Author: Jessie Gao; Slim Kou
I. Introduction
In Vietnam, invention means a technical solution in the form of a product or a process which is intended to solve a problem by application of laws of nature. An invention shall be protected by mode of grant of invention patent or utility solution patent.
Similar to other countries, a Vietnamese invention patent is valid from the grant date until the end of 20 years after the filing date; while a Vietnamese utility solution patent is valid from the grant date until the end of 10 years after the filing date. Since Vietnam has a first-to-file system, it is advisable to file an application for a patent as soon as possible after the invention and not to make the invention public before filing the application.
This article provides an overview of the Vietnamese patent process and strategies for patent applicants to successfully secure their patents in Vietnam. We also propose guidelines for avoiding common pitfalls in Vietnamese patent practice.
II. Requirements For Patent Filing In Vietnam
An applicant in Vietnam may claim priority based upon a patent application filed in any other country that is a signatory of the Paris Convention or the Trips agreement within 12 months from the filing date of the prior application.
A Vietnamese application may be filed with a copy of specification and claims in Vietnamese, drawings, sequence listing, where necessary, and the following information:
- Name, nationality and address of applicant
- Name and address of inventor(s)
- Original certified copy of Priority document (if claimed)
- Documents evidencing the registration right, if such right is acquired by the applicant from another person. For example, assignment of rights to submit the application (if any);
A certified priority document must be filed within 3 months from filing a patent application in Vietnam. DAS code is not applicable in Vietnam currently.
The VNIPO (National Office of Intellectual Property of Vietnam) requires an original signed and stamped power of attorney (POA) to file a patent application if the application is filed through a representative. No notarization or legalization is required.
Language Of Application
Similar to China, a Vietnamese translation of the application must be submitted at the time of filing. This also applies when filing amendments. Although a patent application may include a specification in a foreign language, it is the Vietnam translation that will be examined. The translation requirement in Vietnam is strict, and office actions may be issued for inaccurate translation. The quality of the Vietnamese translation of a patent specification can determine whether or not an invention is adequately protected and any patent right is enforceable against patent infringement.
Electronic Filing
Currently, VNIPO accepts both direct (offline) filing and online registration via the VNIPO’s web portal. PCT applications can also be filed electronically in Vietnam since December 1, 2019.
As of June 3, 2025, the VNIPO officially implemented the issuance and authentication of electronic copies of industrial property application files, documents, and protection certificates.
Under Vietnam legislation, a patent specification must include: a description of the invention, the scope of protection (or claims), an abstract, and drawings (if necessary). The detailed explanation of the invention must describe the invention in a manner sufficiently clear and complete for the invention to be carried out by a person having ordinary skill in the art to which the invention pertains.
Nevertheless, organizing a specification in the manner suggested by the VNIPO and accepted by VNIPO examiners is advisable, as it will help the examiner understand the invention. For that reason, most Vietnamese applications follow the following format:
- Title of the invention
- Cross-reference to related applications
- Background of the invention
- Summary of the invention
- Description of the drawings (if any)
- Detailed description of the invention (usually including a general explanation of the invention and how to practice it and specific examples of how to practice the invention)
- The claims
- Abstract
Although in Vietnam, a patent specification may be amended at the applicant’s initiative (also known as voluntary amendment) or at VNIPO’s request. However, if the amendment expands the scope (volume) of protection beyond the content disclosed in the specification or changes the nature of the object stated in the application, VNIPO will issue a notice to refuse to accept the amendment request, or terminate the substantive examination ahead of time, or refuse to grant the protection title. Also, if an amendment or supplement to a patent application expands the scope of the subject matter disclosed or stated in the application or alters the nature of the claimed subject matter stated in the application, there is a risk that the patented product or process could be invalidated at the request of a third party. Therefore, we recommend that as much information as possible should be included in the body of the specification, including the broadest possible description of the claimed invention.
