Future of economic and social heritage is based on every single innovation and invention over time. Patents and utility models are key to enterprises in developmental racing. In Vietnam, for the past decade, there is a surge in the number of patent and utility model applications (an increase of approximately 70% from 3582 applications in 2010 to over 7000 applications in 2021).
In Vietnam, there are some ways to file patent/ utility model application, such as: filing an application directly, filing under the Paris Convention or through PCT. Each method has advantages and disadvantages. However, it is hard to conclude one way far outweighs the other, it mainly depends on situation of applicant and their purposes.
Through our experiences of filing and prosecuting of patent/ utility model application in Vietnam, there are some highlights for each method:
|Aspects||Filing application directly||Filing application under the Paris Convention||Filing application through PCT|
|Time period||Whenever you have an intention to disclosure invention to exchange the advantages of the protection||Twelve (12) months from the earliest priority date||Thirty-one (31) months from the earliest priority date|
|Publication of application||Nineteenth (19th) month from the filing date||Nineteenth (19th) month from the priority date||Thirty-fourth (34th) month from the earliest priority date|
In Vietnam practice, in our experiences, the Intellectual Property Office of Vietnam usually take full advantage of the examination result of the corresponding Patent (in a foreign country such as the United States, Republic of Korea, Japan, China etc.) for their own conclusion on the patentability of the patent/ utility model application in Vietnam, thus, filing patent/ utility model application through PCT is highly recommended in Vietnam.
According to Article 131 of Intellectual Property Law of Vietnam, by filing an application for patent or utility model, the applicant can put a start to the provisional rights, which allows the applicant to prevent third parties from using the invention/utility model claimed in the published application. Thus, if the applicant wishes to get an appropriate resolution when there is infringement, filing application directly or under the Paris Convention is also recommended.
February 2022 – Intellectual Property Insights – Change in trademark registration in Vietnam
From 1 January 2022, the Regional Comprehensive Economic Partnership (RCEP) will come into force.
Becoming a party of Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) and EU-Vietnam Free Trade Agreement (EVFTA), Vietnam has launched a Draft for amending and supplementing the Intellectual Property Law.
For implementing the commitment when Vietnam become members of these two mentioned International Agreements, Legislature has supplemented this subject into IP Law as a subject sought to be protected. The Vietnamese government proposed new amended IP Law to the Vietnam Intellectual Property Law, in which:
(1) Sound mark for being protected
(2) International songs become sign not protected as marks.
(3) Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than THREE years, except where the ground for such invalidation is non-use of the mark instead of FIVE years under an old regulation.
(4) For third party opinions on the grant of Certificate, under an old IP Law, there is no time limit for filing the Opposition but under the Draft for new IP Law, the third party can only file the opposition within 05 months from the date the trademark application is published.
For trademark protection in Vietnam, the first-to-file rule is applied. For avoiding any potential risk of refusal and/or infringement, foreign enterprises are highly recommended to file the trademark application for registration as soon as possible before having actual business or trading activities in Vietnam.
In addition, the duration for examination of a trademark application is significantly long, it is advisable that application for all the used/potentially used trademark will be filed as soon as possible before being used.
March 2022 – Intellectual Property Insights – Patent Prosecution Highway (PPH) in Vietnam
PPH program is bilateral or multilateral cooperation among Intellectual Property Offices (IPOs) in order to accelerate patent examination procedures by sharing working and assessment results. Currently, the Intellectual Property Office of Vietnam (IPVN) has collaborated with Japan Patent Office (JPO) and Korean Intellectual Property Office (KIPO) to provide high-efficient PPH programs. In near future, the IPVN could be in journey of operating PPH programs with other IPOs worldwide.
In practice in Vietnam, number of allowed PPH requests is 200 per year for each office. Time allotted for filing PPH request is scheduled into two periods, namely, from April 1 to September 30 and from October 1 to March 31 of the next year.
In practice, PPH requests based on Japanese patent applications quickly reach maximum while PPH requests based on Korean patent applications run out slightly slower.
Please note that there is no official fee for attending PPH program and Daitin & Associates always offer assistance in preparing and filing PPH requests with FREE of charge.
In Vietnam, PPH programs are not available for almost patent applications and it normally takes from two (02) to four (04) years or even more to receive substantive examination result. In our experiences, to get the substantive examination result in time, the applicant should consider to submit reminder(s) to the IPVN and/or submit corresponding examination result which meets patentability in other countries such as the United States, Republic of Korea, Japan, China etc. for reference by the IPVN’s examiners. In practice, the IPVN usually use foreign examination result so substantive examination result of the Vietnam patent application could be issued soon in such case.
July 2022 – Intellectual Property Insights – Series of updating regulations on Law amending and supplementing a number of Articles on the Intellectual Property Law 2022
On June 16th, 2022, Law on amending and supplementing a number of articles of the Intellectual Property Law of Vietnam (hereinafter called “the Law”) was ratified by the National Assembly, which will take effect on January 1, 2023, except for a few provisions. Highlight parts regarding patent, utility models and industrial design including:
- The Law focuses on providing certain mechanism/provisions for creation, registration (the Applicant – ruling unit – empowerment policy), exploitation and dissemination of patent, utility model and industrial design for national scientific and technological tasks funded by the State’s budget and confidential inventions;
- The opposition action procedure is officially adopted, along with Article 112 on the opinion of the third party, gives the chance to third party for submitting an opinion about the application. However, this procedure has a time limit, namely:
- Any third party can file the opposition action against the patent application within nine (9) months from the publication date;
- The time limit is four (4) months for the industrial design application counted from the date of the application is published.
- One key amendment is that the industrial design patent application can be late published according to requests of the Applicant at the time of filing and the period of suspension is seven (7) months from the filing date.
- The Law also provides new definition of the term “industrial design” including mentioning to component parts of complex products, in particular “Industrial design is appearance of a product or component parts of complex products, expressed in shapes, lines, dimensions, colors or any combination thereof and visible through exploitation of products or complex products’ function”.
In an effort to institutionalize the economic strategies of the governing party, comply with international treaties and conventions, overcome visible limitations and shortcomings which are disclosed over 17 years of the implementation of the Intellectual Property Law in Vietnam, the Law of June 16th, 2022 is expected to promote the rules and enforcement, efficiency and auspiciously enable the relevant parties to reach the high and equal protection of their legal rights in Vietnam.
 Statistics is calculated up to October 30, 2021