventive nature of inventions (Article 61 of Vietnam IP Law): An invention is deemed as being ‘inventive’ if the invention constitutes an inventive process, and cannot easily be created by a person with average knowledge in the relevant field. Assessments are made taking into account technical solutions that have already been publically disclosed prior to the filing (or priority) date.

 

 (iii) Inventions which are susceptible of industrial application (or industrial applicability) (Article 62 of Vietnam IP Law): ‘Industrial applicability’ is defined as being capable of mass manufacture/production of the product or repeat application of the inventive process, in a way which achieves stable results.

 

5.2. Ineligibility for patent protection in Vietnam

 

Per Article 59 of Vietnam IP Law, for inventions, the following shall be exempted from protection under the current IP Law:

(i) discoveries, scientific theories, mathematical methods;

(ii) schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;

(iii) presentations of information;

(iv) aesthetic solutions;

(v) plant varieties, animal varieties;

(vi) essentially biological processes for the production of plants and animals except microbiological processes; and

(vii) preventative, diagnostic and therapeutic methods for treatment on the human or animal body

 

6.Establishment of industrial property rights to inventions in Vietnam

 

6.1. Right to register inventions in Vietnam

 

Per Article 86.1 of Vietnam IP Law, the following organizations and individuals shall have the right to register inventions: (a) Authors who have created inventions, industrial designs or layout designs by their own labour and at their own expense;  (b) Organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring, unless otherwise agreed by the parties involved and provided that such agreements are not contrary to Article 86.2 of Vietnam IP Law.

For clarification purpose, in the case of an inventor who creates a process or item (“the invention”) while employed by a company, the invention is then considered property of the employer of the company, as the employer financed the development through payment of wages and/or provision of materials, tools and workspace to the employee to produce the item in question. In this case, as provided in Article 135 of Vietnam IP Law, the employee(s) shall enjoy some moral rights over invention or design in addition to some remuneration. Moral rights of employee-author(s) are to be named as author in relevant patent letters as well as in any documents in which the invention or design is published or introduced. The minimal remuneration for the employee(s) is stipulated as 10% of benefits obtained from using the invention or design, and 15% of the sum amounted from each royalty for granting a license to use the invention or design, unless otherwise agreed by the parties. There are also instances of patent rights being assigned to the employer when the employee responsible for the patented material was entered into an express contract that assigns the employer the patent rights to their inventions. This sort of contract is normally developed and agreed upon at the beginning of the employees’ time with the company.

Where an invention or industrial design is created by more than one author, the above-mentioned remuneration amount shall be applicable to all authors together. The authors shall settle by themselves the allocation of such remuneration paid by the owner. The obligation to pay remuneration to the author(s) of an invention or industrial design shall last for the whole term of protection of such invention.

Per Article 86.3 of Vietnam IP Law, where a number of organizations and individuals have jointly created or invested in the creation of an invention, industrial design or layout design, such organizations and individuals shall all have the registration right which may only be exercised with the consensus of all.

 

6.2 Methods of filing an application for registration of establishment of industrial property rights to inventions

 

Per Article 89 of Vietnam IP Law, Vietnamese entities and individuals, foreign individuals permanently residing in Vietnam, and foreign entities having an industrial or commercial establishment in Vietnam may file patent applications directly or through an IP agency licensed to practice before the IP Office of Vietnam. Foreign individuals not permanently residing in Vietnam and foreign entities having no industrial or commercial establishment in Vietnam shall file applications for patent rights through a licensed IP agency.

Because Vietnam is a member of the PCT, registration can be made directly in Vietnam, or done internationally, following the PCT procedure. Application requirements and approval time may be reduced when applying for an invention patent or utility solution patent via the PCT system, and the application process can be further accelerated by paying an additional fee.