In Vietnam, claim fees are charged based on the number of independent claims only. Dependent claims are not related to fees. And, there is no limit such as 10 claims as above, all independent claims involve fees. Besides, the claim fees are charged in multiple stages, including filing an application, requesting examination, paying annuities, etc. This mainly affects biological patent applications which often have a lot of independent claims. It also affects applicants’ strategy of drafting claims to file globally. Applicants tend to reduce the number of claims to save fees; but the factor to save fees in Vietnam is the number of independent claims only, while a lot of dependent claims could be introduced to the set of claims without an increase of fees.
In Vietnam, multiple dependent claims are allowable. However, in addition to omnibus claims, kindly note that use claims are now no longer accepted at the IP Office of Vietnam.
It is common practice in Vietnam to include a description of specific embodiments of the subject matter of a broad claim in the body of the specification. The recitation in the specification can be used as a basis for adding new claims to the application, if necessary.
After VNIPO grants an invention/utility solution patent: statutorily, the owner of a protection title is allowed to amend the patent specification in a way that narrows the scope of patent protection, namely, deleting one or several claims that are independent or dependent. This typically involves removing one or more independent or dependent claims that fall within the scope of protection claimed in the protection title. Such amendments are commonly requested by the applicant when a third party seeks to invalidate the owner’s patent, either because the claim does not meet the required standard of protection or because the invention was granted a protection title that goes beyond what was disclosed in the original patent specification
In contrast to common practice in Vietnam, we encourage inclusion of claims drafted with an eye toward maximizing licensing fees and potential damage awards. We believe that specific claims, which encompass the most profitable potential uses for the patented technology, should be included. Particularly in rapidly developing technology fields, the slow pace of invalidity trials may make it advantageous to include a certain number of narrower claims rather than risk losing two or more years of patent protection in amending the claims during an invalidity trial.
“Provisional” Applications
While the VNIPO doesn’t have a formal system for provisional applications, as exists in the US, provisional rights to patents and industrial designs are recognized under Article 130 and Article 131 of the Intellectual Property Law of Vietnam. These provisions state that, once a patent or industrial design application has been published in the Industrial Property Official Gazette, the applicant has the right to notify any third party who is using the invention or design without prior use rights for commercial purposes. The notification must specify the filing date of the application and the date on which the application is published in the Gazette. If the person who has been notified continues to use the invention or design after the grant of the patent or industrial design, the applicant is entitled to request compensation from that person, equivalent to the royalties for licensing the invention or design within the relevant extent and period of use.
In Vietnam, if an invention registration applicant makes a claim for priority on the basis of an initial application for registration of the same invention already filed in Vietnam, the protection title may only be granted for the accepted invention registration application containing a claim for priority while the initial application filed in Vietnam shall be considered withdrawn. Therefore, with proper planning it’s possible to use the fact that applications are not substantively reviewed until a request for examination is filed to file the equivalent of a provisional application in Vietnam. Embodiments, drawings, and claims can be added in new patent applications. The initial application merely needs to satisfy formalities such as an existence of a claim. By disclosing the most important embodiment with such a simple claim, an earlier filing date can be obtained. This first application therefore has the same effect as a US provisional application. Please also note that this first application can be a priority base for those applications filed outside Vietnam.
National Phase of PCT Applications
The time limit for entering a Vietnamese national phase of a PCT application is 31 months from the date of the earliest priority. As in other countries, the national phase in Vietnam for PCT applications filed overseas must be entered with an exact translation of the originally filed PCT application. It’s, therefore, important for those drafting PCT applications to consider the patent situation in all countries in which they intend to file. We recommend that a pre-filing review of PCT applications be conducted to ensure that the original PCT applications have been prepared with Vietnamese patent practice in mind.
The costs associated with entering Vietnamese national phase with a PCT application, filed in a country other than Vietnam, can be reduced by entering the national stage with only the original application, and not including any amendments made under PCT Article 19 or 34. While PCT rules do require that translations of all Articles 19 and 34 amendments be filed when entering a national stage, the only effect of not filing these amendments is that the amendments themselves are lost; the status of the application itself is not jeopardized. As discussed above, Vietnamese patent practice allows ample opportunities for amending a specification during the national phase so long as new matter is not added to the application. Most applicants only request examination in Vietnam after receiving the results of prosecution in Europe or the US and can, therefore, use that knowledge to decide which amendments to include in Vietnam.
