Dr. Giang Bui Duc[1] Hanoi School of Business and Management (HSB) Vietnam National University, Hanoi
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| Dr. Le Thi Phuong, one of the 10 young scientists who won the Golden Globe Science and Technology Awards in 2022__Photo: Thu Huong/VNA |
Businesses may seek to protect their inventions, such as a new product or a new way of making the product (a new process) that has an industrial application. This kind of intellectual asset is protected by Vietnam’s intellectual property law. This Practical Note addresses the various aspects regarding a patent’s lifespan from Vietnamese law perspective.
Invention protection
Under Article 4.12 of Law 50/2005/QH11 on Intellectual Property, revised in 2009, 2019 and 2022 (the IP Law), invention means a technical solution in the form of a product or a process which is intended to solve a specific problem by application of laws of nature.
Inventions can be protected by the mode of grant of an invention patent or a utility solution patent. The conditions for granting the former are stricter than those for granting the latter.
Pursuant to Article 58.1 of the IP Law: “An invention shall be protected by the mode of grant of an invention patent when it satisfies the following conditions:
a/ Being novel;
b/ Involving an inventive step; and,
c/ Being susceptible of industrial application”.
The above conditions are criteria for patentability. The rationale for each criterion is different, but together they serve to ensure that only previously unavailable, highly innovative, and useful inventions are eligible for patent protection[2]. If an invention fails to involve an inventive step, it may be protected as a utility solution.
Article 58.2 of the IP Law states: Unless it is a common knowledge, an invention shall be protected by the mode of grant of a utility solution patent when it satisfies the following conditions:
a/ Being novel; and,
b/ Being susceptible of industrial application”.
In principle, improvements to existing technology are patentable.
When an invention satisfies all the above criteria for patentability, patenting it or keeping it as a trade secret is a choice of the business and that choice is often fact-specific. Certain elements should be taken into consideration.
+ Advantages of patenting an invention:
- Patent protection is absolute. It provides the exclusive right to exclude third parties from making commercial use of it;
- It is easier to enforce a patent than a trade secret.
+ Disadvantages of patenting an invention:
- Patent protection is limited by time, i.e., 20 years following the filing date;
- Long registration time, complicated formalities and high registration costs;
- Registration entails public disclosure of the invention.
Article 59 of the IP Law provides that the following will not satisfy the requirements of inventions and hence are ineligible for being patented:
· Scientific discoveries or theories;
· Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games or doing business;
· Computer programs[3];
· Presentation of information;
· Solutions of aesthetical characteristics only;
· Plant varieties, animal breeds;
· Plant or animal production processes that are principally of biological nature other than microbiological ones; or,
· Human and animal disease prevention, diagnosis and treatment methods.
Application process
Patent rights exist only in the form of “letters patent,” a public document issued by the Intellectual Property Office of Vietnam (the IP Office) (Article 6.3.a of the IP Law).
As patents may be sought by persons in industry to protect against their inventions being used in an unauthorized way, the application process is very important and the IP Office will record this date of the application. The IP Office will only officially record this application filing date where the key relevant documents have been submitted and the fee has been fully paid and the applicant has specifically identified their request for a patent (Article 108.1 of the IP Law). Therefore, special care must be taken when submitting documents for that purpose.
The documents must be filed on the prescribed form and submitted in the prescribed manner (Articles 100 and 89 of the IP Law).
Pursuant to Article 102 of the IP Law:
· The application shall include inter alia documents identifying an invention to be patented, i.e., a description of the invention and an abstract of the invention. The invention description consists of the description section and the scope of protection of the invention (the claims of the patent).
· The description of invention must satisfy the following conditions:
- Fully and clearly disclosing the nature of the invention to the extent that such invention may be produced by a person with average knowledge in the relevant art;
- Briefly explaining the accompanied drawings, if it is required to further clarify the nature of the invention; and,
- Clarifying the novelty, inventive step and susceptibility of industrial application of the invention.
