KENFOX IP & Law Office > Vietnam Patent FAQs

FAQs about Patent in Vietnam

15. As filing the patent in Vietnam, must we submit the Vietnamese draft at first filing?

Our advice:

In light of Vietnam regulations and law, the Vietnamese translation of the patent specification must be submitted right at the filing time. However, in urgent cases, we may facilitate to obtain approval for extension of time for submitting such translation (with certain surcharges on a case basis).

16. As you provided us with only POA form, I’m not sure that only POA is needed or another document such as a copy of company certificate is also requested?

Our advice:

Only POA is normally requested.

In case of non-PCT patent applications claiming priority rights under the Paris Convention, certified copies of priority documents are also required.

17. As the POA will be signed in my country, do we need notarial services to notarize such signature?

Our advice:

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

18. Documents should be hard copy? Or we can send you the soft file?

Our advice:

Only the original executed Power of Attorney must be a hard copy to be sent to us. To avoid any inconvenience for you, you may send us only the soft files of other documents than the original Power of Attorney.

19. What is the “Certified copy of priority documents”?

Our advice:

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.

20. The patent registration procedure in Vietnam?

Our advice:

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

Yes. Formality examination will be carried out right after the application is filed to the NOIP. 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 the NOIP 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 the NOIP, optionally right at the filing time or within 42 months computed from the priority date.

Additionally, one may optionally file to the NOIP requests for amendment of applications, for acceleration of applications in substantive examination stages, or oppositions against any other application, or appeals against any decision of the NOIP.

21. As we have the international search report (ISR) from WIPO, should we submit it to NOIP? Or NOIP requires only the international preliminary examination report?

Our advice:

The PCT documents (such as international search report or international preliminary examination report) are not compulsory ones. However, they should be submitted to the NOIP to facilitate the application examination in the national phase.

If the ISR must be submitted, should it be translated to Vietnamese?

No. The ISR must not be translated into Vietnamese, but the international preliminary examination report should be translated into Vietnamese.

Does NOIP use this ISR result for his decision?

The NOIP shall use the ISR result for reference. The NOIP’s decision is normally based on the international preliminary examination report.

Does this NOIP process be accelerated by this ISR?

No. The ISR does not accelerate the application process.

22. What is the grace period for filing petty patent and design patent to Vietnam?

Our advice:

– Grace period for PCT applications is 06 months.
– There is no grace period for applications with priority claim.
– There is neither deadline nor grace period for filing normal applications (i.e. non-PCT application without priority claim).

23. What is “Grace period for PCT applications is 06 months”?

Our advice:

Is it mean that we can file the national phase in Vietnam within 6 months after the deadline of PCT (31 months from first filing)? 
So we can file national phase in Vietnam within 37 months from first filing?
Is this grace period for only patent and petty patent not including design patent?

The grace period is 06 months after the deadline of PCT (31 months from the first filing). So, you can file the PCT patent within 37 months from the first filing.
Such grace period is not applicable to design patent.

Such grace period is not applicable to design patent.

24. Is it mean that we can file the national phase in Vietnam within 6 months after the deadline of PCT (31 months from first filing)?

Our advice:

In Vietnam practice, petty patent is called “utility solution patent”. As there has not been an IP specialized court in Vietnam, enforcement/litigation in Vietnam now meets certain difficulties and limitations. The most common way for enforcement in Vietnam is administrative proceedings, which some way proves strong enough to fight against infringements.

Enforcements for design patent and invention/utility solution patens are considerably the same. The level of complicatedness thereof varies from case to case.

25. As non-PCT case, If we have petty patent and design patents which have been filed in my country, can we file these patents in Vietnam with priority claim ? Do they have the limit period for priority claim?

Our advice:

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As your country is also a member of the Paris Convention, you can file such patents in Vietnam with priority claim to the applications. Time limit for priority claim is 12 months for invention/utility solution, and 06 months for design, computed from the priority date.

26. What is the advantage or disadvantage for claiming and not claiming the priority in Vietnam?

Our advice:

Priority claim should be advantageous for the following reasons:

– it helps not to destroy novelty in the same way as in your country as you mentioned.

– Filing system of Vietnam is first-to-file one, i.e. those who first file the patent shall be granted protection. Thus, the NOIP bases their examination of novelty on the priority date, which is always earlier than the filing date. This is obviously beneficial to the applicant.

27. How’s about the payment for both official fee and attorney fees?

Our advice:

Is it one-time payment? Pay in a lump-sum?

Payment is normally made in two installments: one for filing and the other for granting and first annuity (if an invention is eligible for protection). There may arise other fees (for office actions, amendments, appeal….) during the application process.

