SOME PRACTICAL TIPS FOR FILING PATENT APPLICATIONS IN VIETNAM

Introduction 

In the process of improvement for the purpose of Vietnam’s joining the WTO, Vietnamese patent law has been revealed as having a number of shortcomings. This is understandable, given the fact that during its short history of 20 years, the system has been functioning mainly for the purpose of grant of patents. It is recommended that foreign applicants who, in establishing their patent rights in Vietnam, face surprising hurdles, should start with some practical tips provided below.

Practical tips

Formal requirements

All Vietnamese patent applications will be examined as to form before acceptance. The formal criteria are set out in the current Circular 3055, which essentially requires a number of documents to be duly executed and certified, where applicable, and submitted in a timely manner. This strict procedure may cause difficulties for Applicants and Inventors, especially when it comes to the execution, notarisation and time issues.

For the application to be in order, foreign applicants often voluntarily request recordal of a number of formal changes. This step may well be considered practically unnecessary in a number of cases. To take the example of changes to the addresses of inventors: Although addresses are among the required information to identify inventors, they do not eventually appear in the granted patents. Therefore, the fact that an inventor does change his/her address makes no difference, and hence recordal of such a change could be seen as unnecessary.

In contrast, applicants of Vietnamese patent applications should not be too adamant about not recording changes to their details for the sake of their rights. It is required by law that assignment of the Vietnamese patent applications or patents be recorded within 60 days from the date of the assignment. [1] Changes caused by merger, split, or any other reasons, of firms or corporations, should be recorded as early as possible as well. Like anywhere else in the world, only the lawfully named applicants/patentees can exercise their rights in Vietnam.

It should be noted that the assignment procedure for patents is far more complicated than that one for applications. Thus, Applicants should be advised, wherever possible, to record the assignment of patent rights before the patent is actually granted, i.e. during prosecution of the corresponding applications.

Substantive requirements

Applicants of Vietnamese patent applications should be advised that any amendments made, upon or after entry into the Vietnamese national phase, to the description, claims, abstract, or drawings, where applicable, and even the title of the invention, is subject to payment of fees. Note must be taken immediately that such amendments include those made in response to Office Actions at any stage. Thus, it would be worthy to consider wisely in deciding to make, either separately or in combination, amendments to the application’s substance.

In practice, claims which relate to subject-matters excluded from protection under Vietnamese Patent Law,[2] must be deleted or amended before the application can be accepted as to form. This is also the case as to the ordering and numbering of the claims. For this purpose, notes should be taken as to the grouping of the dependent claims which need to follow immediately the independent claim that they depend upon.[3] Alternative reference to more than one independent claim is not allowed, as this is against the requirement that each claim refer to one subject-matter only.[4]

At the stage of examination as to substance, the substance of the application will be looked at in further detail. The title of the invention should always reflect all major categories of the subject-matters being claimed.

Consideration

Should the formal changes necessarily be recorded ?

In some cases, Applicants choose not to record some formal changes with the Vietnamese NOIP because of a number of reasons. The recordal procedure usually requires that changes have been attested to. The notarisation may be burdensome. Above all, by choosing not to record unnecessary changes, applicants can save some expenses.

When the Applicants wish the changes to be recorded, they should be advised to do so as early as they can. Fees for recordal of changes before the publication of the Vietnamese application are slightly lower than the fees for recordal after the publication. Also, the validity of an assignment of patent applications/patents is preserved only if the assignment is recorded within 60 days from the date of the assignment.

Should the amendments necessarily be made ?

Decisions to make amendments to the specification, including the claims, are even tougher. For foreign applications entering Vietnam as one of the national phases, any amendment thereafter is subject to payment of fees. This also applies to those amendments made voluntarily or in response to an Office Action.

Time limit

For submission of documents

It is formally required that most documents accompany the application at the time of filing. Pursuant to Circular 3055/TT-SHCN, submission of some documents may be delayed until 3 months from the filing date, or 34 months from the earliest priority date for PCT applications. Further, some documents, although required at the time of filing, can be deemed duly submitted if a fax copy of this document accompanies the application at the time of filing and the original thereof is submitted within 3 months. Extension is not officially allowed, though grant to petitions based on legitimate reasons may be made.

For response to Office Actions

Applicants usually are given opportunities to respond to Office Actions within a time limit. As the law currently stay, time limits to respond to Notices of Result of Examination as to Form and to respond to Notices of Result of Examination as to Substance may well be different. Although in most cases, the term is 2 months or 60 days from the date of Notices,This term is usually 2 months or 60 days from the date of the Notices, [5] the term for opposition to Examiner's opinion as a result of examination as to form may be limited at the discretion of the Examiner. [6]

Extension is normally allowed upon request and payment of fees. Usually, the extendible term is equal to the term allowed for response to the Office Actions. In some special cases, the extendible term is only 1 month.

Conclusion

It is intended that the above tips be brought to the attention of foreign applicants wishing to establish their patent rights in Vietnam, with the hope of helping them in preparing to face the differences as to law and practice that they may find between their home country law and the current Vietnamese patent system.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.

[1] Article 19.2, Circular 3055/TT-SHCN. This term, however, may be extended upon request based on a legitimate reason.

[2] Article 4, Ordinance 63/CP.

[3] Regulations 308/SHCN.

[4] Regulations 308/SHCN.

[5] Articles 13.3 and 16.3, Circular 3055/TT-SHCN.

[6] Article 13.7, Circular 3055/TT-SHCN