· The scope of protection of an invention shall be expressed in the form of a combination of technical specifications which are necessary and sufficient to identify the scope of the rights to such invention, and compatible with the description of the invention and drawings.
· The abstract of an invention must disclose principal features of the nature of such invention.
The applicant must indicate in the application the full classification symbols of the technical solution sought to be protected according to the latest International Patent Classification (IPC) under the Strasbourg Agreement[4] published by the IP Office in the Official Gazette of Industrial Property.[5] If he fails to classify or correctly classify, the IP Office shall carry out the classification and the applicant shall pay classification fee.
Having filed the appropriate forms, paid the fee, and submitted the necessary information, the submission is examined to ensure compliance with the IP Law (formal examination) within a month from the filing date (Articles 109 and 119 of the IP Law). A notice of the application is published in the Official Gazette of Industrial Property 19 months following the filing date or the priority date, as applicable, or an earlier date requested by the applicant (Article 110 of the IP Law). If the application passes this preliminary examination, the next stage is the substantive examination.
For that purpose, the applicant is required to send a request for assessment of the substance of the application within 42 months in case of an invention patent or 36 months in case of a utility solution patent from the filing date or the priority date, as applicable (Article 113.1 of IP Law).
Where no request for substantive examination is filed within the above time limit, the invention registration application shall be considered having been withdrawn upon the time limit expiration.
This substantive examination procedure shall be completed within 18 months following the date of notification of the application, if the applicant’s request for substantive examination has been sent before the date of notification or following the date of receipt of the request if this request has been sent after the date of notification (Article 119.2.a of the IP Law).
Here, any anomalies in the application are identified and these are passed on to the applicant who is provided with the opportunity to respond (object to/change certain elements of the application if necessary) (Articles 115, 117.3.a and 118.1 of the IP Law). Given that the changes made are to the satisfaction of the examiner or the objection is well grounded, the application will be granted for the patent; if the changes are unsatisfactory or the objection is groundless, the application may be rejected (Article 117.3.d of the IP Law). Following the successful application process and the grant of the patent, this fact is published in the National Industrial Property Register (Article 118.1.b of the IP Law).
It is noteworthy that there is no international patent (i.e., a patent valid in all or several countries) but it is possible to obtain patents in different countries for a single invention.
Vietnamese patents are effective only within the territory of Vietnam.
It is advisable to conduct a complete search of a patent before filing an application to help assess the patentability of a proposed invention because a patent may have been granted or a prior application filed for the same invention.
The IP Office offers a free search system, available 24/7 through http://wipopublish.ipvietnam.gov.vn/wopublish-search/public/patents?0&query=*:*.
It is noteworthy that the process of registration of a patent is complicated and may be time-consuming so it is advisable to employ a patent agent to make the application on behalf of the invention owner.
With respect to patent duration, Articles 93.2 and 93.3 of the IP Law provides:
· An invention patent has a validity period starting from the grant date and will expire at the end of 20 years following the filing date.
· A utility solution patent has a validity period starting from the grant date and will expire at the end of 10 years following the filing date.
A patent provides the owner with a monopoly right to control it. He can use the patented invention or permit (authorize) other persons to use it, exclude others from using it and dispose of it (Article 123.1 of the IP Law).
Under Article 124.1 of the IP Law, the use of an invention means the performance of any of the following acts:
· Manufacturing the protected product;
· Applying the protected process;
· Exploiting utilities of the protected product or the product made by the protected process;
· Circulating, advertising, offering and stocking for circulation the protected product or the product made by the protected process;
· Importing those products.
Licensing is the most commonly used method of extracting value from a patent.
Infringements and sanctions
Under Article 126 of the IP Law, the use of a protected invention within the validity term of the patent without permission of the owner is regarded as an infringement of the rights of the owner.
Furthermore, Article 131 of the IP Law stipulates:
· Where an applicant for registration of an invention knows that such invention is being used by another person without prior use right for commercial purposes, he may notify in writing the user of the filing of his application, clearly specifying the filing date and the date of application publication in the Official Gazette of Industrial Property so that the later shall terminate or continue such use.