 

INTELLECTUAL PROPERTY OFFICE OF VIETNAM (“IP Office of Vietnam”)

384-386 Nguyen Trai Street, Thanh Xuan District, Hanoi

Tel: 84 24 3858 30 69 / +84 24 3558 82 17

 

6.3. “First to file” principle

 

Vietnam operates under a ‘first-to-file’ system. Hence, it is important to register a patent as early as possible. Per Article 90 of Vietnam IP Law, 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 identical or equivalent inventions, a patent will only be granted to an application having the earliest priority date or filing date among the applications that satisfy all protection criteria. In case where there are two or more applications satisfying all protection criteria and having the same earliest priority or filing date, 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.

 

 6.4. Priority principle

 

Per Article 90 of Vietnam IP Law, patent applicants for subsequent invention application
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Page 13-29 (Rel. 2015)
are allowed to claim priority derived from the first application for the same subject matter filed in Vietnam or 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 such a member country.

As Vietnam is party to the Paris Convention for the Protection of Industrial Property (“Paris Convention”), applicants for invention patents and utility solution patents are entitled to a ‘right of priority’ if the same filing has been made within the last twelve (12) months in any other country which is also a party to the convention. This proves to useful to patent holders because after filing the first application in their home country, they then have twelve (12) months of leeway to decide which other countries they want to protect their invention, prior to commencing international filings. The eventual protection granted in Vietnam (or other countries) within the time limit will be measured from the original filing date in the first country, and will overrule any other filings made in Vietnam in the interim period.

Vietnam has also been a member of the Patent Cooperation Treaty (PCT) since 1993, meaning that if a patent holder already has a patent granted in another PCT Contracting State, the application requirements and approval time may be reduced when applying for an invention patent or utility solution patent in Vietnam. The application should be done via the Intellectual Property of Vietnam. For PCT applications, the time limit for entering the national phase in Vietnam is thirty-one (31) months, computed from the priority date. Under the new Circular 16/2016, the late entry within six-month period of PCT applications into the Vietnam national phase is no longer available. The applicants may late file their Vietnam national phase applications only if they can submit verifiable evidence proving that they encounter a force majeure event or an objective obstacle in a reasonable time. The IP Office of Vietnam will consider the evidence of force majeure event or objective obstacle on a case by case basis

 

6.5 Validity of invention patents in Vietnam

 

Per Article 93 of Vietnam IP Law, an invention patent shall be valid from the grant date until the end of twenty (20) years after the filing date. Meanwhile, a utility solution patent shall be valid from the grant date until the end of ten (10) years after the filing date

 

6.6. Maintenance of invention patents in Vietnam

 

Per Article 94 of Vietnam IP Law, in order to maintain the validity of an invention patent or a utility solution patent in Vietnam, the owner must pay a validity maintenance fee. The first annuity should be paid on the date of grant of patent while the payment of the succeeding annuities must be made within the six-month period prior to the anniversary of the grant date as provided in Rule 20.3, Circular 01/2007.  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. In respect of restoration due to unpaid annuity, under previous legislation of Vietnam, in case the validity of the patent is cancelled because of the unpaid annuity, the validity can be restored within six months from the expiration of the six month grace period if the patent validity has not yet been cancelled at a request of a third party. However, no provision on the restoration of the validity of a patent is provided in the IP Law and regulations.

 

6.7. Termination of validity of invention patents in Vietnam

 

Per Article 95.1, Vietnam IP Law, termination of validity of invention patents in Vietnam occurs in three circumstances as follows:

(i) the patentee fails to pay the prescribed annuity or renewal fee as prescribed;

(ii) the patentee declares a disclaimer of the rights conferred by the patent; or

(iii) the patent owner no longer exists, and there is no lawful successor.

In circumstance (i), upon the expiry of such time limit, the validity of the patent shall be ex-officio terminated from the first day of the year for which the maintenance fees have not been paid. The IP Office of Vietnam shall record such termination in the National Register of Industrial Property and publish it in the Industrial Property Official Gazette.

In circumstance (ii), the IP Office of Vietnam shall decide to terminate the validity of the patent from the date of receipt of the owner’s declaration.

