In brief: patent prosecution in Vietnam

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Under article 4.12 of the Law on Intellectual Property (the IP Law), an invention is defined as ‘a technical solution, in the form of a product or a process, to resolve a specific problem by utilising laws of nature’. In accordance with article 59, the following subject matter shall not be protected as inventions:

• discoveries and scientific theories;
• mathematical methods;
• schemes, plans, rules or methods for performing mental acts, training domestic animals, playing games or doing business;
• computer programs;
• presentations of information;
• solutions of aesthetic characteristics only;
• plant and animal varieties;
• processes of an essentially biological nature for the production of plants and animals other than microbiological processes; and
• disease prevention, diagnostic and treatment methods for humans or animals.

The IP Law explicitly excludes, among other things, software, business methods and medical methods from protection; however, as recently provided in the Examination Guidelines for Inventions, a computer program may be considered as a patent-eligible invention if the program is of a technical character and is truly a technical solution to resolve a technical problem by technical means. The program should have the potential to bring about a further technical effect that goes beyond the normal physical interactions between the program and the computer. In particular, a computer program claim is acceptable if it is drafted in the form of ‘a computer-readable medium having a computer program embodied therein’.

In respect of method-of-treatment claims, under the old patent law, in certain cases, such claims may survive if converted into the Swiss-type format; however, the National Office of Intellectual Property has raised objections to ‘use-type’ claims on the grounds that they relate neither to a process nor a product, and therefore cannot be regarded as statutory subject matter. This viewpoint has resulted in fierce debate among Vietnamese IP professionals, which has not yet come to an end.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

Article 86 of the IP Law provides that:

1. The following organisations and individuals shall have the right to registration of an invention, industrial design and layout design:

(a) the authors who have created the invention, industrial design or layout design by his or her own efforts and expenses; or

(b) the organisations or individuals who have invested funds and material facilities to the authors in the form of a job assignment or job hiring unless otherwise agreed by the parties and such agreements are not contrary to paragraph 2 of this article.

2. The Government shall provide for the right to the registration of inventions, industrial designs and layout designs created using funds and material and technical facilities from the state budget.

3. In case more than one organisation or individual have jointly created or invested in the creation of an invention, industrial design or layout design, those organisations or individuals shall have the right to registration and such right shall only be exercised with their consensus.

4. A person who has the right to registration as provided in this article may assign that right to other organisations or individuals in the form of a written contract, passing by inheritance In accordance with the law, even when a registration application has been filed.

In line with the above provisions, ownership of an invention made by a company employee or an independent contractor shall belong to the employer or the person who has invested funds and material facilities in the creation of the invention. If an invention has been jointly created by co-inventors or a joint venture, ownership of the invention shall belong to the co-inventors or the individuals or companies choosing to enter the joint venture, and such a right shall only be exercised with their consensus.

Patent ownership is recorded by the state by the grant of a patent. Ownership of a granted patent can be transferred by an assignment agreement in written form (article 138 of the IP Law).

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

It usually takes three years from the date of filing or entering into the national phase to obtain a patent. The waiting period may be shortened significantly if the applicant provides the National Office of Intellectual Property (NOIP) with information concerning the corresponding patent applications in other countries.

On the other hand, the procedure of examination on the merits will be prolonged if the invention falls within the pharmaceutical or biotech field and there has been no examination has been conducted in the United States, Japan, European countries, etc, to which the Vietnamese examiners may refer.

It typically costs about US$2,500 to obtain a patent granted to a patent application, filed through the Paris Convention or Patent Cooperation Treaty routes, with 30 pages of specification and two independent claims.

Are there any procedures to expedite patent prosecution?

The applicants of a patent application may file with the NOIP a request for accelerated examination, subject to the payment of extra fees; however, owing to a backlog at the NOIP, such a request is rarely accepted.

Regarding the Patent Prosecution Highway (PPH) programme, the NOIP has already signed the PPH programme with the Japanese Patent Office (JPO) and the Korea Intellectual Property Agency (KIPO); however, the number of PPH requests annually originating from the JPO is only 200, and from the KIPO it is only 100.

The submission of corresponding patents granted by the US Patent and Trademark Office, the JPO, the KIPO or the European Patent Office will greatly expedite the examination process.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

Article 102 of the Law on Intellectual Property (the IP Law) requests that the description of a patent application ‘sufficiently and clearly disclose the nature of the invention to the extent that such invention may be carried out by a person having ordinary knowledge in the art’ and ‘clarify the novelty, inventive step and susceptibility of industrial application of the invention’.

In accordance with the IP Law, the scope of protection of the invention shall be defined by the claims, in the form of a combination of the technical features necessary and sufficient to identify the scope of the rights to that invention, and must be in line with the specification of the invention and drawings. The claims must be fully supported by the description. The description usually contains the following subsections:

• title of the invention;
• technical field of the invention;
• background of the invention;
• summary of the invention;
• brief description of the drawings (if any);
• detailed description of the invention;
• examples (if necessary); and
• effect of the invention.

In cases where the invention concerns biological material that is not available to the public and that cannot be described in the application, the name of the depository institution and the accession number of the deposit should be provided.

Must an inventor disclose prior art to the patent office examiner?

The IP Law encourages inventors to disclose prior art to the patent office but does not include any sanctions against inventors who deliberately hide the prior art known to them.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier-filed application? If so, what are the applicable requirements or limitations?

A patent applicant may file one or more divisional patent applications to pursue additional claims to an invention disclosed in its previously filed application, provided that such additional claims are fully supported by the description as originally filed. Divisional patent applications may be filed at any time during the processing of the parent patent application.

Is it possible to appeal an adverse decision by the patent office in a court of law?

Under law, if dissatisfied with an adverse decision from the NOIP, an applicant or any third party may file a petition to appeal such decision with the minister of the Ministry of Science and Technology or file an appeal before the competent administrative court.

Does the patent office provide any mechanism for opposing the grant of a patent?

Article 112 of the IP Law provides that, from the publication date of a patent application until before the date of it being granted, any third party may request the rejection of a patent application by submitting arguments and relevant documents and information in respect of the patent application.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

In accordance with the IP Law, the priority right is to be determined on the basis of the first-to-file principle. Under article 90, where two or more patent applications have been filed by several independent applicants for the same invention, a patent may only be granted to the patent application with the earliest filing date or priority date, where applicable.

If more than one patent application has been filed by different applicants for the same invention and with the same priority conditions, namely with the same priority date, the NOIP shall invite all the applicants to jointly file a single patent application as co-applicants. If the applicants cannot reach such an agreement, all the patent applications will be rejected.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

During the term of validity of a patent, the patent owner may file a request to modify the patent by cancelling one or more claims in the patent. Any third party may file a request for invalidation of a patent if the patent has been granted on an unlawful basis. The patent may be terminated if the owner no longer exists, fails to pay the maintenance fee or surrenders his or her patent.

During a lawsuit, a court may hold a claim valid or invalid but may not amend the claims in a challenged patent. In accordance with article 117(4) of the IP Law and section 16 of Circular 01/2007/TT-BKHCN, re-examination may be requested only for pending patent applications. In particular, a patent application will be re-examined when a third party or the applicant opposes the NOIP’s notice of intention to grant or notice of intention to refuse to grant a patent.

How is the duration of patent protection determined?

The term of validity for a patent for invention is 20 years, while the term for a patent for a utility solution is 10 years, counted from the filing date.

Law stated date

Give the date on which the information above is accurate.

January 2022.