Patent Filing and Prosecution

Patent application in Vietnam

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.

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

2.1 (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 us 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.

2.2 (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 us 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 IP Vietnam 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.

 

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