New Matter
In Vietnam, it is possible for patent applicants to amend claims to newly incorporate a feature which is not described in the original specification, but only shown in Drawings or in Abstract. Normally, when claims are amended based on descriptions of the original specification, the newly incorporated limitation should be consistent with expressions as recited in the original specification. Examiner is very likely to object the modified expression, even if only slightly, for “not being literally supported in the original specification”.
We recommend including in most specifications a certain amount of repetitious text using varied terms and expressions. This provides multiple avenues for future claim amendments. This approach should also be considered when drafting PCT Applications to be filed overseas because support for the Vietnamese national phase application must be in the original PCT application.
Conversion between Invention patent and Utility Solution patent
It is worth mentioning that Vietnamese invention patents and utility solution patents (utility models) can be converted into each other, and the subject matter of Vietnamese utility model patents can be the same as inventions (different from China, method-related subjects can be applied for utility models in Vietnam). Vietnamese utility models have more lenient substantive examinations, which do not involve an inventive step, but require novelty. If an invention patent application does not meet the VNIPO’s requirements for inventiveness, the applicant can convert the invention patent application into a utility model application after the VNIPO conducts a substantive examination and before issuing a decision to refuse to grant protection.
A chart below shows the steps in prosecution of a patent application in Vietnam, and it’s excerpted from the VNIPO official website.
Procedures For Obtaining A Patent Right
Formalities Examination
The period for formal examination (including Vietnamese translation examination, Vietnamese examiners are serious in examining the translation) is 1 month from the date of application. 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.
During this process, if the applicant makes corrections or supplements to the documents on his/her own initiative or at the request of VNIPO, the period for formal examination can be extended to the time required to complete the correction or supplement of the documents.
Before the end of the above period, VNIPO shall complete the formal examination of the application and send the applicant a notice of the examination result. 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.
Publication
For patent applications passing the formality examination, the VNIPO will publish them in its Official Gazette of Industrial Property within the 19th month from the priority date or the filing date (if no priority is claimed), or within 2 months from the date of acceptance as to form, whichever is later, for the purpose of third party observation/opposition.
Note: From the date of publication of the patent application in the Vietnamese Official Gazette of Industrial Property until the date of grant, any third party has the right to submit a written third party observation to VNIPO, and attach materials for proof or clearly indicate the source of the information used. At present, due to official technical reasons, application texts of Vietnamese invention patents are not published in the official system completely, only the title pages and abstracts are shown, if you need to read the full description, you can contact the local IP law firm to get it. 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.
Request for substantive examination
The applicant shall submit a request for substantive examination and pay the examination fee within 42 months from the filing date or priority date, otherwise the application will be deemed withdrawn upon the expiration of the period. For utility model patent applications, the time limit for filing a request for substantive examination shall be calculated from the filing date or priority date, which is 36 months. The VNIPO examiner shall conduct substantive examination within 12 months from the date of receipt of the request for substantive examination or the date of application publication, whichever is later. If the applicant, in the course of substantive examination, corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the VNIPO, the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.
Although, VNOIP allows applicants to file a request for accelerated examination directly, subject to payment of additional fees if the request is accepted. Due to the backlog of patent application examination at VNIPO, such an acceleration request is rarely accepted or granted on a case-by-case basis with prior approval of VNIPO’s relevant persons. Currently, the accelerated examination routes for Vietnamese patent applications mainly include utilizing foreign examination results, Patent Prosecution Highway (PPH), ASPEC program.
- Utilizing foreign examination results
In a significant development for IP protection, Circular 23/2023/TT-BKHCN, issued by the Ministry of Science and Technology (MOST) on November 30, 2023, has officially codified the use of foreign examination results to facilitate the expedited examination of inventions in Vietnam by using foreign examination results. Under Article 16.9, the Vietnam Intellectual Property Office (VNIPO) may now consider search reports and examination results from corresponding overseas patent applications during the substantive examination process of a Vietnamese patent application.The foreign examination result must originate from a recognized patent office. While the circular doesn’t explicitly list specific offices, it’s likely to include major offices like the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and the China National Intellectual Property Administration (CNIPA).
