18 October, 2015
Today’s post continues our series on core IPR protection in Vietnam with an introduction to patents, their application, the practical benefits of registration, and some tips and tricks to speed up the application in Vietnam.
Patents are essential to any innovator or applicator of technologies, particularly within the manufacturing and electronics sectors. Due to their more technical nature, application procedures are usually much longer than for other IPRs, but a successful registration grants the rights holder the exclusive control over the production, sale, and import/export of the product, thus representing a huge potential competitive advantage.
What are patents?
A patent is an exclusive right granted for an invention, which is a product or process that provides a new way of doing something, or offers a new technical solution to a problem. To qualify for patent protection, products or processes must show ‘inventiveness’ (a new technical solution or improvement to a product or process), ‘novelty’ (it has not been previously published or disclosed to the public), and an ‘industrial applicability’.
There are two types of patent currently available under Vietnamese law; invention patents and utility solution patents (Equivalent to ‘utility model patents’ in some other jurisdictions). Invention patents are granted for inventions that fulfil the above requirements of inventiveness, novelty, and industrial applicability. Utility solutions differ only in that they do not require an inventive step, however they must still amount to something more than common general knowledge.
To meet the standard of novelty, inventions must not have been disclosed publically either inside Vietnam or elsewhere prior to the filing date (or ‘priority date’ if an application has already been made within 12 months in another Paris Convention member state). There are however some exceptional circumstances however, where a patent may still be granted even where the invention has been previously disclosed:
- If the person who previously disclosed the invention did not have the right to register the patent
- If the invention was disclosed by the applicant in the form of a scientific report
- If the applicant displayed the invention at a national exhibition in Vietnam or another officially recognised international exhibition
An invention is deemed as being ‘inventive’ if the invention constitutes an inventive process, and cannot easily be created by a person with average knowledge in the relevant field. Assessments are made taking into account technical solutions that have already been publically disclosed prior to the filing (or priority) date.
‘Industrial applicability’ is defined as being capable of mass manufacture/production of the product or repeat application of the inventive process, in a way which achieves stable results.
It should also be noted, that since the promulgation of Vietnam’s new IP laws in 2006, new plant varieties are also now registerable under patent law, where plant species have special, distinctive properties.
Patents in Vietnam
As with many Asian and EU jurisdictions, Vietnam operates a ‘first-to-file’ system, meaning that the first person to file a patent application in Vietnam will become the owner of that right once the application is granted, regardless of whether another party was the inventor or the first to use the patented creation. It is therefore essential to file for patent registration in Vietnam as early as possible, certainly before commencing business dealings using the product or process there. Potential applicants should also be careful how much information is disclosed to third parties and potential partners prior to registration (see our guide on Trade Secrets in Vietnam).
It is important to note that, in Vietnam, where two or more parties apply for the same invention or utility solution, the applicants will be asked to proceed together with a single application. If the parties are unable to reach an agreement, all applications will be refused.
Finally, as a member of the Patent Cooperation Treaty (PCT) since 1993, Vietnam offers a streamlined process for patents which have already been granted in other member states, significantly reducing application requirements and approval times for both invention, and utility solution patents.
Protection of patents in Vietnam
A successful patent registration grants the applicant the exclusive rights to exploit the invention or utility solution for economic gain, or to assign or license these rights to another as they see fit.
Invention patents last 20 years from the date of filing (or priority date) with no possibility for extension or renewal. Utility solution patents last 10 years from the filing date (or priority date), again with no option for extension or renewal. New plant variety registrations last for 20 years as standard, or 25 years for timber trees and vines, again with no renewal or extension available.
Obtaining patents in Vietnam
As a member of the PCT, registrations for patents in Vietnam can be made directly in Vietnam, or internationally via the PCT procedure. As previously mentioned, where a patent has already been granted in another PCT member state, requirements and approval times may be reduced when applying through the PCT system, and the application process can be further accelerated by paying an
Domestic applications must be filed with the National Office of Intellectual Property of Vietnam (NOIP). All documents must be in Vietnamese, apart from power of attorney and evidence documents for right to register and priority rights. Any further supporting documents not mentioned below can be submitted in another language, but must be accompanied by a translation if requested by the NOIP. The application dossier must contain the following:
- A request made on the standard form provided by the NOIP
- Documents, samples, and information identifying the invention/utility solution
- Relevant fees and charges
- Power of attorney, where the application is handled by a representative
- Documents demonstrating that you own the right to registration, where the invention has been acquired from another party
- Documents demonstrating the priority right, where claimed
The basic filing fee for patent registration in Vietnam is approximately EUR 5, not including legal fees. However, over the course of the application more fees will likely arise depending on the type of registration. The official average fee charged from application filing to grand is currently approximately EUR 130, up to date fees can be found on the NOIP website.
Applications for invention patents typically take up to 20 months, and utility solution patent applications usually around 18 months before a grant is made.
It is also worth noting that Vietnam is a member of the ASEAN Patent Examination Co-operation (ASPEC), a regional patent work sharing programme involving 9 of the 10 IP offices in the ASEAN member countries (only Myanmar is not yet involved). This cooperation agreement aims to reduce complexity, save time on applications and improve the quality of search and examination. Through this mechanism references made to an earlier examination, already performed in one IP office will help an examiner in the other IP office to better understand the invention claim, reduce search volumes and develop a more comprehensive examination strategy. In theory this would result in expedited applications for patents in Vietnam, where a patent is already held in another ASEAN country.
Should your patent be infringed in Vietnam, there are two main avenues of enforcement which can be pursued; administrative actions, or civil litigation. This being said however, private mediation via legal professionals is often effective and should be considered as a viable first action in the event of an infringement.
Administrative actions are both cost-effective and time-efficient, and this is usually the most common route for companies to take when infringement has been discovered. It is a good way to deal with small-scale infringers and to gather evidence for larger scale infringements. Due to the nature of the remedies available and speed of case handling, administrative actions are an especially effective method of putting an immediate stop to on-going IPR infringement.
In the case of patent infringement however, administrative measures are limited in their effectiveness due to the relative inexperience of administrative bodies in dealing with the complex issues usually associated with patent infringement cases. As such it is often better to make use of the civil courts, which are more experienced in handling patent cases.
Civil litigation is usually only used in the event of larger scale infringements and very few cases are brought before Vietnamese civil courts. This is partially due to the lack of proper IP training and human resources within the judicial system, resulting in somewhat unpredictable case outcomes. Vietnamese authorities are working to improve the civil system however, working in cooperation with international organisations and government agencies.
The civil courts are still relatively inexperienced at dealing with patent cases by international standards and have only dealt with a limited number of cases to date. However they remain the best option for patent owners at present as administrative bodies have less
In civil actions, right holders can request provisional measures such as preliminary injunctions, as well as claim actual damages or loss of earnings. Where actual loss cannot be determined however, the maximum award is currently set at approximately EUR 18,000.
Alex Bayntun – Lees, South-East Asia IPR SME-Helpdesk