· Where the person receiving such notice continues using the invention, as soon as a patent is granted, the owner of the invention may request him to pay a compensation equal to the charge for licensing the invention within the relevant scope and duration of use.
Failure to pay the above compensation constitutes a patent infringement (Article 126.2 of the IP Law).
It should be noted that there are statutory defenses provided in Article 125.2 of the IP Law, under which acts that would otherwise count as infringements do not do so, including acts done exclusively for non-commercial purposes, acts done by others for experimental purposes relating to the invention, prior use or compulsory licensing.
A patent owner may file a lawsuit against an infringer, and the court may issue an injunction prohibiting the accused party from infringing the claims and forcing it to publicly apologize for the infringement. The court may also rule on damages, including a reasonable royalty or the patent owner’s lost profits (Articles 202 and seq. of the IP Law). Attorneys’ fees for the court action can also be recovered (Article 205.3 of the IP Law).
The plaintiff is required to prove his actual damage and specify the basis for determining damages (Article 203.6 of the IP Law). Where it is impossible to determine the damages for material losses, such damages will be ruled by the court, depending on the extent of the losses, but must not exceed VND 500 million (Article 205.1.d of the IP Law).
The court may rule on the destruction of infringing goods and means for producing infringing goods (Article 202.5 of the IP Law). In practice, the destruction of infringing pharmaceuticals is not rare.
Accused infringers may assert that their conduct does not fall within the scope stated in the claims of the patent. Also, they often try to assert that the patent is invalid and that it was a mistake of the IP Office to issue the patent.
In settling patent cases, Vietnamese courts often rely on expert opinions from the IP Office or the Vietnam Intellectual Property Research Institute (VIPRI).
The owner may also rely on administrative actions to handle a patent infringement. Those actions are provided in:
· Article 211 and relevant provisions of the IP Law;
· Decree 99/2013/ND-CP dated August 29, 2013, on administrative sanctioning of industrial property violations (Decree 99), as revised in 2021; and,
· Circular 11/2015/TT-BKHCN dated June 26, 2015, guiding the implementation of Decree 99.
Under Article 15 of Decree 99, an administrative action may be instituted with:
· Inspectorates, including the Inspectorate of the Ministry of Science and Technology and inspectorates of provincial-level Departments of Science and Technology;
· Customs offices; and,
· Chairpersons of People’s Committees.
Under Articles 2 and 10 of Decree 99, administrative sanctions for a patent infringement include remedial action, fines of up to VND 500 million, suspension of business activities, forcible remittance of illicit earnings, destruction of infringing goods or forcible transportation of the Vietnamese territory of infringing goods in transit.
In line with Article 216 and relevant provisions of the IP Law, customs offices may take the following steps upon the owner’s request:
· Suspending customs procedures for goods suspected of infringing a patent; and,
· Carrying out inspection and supervision to detect goods showing signs of rights infringement.
It should be noted that the current criminal law does not provide criminal liability in case of patent rights infringement.-
[1] The author can be contacted at: buiducgiang@hsb.edu.vn.
[2] Abbe Brown, Smita Kheria, Jane Cornwell, and Marta Iljadica, “Contemporary Intellectual Property: Law and Policy”, 5th edn, 2019, Oxford University Press, 403.
[3] Software (referred to as “computer program” in the IP Law) is eligible for copyright protection.
[4] The full text of the IPC is available at https://www.wipo.int/classifications/ipc/en/.
[5] The current version is published in issue No. 417 of the Official Gazettte of Industrial Property dated December 26, 2022, and also available at:
https://ipvietnam.gov.vn/vi_VN/web/guest/thong-bao/-/asset_publisher/vTLYJq8Ak7Gm/content/thong-bao-ve-viec-thong-nhat-ap-dung-bang-phan-loai-quoc-te-ve-sang-che-theo-thoa-uoc-strasbourg-phien-ban-2023-01.