- Patent Prosecution Highway (PPH)
In Vietnam, there are two PPH (Patent Prosecution Highway) pilot programs including VNIPO – JPO PPH pilot program (established between VNIPO and JPO) and VNIPO – KIPO PPH pilot program (established between VNIPO and KIPO). The client may consider filing a PPH request for cases where the corresponding application filed in JP or KR is granted.
- ASPEC program
ASPEC program is a program to utilize the search and examination (S&E) results from another participating IP Offices (including Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Singapore, Thailand and Vietnam) with the purpose to accelerate examination process and improve the examination quality. An ASPEC request can be filed if the Vietnamese application has a corresponding patent application granted in at least one of such ASEAN countries.
Statutorily, the substantive examination stage takes around 12 months to issue the first office action from the date a request for substantive examination is filed or from the date of application publication, whichever is later. However, in practice, the time period for substantive examination of a patent application is often much longer, extending to 3-5 years due to a backlog in examination at IP VIETNAM. By using one of the above methods, the duration of substantive examination may be shortened to approximately 6–12 months from the date of implementation, depending on the examiner’s workload and schedule.
An applicant may actively amend their patent application (filing a request for voluntary amendment) at any time before the IP Vietnam issues a final decision regarding the grant or refusal of the parent application. – Any amendment must not go beyond the scope of the original disclosure of the patent application.
If the request to amend is made after a notice of intent to grant a protection title has been issued, the application will be re-examined. Any additional or revised documents submitted by the applicant to VNIPO must be in Vietnamese.
While the US requires all patent applicants to promptly disclose any relevant prior art, Vietnam doesn’t have a formal system equivalent to the US Information Disclosure Statement system. Vietnam does, however, have a procedure for any party to provide a VNIPO examiner with relevant prior art for a patent application under consideration by providing copies of relevant documents to the VNIPO. This system, known as the third party observation, was developed to allow parties with relevant knowledge or information in a certain field, primarily potential competitors, to alert the examiner of prior art not considered in examination of an application. However, applicants may also utilize this tool.
In our opinion, the third party observation can be used effectively to ensure that the result of a patent application’s prosecution is a strong patent, which is able to withstand opposition or invalidity trial attacks by potential competitors. Such a patent is a valuable licensing resource since competitors will invariably search for prior art which is relevant to a patent before agreeing to a license. Any failure of a VNIPO examiner to uncover and consider all relevant prior art during prosecution can place a cloud over a resulting patent, or delay its enforcement while a patent owner defends the patent rights in an opposition or invalidity trial.
Applicants who take advantage of this practice will be able to license or enforce their patents faster and more effectively in Vietnam.
Rejection By The Examiner (Office Action)
After reviewing an application, a VNIPO examiner will issue either a notice on intended grant of a patent or a notice on intended refusal to grant a patent to the applicant citing reasons why the application was rejected. Grounds for rejecting an application are listed below. Similar grounds may also be used in opposition and invalidity trial proceedings.
| No | Legal grounds |
| 1 | The invention does not fully meet the protection criteria (three following conditions must be satisfied: novelty, inventive step, and industrial applicability). |
| 2 | The patent applicant neither has the right to register the invention nor being assigned the right to register. |
| 3 | The invention does not meet the first-to-file principle (not the invention with the earliest priority or filing date). |
| 4 | There is no consent from all applicants (in case of having more than one similar or identical patent application filed on the same day, which then meet the requirements of protection). |
| 5 | Amendments and supplements to a patent application go beyond the scope of the subject matters disclosed or stated in the original application or change the nature of the claimed subject matters. |
| 6 | The claimed invention exceeds the scope of disclosure in the original description of the patent application. |
| 7 | The invention has not been sufficiently disclosed in the patent description to the extent that person with average skill in the art may be able to implement the solution stated in the claim. |
| 8 | Failure to disclose or improper disclosure on the origin of genetic resources or traditional knowledge of genetic resources in the case of patent applications for inventions which are directly based on genetic resources or traditional knowledge of genetic resources. |
| 9 | Patent applications are filed in violation of the regulations on security control for inventions before being filed abroad. |
In Vietnam’s patent practice, an Office Action typically centers around three key areas, each of paramount importance:
(1)Assessment on Novelty and Inventive Step
Examiners at VNIPO often refer to International Preliminary Reports on Patentability (IPRPs) generated during the international phase for PCT applications. In another way, they may also consider examination results from corresponding foreign applications. However, it’s important to note that these examination results don’t always determine the final outcome of a patent application filed in Vietnam. Furthermore, if no IPRPs or the examination results of corresponding applications exist, or the Vietnamese examiners find that such results are not suitable for the Vietnamese patent applications, they will independently conduct substantive examinations based on the cited documents found during substantive examination.