In circumstance (iii), a third party shall have the right to request the IP Office of Vietnam to terminate the validity of the patent, provided that the prescribed fees shall be paid. Based on the result of the examination of request for termination of the patent validity and interested parties’ opinions, the State administrative authority of industrial property shall make either a decision to terminate, or a notice of refusal of termination of, the validity of the patent.

 

6.8. Invalidation of validity of invention patents in Vietnam

 

Per Article 96.3, Vietnam IP Law, any natural or juridical party can file a patent invalidation request with the IP Office of Vietnam. No legal interest is required.

Per Article 96.1, patent invalidation in Vietnam can be filed based on either of the two grounds: (i) The applicant(s) has not or has not been assigned the right to file the application and (ii) The subject matter(s) failed to satisfy the protection conditions at the time the patent was granted. Timeline for patent invalidation in Vietnam is at any time during the validity of a patent.

According to Vietnam IP Law and its Regulations (Article 96, IP Law & Rule 21, Circular No. 01/2007/TT-BKHCN as recently amended by Circular No. 16/2016/TT-BKHCN), the invalidation procedure at the  could be summarized as follows:

  • In 01 month from receipt of the invalidation request (by any third party), the IP Office of Vietnam shall issue a written notification, informing the patent owner of the invalidation action, and set a period of 02 months from the date of notification for the patent owner’s response. Such a set period of time can be extended once for another 02 months. In practice, the IP Office of Vietnam usually gives each party at least 02 opportunities to submit counter-statements against the arguments of the other party. The IP Office of Vietnam may also arrange working sessions meeting with the parties, if necessary.
  • The patent subjected to the invalidation request shall be re-examined by the IP Office of Vietnam.
  • The request shall consider the arguments and evidence submitted by both parties, and then issue a decision on the invalidation case, which either (i) invalidate the whole or part of the patent, or (ii) reject the invalidation request if it is found ungrounded, and maintain the validity of the patent.

In practice, it may take about 35-55 months, or even longer, for a patent invalidation case from filing till receiving the IP Office of Vietnam’s final decision on the case

 

Flowchart of patent invalidation in Vietnam

 

Staying infringement handling in case of a patent invalidation in Vietnam:

 

A majority of patent invalidation cases in Vietnam occurs in the context of patent disputes where the alleged infringers are accused of patent infringement, aiming at invalidating the patent in question as a defense mechanism, with the argument that if a patent is not valid, thus, it cannot be infringed.

As provided in Article 27, Decree No. 99/2013/ND-CP, in case of a dispute (e.g. a patent invalidation) that has already arisen before the filing date of the request for enforcement, Vietnamese enforcement authorities may take either of the following options:

  • To stay the enforcement proceeding and request the involved parties to settle the dispute at a relevant authority in Vietnam before resuming the enforcement; the enforcement will then be taken in compliance with the outcome of the dispute settlement proceeding, or
  • To request the patent holder to make an undertaking, or to request the IP Office of Vietnam to confirm the legal status of industrial property rights, on which the enforcement action is based, to decide whether the enforcement action can be taken or needs to await to outcome of the dispute settlement.

In practice, option (i) is preferable by most of Vietnamese enforcement authorities when information on a dispute comes to their attention.

 

“Fast track” to get the patent invalidated? If yes, how long does it take?

 

 Under the current laws of Vietnam, “fast track” of both invalidation and appeal procedures is not available. In practice, patent invalidations are often complicated cases, which need quite a long time for the parties to submit argumentation and the IP Office of Vietnam to consider the whole case before issuing their decision. Appeals concerning decisions on patent invalidation cases are also complicated. Hence, we find it quite difficult to speed up both the procedures for patent invalidation and appeals related thereto.

However, in our practice of handling our cases, we always strive to contact the key officials of relevance to keep updated of the cases and to urge the officials in charge to finish the cases as soon as possible.

 

If a counter patent of that patent is invalidated in other countries, this helps shortening the period of taking the process of invalidation in Vietnam?

