7 Key Changes in Patent in the 2022 IP Law of Vietnam

By Le Quang Vinh, Senior Partner – Bross & Partners

Email: vinh@bross.vn

A patent is a form of protection for technical creations existed in the form of a substance, product or process regulated in the IP Law[1]. In order to ensure compliance with international commitments after joining the new generation trade agreements including CPTPP, EVFTA and RCEP, Vietnam has revised quite a lot of regulations related to subject matters of intellectual property rights,[2] especially including inventions under the Third Amendment to the 2005 IP Law (the “2022 IP Law”) which has just been passed by the National Assembly on June 16, 2022. The 2022 IP Law replaces the 2009 First Amendment and Second Amendment to the 2005 IP Law (the “2005 IP Law”). The IP Law 2022 will take effect from January 1, 2023 except for provisions on sound marks that was effective since January 14, 2022 and provisions on protection of experimental data for agricultural chemical products that will be effective from January 14, 2024. Bross & Partners is pleased to keep you informed of 7 patent-related key changes.[3]

1. Novelty of inventions

Novelty that was generally defined in the 2005 IP Law is now stipulated clearly under the 2022 IP Law. For instance, Article 60.1 separates prior art into 2 forms of disclosure, including non-patent literature and patent documents, whereby an invention is considered novel if it does not fall into one of two cases:

1.      Being publicly disclosed in the form of use, written description, or any other form inside or outside the country before the filing date of patent application, or prior to the priority date, as applicable.

2.      Being disclosed in another patent application having an earlier filing date or priority date but it is published on or after the filing date, or priority date of that patent application.

2. Entitlement to Register an Invention

The IP Law 2022 adds provisions on granting the right to register an invention to organizations and individuals assigned to manage genetic resources, providing genetic resources and traditional knowledge about genetic resources under contracts for accessing genetic resources and sharing benefits, unless the invention is the result of a scientific and technological task funded with the State budget.

Except for the case of inventions in the field of national defense and security, organizations assigned to manage scientific and technological tasks using State budget will have the right to register such inventions automatically and without reimbursement.

In the case of an invention in the field of national defense and security, the right to register it belongs to the State if such invention is created entirely by using the State budget. If an invention is partly funded by the State budget, the patent application eligibility is determined in proportion to the proportion of the State budget allocated to the process of creating the invention.

If the invention is determined to belong to the State, the patent application may be filed through the representative of the state owner who is one of three subjects: (a) Committee for Management of State Capital at Enterprises (CMSC); (b) Ministries or ministerial-level agencies, People's Committees of provinces and centrally run cities; (c) State Capital and Investment Corporation (SCIC).

3.      Two Ways of Patent Challenges

The 2022 IP Law adds for the first time a new mechanism allowing a third party to oppose a patent application in addition to third party’s written opinion kept unchanged. It is worth noting that while the third party’s written opinion would only serve as a reference source for examining a patent application, it seems that legislators seek to develop an additional mechanism to oppose a patent application as an independent new opposition procedure (not a reference source for the processing of a patent application).

More importantly, unlike a third party’s written opinion that can be filed any time calculating from the point of time a patent application is published in the Industrial Property Official Gazette until prior to the date of decision on grant of title of protection, the new mechanism permits any third party to file an opposition to a patent application only within 9 months since the publication date of the patent application.

4.      Nine legal bases for opposition of patent application

Whether third party’s written opinion or third party’s opposition is filed, the opponent may   invoke and prove one of the following 9 legal grounds:

1.      Subject matter sought for registration does not fully meet the criteria for patentability.

2.      Applicant does not entitle to register an invention.

3.      Subject matter seeking for patent, although having fully met the criteria for patentability, is not a patent application having with the earliest priority date or filing date.

4.      There is more than one identical or equivalent patent application being filed on the same day by more than one applicant and those applicants have not yet come to an agreement to withdraw one of those filed applications

5.      Patent application as amended or supplemented widens the scope of disclosed subject matter described in the application or changes the nature of the subject matters seeking for registration stated in the application.

6.      Patent application as filed goes beyond the scope of disclosure as specified in its original specification.

7.      Patent application has been not yet disclosed in a full and clear manner to the extent that it cannot be comprehended and implemented by a person having ordinary skill in the art in the corresponding technical field.

8.      For patent application directly created by virtue of genetic resources or traditional knowledge of genetic resources, that patent application does not disclose or incorrectly disclose the origin of genetic resources or genetic resources-related traditional knowledge.

9.      Patent application is filed in contrast with the regulations on security control over inventions seeking for protection overseas.

5.      Eight Grounds for Cancellation of a Granted Patent

A granted patent may be cancelled entirely or partly by any third party if one of the following eight grounds is found:

1.      Patent application is filed in violation with the regulations on security control over inventions seeking for protection overseas.

2.      Patent applications for inventions which are directly created on the ground of genetic resources or traditional knowledge about genetic resources but fail to disclose or incorrectly disclose the origin of genetic resources or traditional knowledge about genetic resources included in such application.

3.      Applicant neither has entitlement to register invention nor being assigned such entitlement.

4.      Patent application does not satisfy criteria for protection, namely novelty, inventive step, and industrial applicability; or the content in the patent application is contrary to social morality and public order.

5.      Patent application as revised or supplemented widens the scope of disclosed subject matter described in the application or changes the nature of the subject matters seeking for registration stated in the application.

6.      Patent application has been not yet disclosed in a full and clear manner to the extent that it cannot be comprehended and implemented by a person having ordinary skill in the art in the corresponding technical field

7.      Patented invention goes beyond the scope of disclosure as specified in its original specification.

8.      Granted patent does not satisfy the first-to-file principle specified in Article 90

6.      Confidential inventions

The 2005 IP Law does not mention the concept of confidential inventions including confidential utility solutions (secrecy of inventions or secret inventions), but only stipulates that the limitation of rights to inventions belonging to state secret is implemented in accordance with the Governmental regulations. Decree 103/2006/ND-CP as revised providing guidance on implementation of the IP Law states that inventions that are determined by a competent state agency to be a state secret in the field of national defense and security are called secret inventions. Now, the 2022 IP Law, as the the first time, sets up the secret inventions to a separate provision, particularly Article 4.12a defines that a confidential invention is an invention that is determined by a competent state agency to be a state secret in accordance with the law on protection of state secrecy. Requirements for confidential patent registration dossiers and procedures will be guided by the Governmental Decree.

7.      Security Control over Inventions prior to Seeking for Protection Overseas

Confidential inventions must be subject to security control before they are filed overseas by individuals or organizations. Under Article 89a of the 2022 IP Law any patent application filed abroad by an individual is subject to security control if all the following four factors are found:

(a) Invention has an impact on the field of security or national defense

(b) Invention is created in Vietnam

(c) Entitlement to register the invention belongs to an individual who is a Vietnamese citizen and permanently resides in Vietnam

(d) Invention has been filed in Vietnam for the purpose of being checked as to security control procedure.

Where an invention is made by an organization, security control shall be imposed if all three factors are satisfied:

(a) Invention has an impact on the field of security and national defense

(b) Organization is incorporated under the laws of Vietnam; and

(c) Invention has been filed in Vietnam to carry out security control procedures.[4]

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, domain name, copyrights, patents, plant varieties.

Should you have any query, please contact: vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.