8 Best Practices for Registering Patent in Vietnam

Email: vinh@bross.vn

8 best practices below summarized by Bross & Partners may help you understand the patent protection practice in Vietnam, especially after the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) took in effect for Vietnam since February 14, 2019:

1. “Use” claims are presently regarded as non-patentable subject matters. Such formats as “Use” claim, the “Swiss-type” claim, “second or further medical use” claim is not currently accepted by Vietnam at the formality examination because the Intellectual Property Office of Vietnam (the Vietnamese IPO) always contends that these claims are not patentable subject matters by Section 4(12) of the IP Law defining patentable 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, whilst claims featuring as “use of product X for…or use of product X as…” is neither a product nor a process. To be accepted by the Vietnamese IPO, applicant may proactively amend claims in the as-filed application or pending the Vietnamese IPO’s office action before making amendment in the national phase, ie. Applicant may revise these claims to “the composition, product… for use as…, or for use in…”. However, please bear in mind that the Vietnamese IPO’s acceptance is merely accepted provisionally as to formality, later on such type of claim will be probably rejected in the substantive examination period because Circular 16/2016/TT-BKHCN of June 30, 2016 amending Circular 01/2007/TT-BKHCN as revised provides for that the function, utility of subject matter seeking protection is not the essential technical characteristics (signs) but solely embodies the purpose or acquired result of such subject matter. For the reason, applicant is advised to carefully consider retaining or omitting it from the as-filed invention

2. Computer program including software is non-patentable subject matters besides other subject matters ineligible under Section 59. However, according to the Vietnamese IPO’s patent examination guideline, computer program-based invention may be patentable if such program that runs in a particular computer can generate technical effect apart from the common interactive communication between the computer and program/software.

3. 12-month grace period of novelty disclosure accepted for the first time. Prior to the CPTPP came into force to Vietnam, disclosure of novelty before the filing date of an invention would have been a disaster for applicant because Vietnam only accepted very limited cases of loss of novelty prior to the filing date. However, with the CPTPP coming into effect, Article 18.38[1] has fundamentally changed the above novelty rule. In particular, publicly disclosed information by the person who has the right to register the invention, or the person who receives information directly or indirectly from the person who has the right to register the invention, regardless of whether or not this information is obtained with the consent of the person having the right to register the invention, must be not taken as a reference document, meaning that they do not belong to "prior art" or "state of the art" for the purpose of determining the novelty or non-obviousness of the applied-for patent. Nevertheless, according to the Vietnamese IPO guidance, since 12-month grace period excludes any invention claiming priority date so patent applications subject to beneficiary shall be non-conventional ones.

4. Conversion of a rejected patent application into a utility model application is allowed. Where lack of inventive step is advised in the International Search Report (ISR), International Preliminary Examination Report on Patentability (IPRP Chapter I), or Written Opinion of the International Preliminary Examining Authority (WO-ISA), and on the condition that novelty of the application in question is assured, applicant is recommended to enter the Vietnamese national phase as usual because of two reasons: (a) he can opt for, at the national phase, an option available in the request suggesting to convert such PCT-based application for patent for invention into application for patent for utility solution, and (b) the Vietnamese IPO usually does not rely upon the above said ISR, IPRP and WO-ISA before it grants or denies, instead the Vietnamese IPO tends to rely on the grant of protection of the patent families issued by the world’s leading patent offices like the USPTO, JPO or EPO.

5. 31 months (not 30 months) since the earliest priority date is the time limit for entry into the Vietnamese national phase of PCT applications. We also note that 6-month grace period for late entry after the 31-month deadline is no longer accepted.

6. Government fees are charged by independent claims. Government charges are charged on the basis of number of independent claims, not total number of dependent claims and independent claims.

7. Patent family status regularly inquired. The status of patent family is often asked particularly before the issuance of substantive examination report by the Vietnamese IPO. This is a noteworthy practice that applicant should make good use of, especially where the patent families were granted in the US, EU or Japan, by proactively providing the same for the Vietnamese IPO in order for his/her Vietnamese patent application to be considerably accelerated and granted in a much shorter time. This practice has showed that the Vietnamese IPO is willing to grant patents based on similar patents granted abroad, and which resembles the practice of grant of patent based on the Patent Prosecution Highway ("PPH") that Vietnam is experimenting with a number of countries, such as with Japan, or the ASEAN Patent Cooperation Collaboration Program (ASPEC).

8. Annuity payment rule with abnormal 1^st year annuity. Any patentee wishing to maintain validity of his/her granted patent shall annually pay annuity beginning from the 1^st year. Annual annuities must be paid within 6 months prior to the due date. Late annuity payment in 6 months is accepted against a penalty. However, in practice at the time of issuing a notice of allowance, applicant is required to pay 1^st year annuity together with grant and register fees. Upon receipt of grant fee including 1^st year annuity, a hardcopy patent will be issued the Vietnamese IPO, on which indicates its decision on such grant of patent (this decision is kept internally and never sent to applicant/patentee). This leads to the fact the time limit for 2^nd year annuity payment and subsequent years is different from the 1^st year, i.e. the due date shall be stably identified from the date of grant.

Bross & Partners is able to assist clients to register patent or enter the national phase of PCT applications including translating specifications in various technical sectors like mechanics, pharmaceuticals, chemistry, microbiology, electricity, electronics, etc.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services regarding patent, design, trademark, copyright, anti-counterfeiting, litigation. For further discussion, please get in touch with us at vinh@bross.vn or 84-903 287 057