 

 As a matter of principle, the IP Office of Vietnam is not required to depend on any decisions on invalidation cases issued by other jurisdictions for any family patents.

However, if a counter patent (family patent) of the patent being invalidated in Vietnam is invalidated by a strong jurisdiction (e.g., EU, Japan, US, Korea, etc.) based on the grounds of lacking novelty, inventive step, or industrial applicability, and if the claims of such counter patent are the same as of the subject Vietnamese patent, we are of the opinion that this might help shortening the period of the patent invalidation proceeding in Vietnam.

 

 The cost or fee in patent invalidation in Vietnam?

 

 An official fee of VND680,000 (~US$30.20) shall be charged at filing of the request for invalidation.

It may be quite difficult to give a proper estimate of fees, for the fact that the fees shall depend on the circumstances of a particular case and also, its complexity. However, fees in some recent cases (for the invalidation proceedings at the IP Office of Vietnam only, not including any appeals and lawsuits relevant thereto) were approx. US$3,000 – 5,500, excluding the translation fees, VAT of 5%, and communication costs (as actual expenses).

 

7.Patent application in Vietnam

 

7.1. Per Article 100, Vietnam IP Law, upon filing a patent application for invention in Vietnam, the following are required to be submitted to the Vietnam Patent Office:

 

  • Request for patent for invention made in the prescribed form;
  • Specification of the invention, including description and claims;
  • Abstract of the invention;
  • Document attesting the entitlement to file an application if the applicant has been assigned that right from another person;
  • Priority document if priority is claimed (i.e. a copy of the first application(s) certified by the receiving office);
  • Power of Attorney (if the application is filed through a representative); and
  • Filing fee receipt.

 

7.2. Requirements on applications for registration of inventions in Vietnam:

 

7.2 (a) For PCT application:

 

  • Name, address and nationality of applicant/inventor;
  • Information on the PCT application number or WIPO’s publication number;
  • Copy of amended patent specification (if any) for national phase entry;
  • Signed Power of Attorney of applicant appointing KENFOX as his/her patent agent in Vietnam; and
  • Signed Deed of Assignment, if applicant is not that of the international application.

Notes:

  • Language of filing: Vietnamese;
  • Original documents (iv) and (v) are required within 34 months from priority date. Notarization is not required; and
  • National phase deadline under both Chapter I and Chapter II is 31 month from priority date.

 

7.2 (b) For Non-PCT application:

 

  • Name, address and nationality of applicant/inventor;
  • Copy of patent specification (in English);
  • Priority document where priority is claimed. Priority data (application number, filing date and country) is required at filing;
  • Signed Power of Attorney from applicant appointing KENFOX as his/her patent agent in Vietnam; and
  • Signed Deed of Assignment, requested only if: (a) Applicant is individual not the inventor; or (b) Applicant is organization not the applicant of the priority application.

Notes:

  • Language of filing: Vietnamese;
  • Originally certified copy of document (3) is required within 03 months from filing date;
  • Original document (4) is required within 01 month from filing date. Notarization is not
  • required; and
  • Original document (5) is preferably submitted within 01 month from filing date. Notarization is not required.

 

Request for substantive examination of invention in Vietnam:

 

  • Deadline for request for substantive examination is 42 months for inventions and 36 months for utility solutions from priority date.
  • Cost for request for substantive examination is charged for each independent claim and depends on the number of pages of patent specification

 

Timeline:

 

  • Formality examination of patent applications in Vietnam: 01 month from filing date. All patent applications shall be automatically examined as to form within the statutory period of one (01) month from the filing date. However, for PCT-derived applications, the formality examination of such applications shall not be conducted before the expiration of 31 month period unless the applicant otherwise requests.  If the formalities are met, a Decision on Formality Acceptance shall be issued by Vietnam Patent Office to confirm the accorded filing date and assigned application number. The filing date may be: (i) the actual date on which Vietnam Patent Office receives the application and stamps the receiving seal thereon; or (ii) the international filing date of the PCT application if national patent application is a PCT-derived application.