28. How’s about the 2nd-20th annuity fee? NOIP will inform us (through your firm) yearly? Or does the NOIP has the lump-sum fee for maintaining the patent right for 20 years protection?

Our advice:

The 2nd-20th annuity fees shall be paid annually and within 06 months before the paying deadline for each respective annuity.

The NOIP 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.

The NOIP does not have the lump-sum fee for maintaining the patent right for 20 years protection. Each annuity fee shall normally be paid to the NOIP on a year-by-year basis.

29. What’s the type of divisional applications in your jurisdiction? Is there a continuation-in-part application in your jurisdiction similar to that in US?

Our advice: There is no continuation-in-part application in Vietnam. The applicant may file a divisional patent application on his/her own initiative or at the request of NOIP (i.e. when the application does not have unity).

(Article 115, the Law on Intellectual Property

Article 17.2, Circular No. 16/2016/TT-BKHCN dated 30 June 2016 on amendments to some articles of Circular No. 01/2007/TT-BKHCN dated 14 February 2007 providing guidelines for the Government’s Decree No. 103/2006/ND-CP dated 22 September 2006 elaborating and providing guidelines for some articles of the Law on Intellectual Property regarding industrial property amended in Circular No. 13/2010/TT-BKHCN dated 30 July 2010, Circular No. 18/2011/TT-BKHCN dated 22 July 2011 and Circular No. 05/2013/TT-BKHCN dated 20 February 2013)

30. What’s the timing of filing a divisional application in the substantial examination phase or in the appeal phase ?

Please list all the timings or possible chances to file a divisional application. What are the rules about filing divisional applications on Applicant’s own initiative, and what are the rules about filing divisional applications based on the examiner’s unity objection?

 

Our advice:

The applicant may file a divisional application in the substantial examination phase (i.e. before NOIP issues a decision on its rejection of the application or a decision on grant of a patent). Division of an applicaton cannot be made in the appeal phase.

Possible chances to file a divisional application are to file a divisional patent application on the applicant’s own initiative or at the request of NOIP before NOIP issues a decision on its rejection of the application or a decision on grant of a patent.

Rules applicable for filing a divisional patent application both on the applicant’s own initiative and at the request of NOIP:

 

  • 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 (except for the procedures that are already completed when submitting the parent application and not required to be carried out again when submitting the divisional application) but shall be exempted from fees for examination of the priority claim (except for submission of divisional application for industrial design due to inconsistency). The divisional application shall be subject to formality examination (within 1 month from the filing date of the divisional application) and further processed according to the procedures not yet completed for its parent application. The divisional application shall be republished and the applicant shall pay fees for publication if the divisional application is submitted after NOIP issues a decision on acceptance of the formality of the 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.

(Article 115, the Law on Intellectual Property

Article 17.2, Circular No. 16/2016/TT-BKHCN dated 30 June 2016

Article 33.5, Statutes on examination of patent applications)

31. Is it possible to file serial divisional applications (i.e., filing a secondary divisional application based on a primary divisional application)? Does the law or rules allow serial divisional applications?

Our advice:

Yes. It is possible to file serial divisional applications on the applicant’s own initiative or at the request of NOIP before NOIP 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 (the filing fees of serial divisional applications are, to some extent, less than the filing fees of the parent application) as advised above.

(Article 17.2, Circular No. 16/2016/TT-BKHCN dated 30 June 2016
Article 33.5, Statutes on examination of patent applications)

32. The examination of the scope of divisional applications. What is the no-new-matter requirement as for a divisional application? How to determine whether there is new matter introduced in a divisional application?

Our advice:

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. Any new matter exceeding the protection scope (volume) or the contents disclosed in the specification of the parent application shall be determined and refused after NOIP’s examination as to the divisional application.

(Article 17.2, Circular No. 16/2016/TT-BKHCN dated 30 June 2016
Article 33.5, Statutes on examination of patent applications)

33. How long is a typical examination period of a divisional application? Are there any expedited or slowed prosecution tools as for a divisional application?

Our advice:

The examination period of a divisional application is quite the same as a normal application (statutorily around 21 months from the filing date of the divisional application, which may be prolonged or slowed down due to the heavy backlog of pending applications filed to NOIP). Any request for expedition of the divisional application shall be subject to prior approval of NOIP.

(Article 17.2, Circular No. 16/2016/TT-BKHCN dated 30 June 2016
Article 33.5, Statutes on examination of patent applications)

34. Your suggestions on the local practice of divisional applications?

Our advice:

The applicant can optionally file serial divisional applications on the applicant’s own initiative or at the request of NOIP, but such filing must occur before NOIP issues a decision on its rejection of the application or a decision on grant of a patent.