If the claimed subject matter is identical or substantially similar to the prior art, it will be rejected for lack of novelty. To overcome this, applicants can implement necessary modifications and present compelling arguments and evidence. These efforts aim to demonstrate that the patent application incorporates fundamental technical elements distinct from those previously disclosed in the state of the art.
Concerning the inventive step, if the application lacks novelty, the inventive step of the application will not be evaluated. However, if the patent application proves to be novel, the examiner will assess its inventive step. This assessment involves determining whether (i) the distinctive basic technical features are considered to have been disclosed in the required minimum information source, and (ii) the combination of distinctive substantial signs is obvious to any person with average knowledge in the art. When a patent application is concluded to lack inventive step, the applicant can overcome this challenge by demonstrating the non-obvious nature of the subject matter intended for protection. This can be achieved by establishing the surprising technical advantage and unexpected technical effect of the invention sought for patent. Providing evidence in these areas strengthens the argument that the patent application represents an innovative step that cannot be easily created by a person with ordinary skill in the relevant art.
- Amendments according to family patents
When receiving notices suggesting that the applicant amend the application to align to a family patent, the applicant should consider accepting the examiner’s suggestions for amendments to speed up the examination process. This approach is frequently regarded as the quickest path to securing a patent promptly. In addition, when making such amendments, the applicant should ensure the removal of elements that are not protectable, such as those pertaining to use, methods for treating diseases, computer programs, and similar subjects.
- Assessment on unity of invention
Evaluating the unity of invention is another crucial aspect during substantive examination. Per Article 23.3 of Circular No. 01/2006/TT-BKHCN as revised, an application is considered uniform if: a) It requests protection of only one object; or, b) It requests protection of a group of technically interrelated objects that demonstrate the sole inventive idea and fall into the following cases: (i) An object is used to create (produce, manufacture or prepare) another object; (ii) An object is used to accomplish another object; (iii) An object is used to utilize another object; (iv) Objects are of the same type and have the same function to secure the achievement of the same result. Accordingly, it’s evident that unity of invention examination is only required for patent applications that include a request to protect multiple claimed subject matters, i.e., applications with numerous independent claims. When a patent application faces objections regarding the lack of unity, there are several strategic approaches to resolve this issue including deleting some of the claims, filing a divisional patent application, providing arguments, and/or making amendments.
Before the deadline for substantive examination of the application, VNIPO will send a notice on its intended refusal to grant a patent or a notice on its intended grant of a patent to the applicant. If the applicant who receives the notice of intended refusal to grant a patent fails to make corrections, or makes insufficient corrections, or fails to raise an opposition, or raises an unreasonable opposition within the prescribed period (within 2 months, this period can be extended), the VNIPO will send a decision of refusal.
If the applicant is dissatisfied with the examiner’s decision of refusal, he or she may file an appeal with the Director General of VNIPO or initiate lawsuits at court.
It’s possible to file an appeal against notices or decisions issued by the IP Vietnam. Applicants and all organizations/individuals having rights/interests directly related to the decisions or notices related to the processing of patent applications have the right to complain to the VNIPO or initiate a lawsuit in court in accordance with the provisions of the Vietnam IP Law and relevant laws.
The first complaint to the VNIPO is made within 90 days, from the date of receiving or learning about the VNIPO’s decision or notice on the processing of the patent application.