If the patent application is objected due to: (i) certain defects in form, (ii) the subject matter of the invention being statutorily unpatentable, (iii) the applicant not being entitled to file application, or (iv) the application being filed in an improper manner, a Notice of Defect(s) of the application shall be issued by Vietnam Patent Office and the applicant shall be given a 2-month period counted from the date of the Notice in order to correct such defects.  Such a set period of time can be extended once for another two months by filing a request for extension of time to Vietnam Patent Office. Such informalities shall not affect the filing date.

The applicant may, at any time prior to the Decision on Refusal or Decision on Grant, make amendments, additions, or divisions to the application, but not beyond the disclosure or so as to change the nature of the invention or industrial design originally claimed; or a fresh application needs to be filed.  The amendments may also be made to the name and address of the applicant, the name and nationality of the author(s), the change of the applicant as a result of the assignment of application or inheritance, merger, acquisition or division of legal entities or the like

  • Publication of patent applications in Vietnam: in 19th month from the priority date or within 02 months from the date of acceptance as to form, whichever is later. All patent applications accepted as to form shall be published in the Official Industrial Property Gazette for the purpose of third party observation/opposition. Applications for inventions/utility solutions in Vietnam 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 acceptance as to form, 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.
  • Substantive examination of patent applications in Vietnam: 18 months from publication date of application or date of receipt of Request for Substantive Examination, whichever is later.

The examination for patent applications in Vietnam shall be carried out only upon request for examination from either the applicant or a third party, subject to payment of an appropriate fee. Such a request shall be submitted to Vietnam Patent Office within forty two (42) months for inventions, counted from the filing date or the date of priority if the priority is claimed, or the application shall be deemed to have been withdrawn. The time limit for making request for substantive examination of a patent application for utility solution is thirty six (36) months.

Substantive examination is conducted by Vietnam Patent Office in order to determine whether the claimed invention is patentable. The time limit for substantive examination for invention/utility solution applications eighteen (18) months, computed from 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.

If the patentability requirements are met, or the applicant has properly rectified the deficiencies or successfully rebutted the examiner’s rejection(s), Vietnam Patent Office will issue a “Notification of Intention to Grant” notifying the applicant of its intention to grant a patent, and shall set an three month period of time for the applicant to furnish the NOIP with the required fees for issuance, publication, registrar, and the first annuity

  • Estimated time for obtaining patent: from 36-42 months from filing.
  • Validity term: 20 years for patent for invention; 10 years for patent for utility solution, from the filing date.

 

Sample Patent Application in Vietnam: Download 

Sample Invention Patent in Vietnam:    Download 

 

8.Patent opposition proceeding in Vietnam

 

Patent opposition in Vietnam can be done, either before the patent is granted, by filing pre-grant opposition under Article 112 of Vietnam IP Law, or after the grant of the patent by filing a post-grant opposition which serves as a patent invalidation proceeding per Article 96 of Vietnam IP Law.

The grounds for both pre-grant and post-grant oppositions in Vietnam are the same and there is nothing which prohibits a pre-grant opponent from subsequently filing a post-grant opposition. The Pre-grant opposition can be made at any time after the patent application has been published but before the grant of a patent. Publication of patent applications in Vietnam is made in 19th month from the priority date or within 02 months from the date of acceptance as to form, whichever is later. Any natural or juridical person. Legal interest is not required. Any person may, in writing to the IP Office of Vietnam, contest the grant of a patent in Vietnam.

Grounds for patent opposition in Vietnam:

  • The right to file the application.
  • The priority right.
  • Protection criteria in which the subject matter of the invention is not patentable (e. (i) Inventions lacking any inventive step over any prior publication or over any prior use; (ii) inventions lacking novelty (inventions that were publicly known in Vietnam or a foreign country, prior to the filing of the patent application; inventions that were publicly worked in Vietnam or a foreign country, prior to the filing of the patent application; and (iii) inventions that were described in a distributed publication, or inventions that were made publicly available through an electric telecommunication line in Vietnam or a foreign country, prior to the filing of the patent application); (iii) inventions not having an “industrial applicability”)
  • Other matters relating to the application (e.g. the disclosure of the invention by which it is to be performed is not sufficient and clear; the patentee has failed to disclose or has furnished false information regarding foreign applications).