(Article 115, the Law on Intellectual Property
Article 17.2, Circular No. 16/2016/TT-BKHCN dated 30 June 2016
Article 33.5, Statutes on examination of patent applications)

35. The requirement of unity of an application. How to determine whether an application meet the requirement of unity in your jurisdiction?

Our advice:

An application is considered to have unity if:

  1. a) It requests protection of only one object; or,
  2. 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.

(Article 101.1 and 101.2, the Law on Intellectual Property
Article 23.3, Circular 01/2007/TT-BKHCN dated 4 February 2007  guiding the implementation of the Government’s Decree No. 103/2006/ND-CP date 22 September 2006, detailing and guiding the implementation of a number of articles of the Law on Intellectual Property regarding industrial property)

36. Overcome of unity objections. How to overcome the unity objections and what are the typical arguments?

Our advice:

The applicant can file opposion to utility objections based on his/her reasoning that their application has unity because it meets the unity requirements advised above. Alternatively, to overcome the unity objections, the applicant can file a divisional application from the parent application.

(Article Article 17.2 and 23.3, Circular 01/2007/TT-BKHCN dated 4 February 2007)

37. Unity objections in a PCT search report. If a unity objection is raised in the PCT search report, provided that the applicant does not pay additional search fees for this, is there any impact during prosecuting the national stage application?

Our advice:

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

(According to NOIP’s standard practice)

38. Your suggestions on the local practice of unity requirement ?

Our advice:

The applicant needs to ensure that their application meets the unity requirements.

(Article 23.3, Circular 01/2007/TT-BKHCN dated 4 February 2007)

39. Timing of filling a voluntary amendment. Please list all the timings or possible chances to file a voluntary amendment?

Our advice:

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 NOIP.

(Article 115, the Law on Intellectual Property
Article 22.1, Circular No. 16/2016/TT-BKHCN dated 30 June 2016)

40. The new matter requirement of voluntary amendment. How to determine whether new matters are introduced in a voluntary amendment?

Our advice:

Any amendment cannot exceed or broaden the scope of the application as originally filed. Any new matter, if any, can be found or determined by NOIP’s examiners after their completed examination of such amendment.

(Article 17.1, Circular No. 16/2016/TT-BKHCN dated 30 June 2016)

41. Your suggestions on the local practice of voluntary amendment?

Our advice:

The applicant needs to file any amendment before a decision on rejection of the application or grant of patent is issued by NOIP. Normally, any amendment to the application (especially, to the claims) shall be made right after receiving a notice on substantive examination results from NOIP rejecting the application.

(Article 17.1, Circular No. 16/2016/TT-BKHCN dated 30 June 2016)

43. What is the new matter requirement of amendment in the prosecution stage, including the substantial examination and the Appeal stage?

Our advice:

Any new matter exceeding or broadening the scope of the application as originally filed shall not be accepted by NOIP. Such new matter can be found or determined by NOIP’s examiners after their completed examination of such amendment.

(Article 17.1, Circular No. 16/2016/TT-BKHCN dated 30 June 2016)

42. Amendment chances. What’s the timing of amending the claims other than the voluntary amendment?

Is it permissible to amend the claims when file an Appeal to the Board against the Decision of Rejection made by the examiner in the substantial examination?

Is it permissible to amend the claims during the Appeal stage?

What are the requirements on amending the claims when responding to an Office Action or when filing an Appeal or during the Appeal stage?

 

Our advice:

The applicant shall file any amendment to the claims before a decision on rejection of the application or grant of patent is issued by NOIP. Any amendment cannot exceed or broaden the scope of the application as originally filed.

It is not permissible to amend the claims when file an Appeal to the Board against the Decision of Rejection made by the examiner in the substantial examination.

The   following contents are excluded from the subject of appeal:

  • Requests for     amendment     or supplement 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  NOIP during  the  examination    In such cases,  the  appellant  may  file  a request for additional examination.

(Article 17.1, Circular No. 16/2016/TT-BKHCN dated 30 June 2016
Article 22.1, Circular No. 16/2016/TT-BKHCN dated 30 June 2016)

43. What is the new matter requirement of amendment in the prosecution stage, including the substantial examination and the Appeal stage?

Our advice:

Any new matter exceeding or broadening the scope of the application as originally filed shall not be accepted by NOIP. Such new matter can be found or determined by NOIP’s examiners after their completed examination of such amendment.

(Article 17.1, Circular No. 16/2016/TT-BKHCN dated 30 June 2016)

43. What is the new matter requirement of amendment in the prosecution stage, including the substantial examination and the Appeal stage?

Our advice:

Any new matter exceeding or broadening the scope of the application as originally filed shall not be accepted by NOIP. Such new matter can be found or determined by NOIP’s examiners after their completed examination of such amendment.

(Article 17.1, Circular No. 16/2016/TT-BKHCN dated 30 June 2016)

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