The second complaint to the Minister of Science and Technology is made within 30 days from the expiration of the time limit for settling the first complaint but the first complaint is not resolved or from the date that the person having the right to complain receives or learns about the decision for settling the first complaint, or initiate a lawsuit in court. The complainant has the right to initiate a lawsuit at court if they disagree with the complaint settlement decision of the Minister of Science and Technology.
Registration And Publication
Once a decision to grant a patent has been made, the VNIPO shall request the applicant to pay the fee for the grant of a patent, the fee for notification of the patent grant decision, the registration fee and the fee for maintenance of the first year’s validity of the patent. Within 10 days after applicants pay fully and on time the fees and charges, the VNIPO shall carry out the procedures for granting the patent for the invention. The Patent shall be recorded in the National Register of Inventions and the decision on granting the patent shall be published by the VNIPO in the Industrial Property Official Gazette within two months from the date of issuance and after applicants pay a publication fee.
Organizations or individuals who believe that the subject matter of a pending patent application may conflict with or adversely impact their legitimate rights and interests, or that it fails to satisfy the criteria for patentability, are empowered to challenge these applications. This challenge can be executed through one of two actions: (i) by submitting their opinions, along with supporting documents, to the IPVN, indicating that it is not advisable to grant a patent on the application (hereafter referred to as “third-party observations”); OR (ii) by filing a formal opposition on the granting of a patent (hereafter referred to as “third-party oppositions”). A third-party observation must be submitted to the VNIPO after the publication date of the patent application and before the granting date of the patent, and VNIPO will not have to inform the third-party of the results of considering the opinion. However, a third-party opposition must be submitted within nine months from the publication date of the patent application, establishing a strict timeframe; and the VNIPO will have to examine an opposition and inform the third-party of the examination results. Any natural or juridical person. Legal interest is not required. Any person may, in writing to the IP Office of Vietnam, contest the grant of a patent in Vietnam.
Patent opposition in Vietnam can be done, either before the patent is granted, by filing pre-grant opposition under Article 112 of Vietnam IP Law, or after the grant of the patent by filing a post-grant opposition which serves as a patent invalidation proceeding per Article 96 of Vietnam IP Law. The grounds for submitting a third party observation/filing a third party opposition are similar to the grounds for rejection of an application by an examiner. The grounds for both pre-grant third-party observation/opposition and post-grant invalidation in Vietnam are the same and there is nothing which prohibits a pre-grant opponent from subsequently filing a post-grant patent invalidation.
In Vietnam, any third party having a commercial interest adversely affected by a patent may begin proceedings to initiate an invalidity trial. VNIPO receives requests for patent invalidation. Statutorily, the court can hear a lawsuit regarding the validity of a patent. The invalidation process in Vietnam may lead to partial or complete invalidation of the patent. Here are the steps involved in the procedure for patent invalidation in Vietnam:
Filing a request for patent invalidation with VNIPO: Anyone can apply to VNIPO to request an invalidation of a granted invention.
(2) Receiving patent invalidation requests and sending notices to patent owners: Within 1 month from the date of receipt of the request, VNIPO shall notify in writing of the third party’s opinion to the patent holder, which sets a time limit of 2 months from the date of notice for the patent holder’s response.
(3) Patent holder/ applicant of the request: VNIPO will send notices related to opinions and documents submitted by one party to the other party and request the receiving party to reply/respond.
(4) Hearing: VNIPO can organize a hearing between the requester of patent invalidation and the patent holder.
VNIPO will review the opinions and documents submitted by both parties and issue a decision on the validity of the patent, either partially or entirely invalidated, or refuse the patent invalidation request in accordance with Clause 4, Article 95 and Clause 4, Article 96 of the IP Law.
The time limit for issuing the decision and notices mentioned at this point is within 3 months from the expiry date of the 2-month time limit without any opinion or from the date of receiving the patent holder’s opinion. This time limit may be extended for a maximum of 3 months if the patent holder raises a different opinion from the applicant who requests for the patent invalidation.
In case the patent holder declares to give up his industrial property rights as prescribed in Clause 3, Article 95 of the IP Law, the time limit for issuing the decision is within 10 working days from the date of receipt of the request.