The grounds for both pre-grant and post-grant oppositions in Vietnam are the same and there is nothing which prohibits a pre-grant opponent from subsequently filing a post-grant opposition (a patent invalidation) in Vietnam.

 

Patent opposition flowchart in Vietnam

 

9.Author of inventions, patent owner, rights and obligations thereof in Vietnam.

 

9.1. Author of inventions, rights and obligations thereof in Vietnam.

 

The author of an invention means the person who has personally created such invention. Where two or more persons have jointly created an invention, they shall be co-authors of it.

The author of an invention is entitled to moral rights (i.e. To be named as authors in invention patents; To be acknowledged as authors in documents in which inventions are published or introduced) and economic rights (i.e. to receive remuneration from patent owner as provided in Article 135 of Vietnam IP Law).

Per Article 135 of Vietnam IP law, patent owner shall be obliged to pay remuneration to the authors of such inventions throughout the term of protection thereof. Unless otherwise agreed upon by the parties, the minimum level of remuneration payable by a patent owner to an author shall be regulated as follows:

(a) Ten (10) per cent of the profit gained by the owner from the use of the invention, industrial design or layout design;

(b) Fifteen (15) per cent of the total amount received by the owner in each payment for licensing of the invention, industrial design or layout design.

Where an invention is jointly created by more than one author, the minimum remuneration level as statutorily provided in Vietnam shall be applicable to all co-authors. The co- authors shall agree between themselves on the division of the remuneration paid by the owner.

 

9.2. Patent owner, rights and obligations thereof in Vietnam

 

9.2.1. Patent owner in Vietnam: The owner of an invention in Vietnam means an organization or individual who is granted an invention Patent by the IP Office of Vietnam (Article 121, Vietnam IP Law).

 

9.2.2. Rights conferred to patent owner in Vietnam: A patent owner in Vietnam has the following rights: (i) to use or authorize others to use the invention patented in Vietnam; (ii) to prevent others from using the patented invention in Vietnam and (iii) to depose of the patented invention.

A patent holder in Vietnam has the exclusive right to make use his/her patent, has the right to decide who may – or may not – use the patented invention for the period in which the invention is protected. The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. Licensing a patent is possible in Vietnam, meaning that the patent owner grants permission to another individual/organization to make, use, sell etc. his/her patented invention. This takes place according to agreed terms and conditions for an agreed period of time in return for “royalty” payments.

A patent owner may grant a license to a third party for different reasons. The patent owner may not have the necessary manufacturing facilities, for example, and therefore opts to allow others to make and sell his/her patented invention in return for “royalty” payments. Alternatively, a patent owner may have manufacturing facilities, but they may not be large enough to cover market demand. In this case, he/she may be interested in licensing the patent to another manufacturer in order to benefit from another income stream. Another possible situation is one in which the patent owner wishes to concentrate on one geographic market; therefore the patent owner may choose to grant a license to another individual/organization, with interests in other geographical markets. Entering into a licensing agreement can help to build a mutually-beneficial business relationship.

Unlike selling or transferring a patent to another party, the licensor continue to have property rights over the patented invention

Once patented in Vietnam, the patent holder has rights to enforce his/her patent rights under administrative and/or civil or criminal route under the laws of Vietnam.

 

9.2.3. Obligations of patent owner in Vietnam: The patent owner has obligation to: (1) pay remuneration to the author(s) of invention; (2) pay the annuity or renewal fee for maintenance or renewal of the patent; and (3) use or license the patented invention to another person based on decision of the Vietnamese State administrative authority (under compulsory license proceeding).

 

Co-owned patent related matter in Vietnam/Joint ownership of invention in Vietnam

The joint ownership of intellectual property in general and of invention in particular in Vietnam or other country can arise in two different ways: (i) An agreement may provide that patent will be owned jointly by the parties, regardless of whether they were joint authors, joint inventors or joint creators and (ii) The parties may contribute jointly to the creation of the invention and so are joint authors, joint inventors or joint creators.

If joint ownership of patent is to be agreed, generally, the agreement will address the following 3 issues, namely, (i) whether a joint owner can or can not exploit the co-owned patent (only with or without the need for, the other joint owner’s consent or only with the obligation, and/or without the obligation, to pay royalties (or other fees)); (ii) whether a co-owner grant a licence to another person (only with, or without the need for, the other joint owner’s consent and/or only with the obligation, or without the obligation, to share the royalties (or other fees) received from the licensee); and (iii) Whether a co-owner assign its share of the co-owned patent to another person only with, or without the need for, the other joint owner’s consent.

The other matter that an agreement should specifically address is the ownership proportions held by the joint owners. If the parties do not specify a joint ownership proportion, it will be presumed that they are equal joint owners. However, joint owners do not always seek to be equal joint owners. Sometimes, one party may make a larger contribution than the other (in money, resources, or an innovative contribution), which may justify an unequal ownership proportion. In that case, it will be important to specify what the joint ownership proportion will be, or how it is to be determined to avoid internal disputes and easy calculation of royalties/license fee if the patent is licensed to a third party. Thus, unless the joint owners of a patent agree otherwise, it is generally construed that co-owners have equal shares in the patent and can exploit it for their own benefit without accounting to each other. Many co-owners face dilemma in exploitation of the co-owned patent, especially when licensing other party to use the co-owned patent. The lesson is that it is not desirable to be silent on these issues of exploitation, assignment and licensing, but rather, to specifically address them, and for a joint ownership agreement to regulate in an agreed manner the respective rights of the joint owners before proceeding with patent registration in Vietnam.

 

If the patent is jointly owned, can a co-owner exploit the patented invention without the consent of the other  joint owner under the laws of Vietnam?

 

Our advice: Vietnam IP Law and Regulations are silent on exploitation of co-owned invention patented in Vietnam. To avoid any conflict among the co-owners during the exploitation of the patented invention, a consent from the rest joint owner should be obtained.

 

If a patent is jointly owned in Vietnam, can a joint owner of the patent license the co-owned patent to a third party in Vietnam without the consent of the other co-owner(s)?

 

Our advice: No explicit provisions on whether a joint owner of the invention patented in Vietnam can license the co-owned patent to a third party in Vietnam without the consent of the other co-owner(s) are available under the laws of Vietnam. However, as provided in Article 47.1(d) of Circular No. 01/2007/TT-BKHCN, one of the requirements for recording a license over an industrial property matter in Vietnam is “Document on consent by co-owners on license over industrial property matters, if the industrial property matters are under co-ownership”. Hence, it is generally construed that if a patent is co-owned, a co-owner cannot grant license over such a co-owned patent to third party without consent of the other co-owners.

 

An agreement was signed between a co-owner of the patent and the other co-owner(s) and the governing law of the agreement is a foreign law (not Vietnamese law). When interpreting the agreement in your country, is the governing law of the agreement over law as defined in the agreement?

 

Our advice: Under the laws of Vietnam, it is subject to parties in an agreement choose which national law should to regulate/govern the agreement. Choice of an overseas law to regulate/govern an agreement is therefore acceptable, provided that performance of the agreement under such an overseas law is not in contrary to fundamental principles of the laws of Vietnam. Article 667 of Civil Code of Vietnam provides that “in case that an overseas law is applied, but with different understandings, the overseas laws should be construed in accordance with interpretations of the authority of such an overseas country”. In this regard, we opine that as far as the performance of the agreement is not in contrary to the principles of the Vietnamese laws, overseas laws will be the laws for interpretation of the agreement, as defined in the agreement.