The time for carrying out other relevant procedures necessary to settle the invalidation request shall not be included in the above-mentioned time limit. Typically, the entire process of issuing a conclusion or decision on a patent invalidation case may take between 1-3 years or even longer.
VI. Licensing And Litigation
Licensing
Licensing of an industrial property object means the permission by the owner of such industrial property object for another organization or individual to use the industrial property object within the scope of his/her use right. Licensing of industrial property objects must be established in the form of written contracts (hereinafter referred to as “license contract”). After the patent is granted, the owner may license the patent to another party, either exclusively or non-exclusively. The licensing agreement must be in writing and must comply with Vietnamese law. The terms of the licensing agreement should specify the rights and obligations of both parties, including the duration of the license, the scope of the license, and any royalties or other fees that must be paid.
VNIPO shall examine the requests for registration of the license contract within 2 months from the date of receipt of the request. If a dossier for registration of an industrial property licensing contract contains no error, the VNIPO shall issue a decision on the grant of a certificate of registration of an industrial property licensing contract; register and publish it in the Industrial Property Official Gazette; If a dossier for registration of the contract contains errors, the VNIPO shall send to the requester a notice on its intended refusal. If within a set time limit the requester fails to correct errors or unsatisfactorily corrects errors, makes no opposition or an unreasonable opposition, the VNIPO shall issue a decision on its rejection of the request for registration of an industrial property licensing contract.
Subject to the nature and severity of IPR infringement, when IPR infringements occur, the IPR holder may resort to administrative or civil route to fight against IPR infringement. In case the counterfeits or infringing products are imported into Vietnam, the IPR holder should consider taking border control measure to monitor inbound shipments and seize counterfeits at border gates of Vietnam if detected. In Vietnam, patent rights can be enforced through administrative procedure (i.e. before such administrative enforcement authorities as Market Management Agencies, Police, Inspectorates of Ministry of Science & Technology, Customs) and civil proceedings (i.e. before a relevant court). Criminal route is not statutorily applicable to patent infringement.
Civil action is currently not widely used in Vietnam because right holders often feel the courts are inexperienced. However, civil action is gaining in popularity because it provides unique remedies that are not available under administrative action, such as compensation for damages, a public apology and rectification and recovery of attorney’s fees.
Indirect infringement corresponds to what’s known as contributory infringement in the US. Unlike direct infringement, where the infringing product or process duplicates the claimed invention without a license, indirect infringement of a patent right occurs by a party making, using, selling, offering to sell, or importing an article to be used exclusively for the manufacture of a patented product or for working a patented process.
Because it’s very difficult to prove the exclusive use of the technology, the concepts of indirect patent infringement or contributory infringement doesn’t exist in Vietnam.
Doctrine Of Equivalents (“DOE”)
Vietnam applies the doctrines of equivalent and literal infringement. Therefore, patent infringement can take any of the following forms: ·
A product or part (component) of a product that is identical or equivalent to a product or part (component) of a product within the scope of protection of an invention patent;·
A process that is identical or equivalent to a process that is protected as an invention;·
A product or part (component) of a product that is manufactured by a process that is identical or equivalent to a process protected as an invention.
In practice, most patent infringement cases in Vietnam involve literal infringement. Therefore, the courts in Vietnam have not had much practice applying the law on equivalent infringement.
VII. Conclusion
As a result of Vietnam’s recent accession to a number of IP agreements, including the CPTPP, EVFTA, and RCEP, numerous critical patent provisions are added and amended to the 2022 IP Law in order to make the patent process in Vietnam more efficient and effective. Indeed, the recent amendments to Vietnamese Patent Law have generally strengthened patent protection in Vietnam.
Within this framework, applicants seeking patent protection in Vietnam can obtain secure patent rights by understanding the Vietnamese patent process and using the process effectively. As discussed in this article, we suggest that applicants file early in Vietnam with patent applications which have been prepared with an eye toward future goals such as favorable licensing terms and successful litigation. Initial effort and strategic planning will provide an applicant with patent rights having a strong basis for later licensing and/or enforcement in Vietnam.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
