Amended Patent Procedures in Vietnam

Vietnam amended its Intellectual Property Laws in the form of Circular No. 16/2016/TT-BKHCN which came into force on 15th January, 2018

The amendments done in patent procedures were mostly related to application rules, patent applications, and examination procedures. Below are the main changes in patent procedures:

1. 6-month grace period for late PCT national phase entry has been removed

Basis new changes incorporated in PCT national phase entry applications, above circular has cancelled allowing late PCT national phase entry within 6 months of the 31-month deadline. However, it does not include transition provisions.

With following change, applicants are requested to provide filing instructions before 31-month deadline for Vietnamese translation, which are required at the time of national phase entry.

2. Time limit for responding to official communications has been revised

  • Time limit for formality examination response is now revised from 1 month to 2 months
  • Similarly, time limit for a substantive examination response has been revised from 2 months to 3 months.
  • Time limit for paying the relevant fees following a notice of intention to grant is revised from 1 month to 3 months.

3. Discretionary extension of time

The amendment suggests that applicants are allowed to request for a discretionary extension of time on grounds other than plausible reasons such as “force majeure event” or “objective obstacle” preventing required actions from being taken. A specific request and supporting evidences will now be required.

Such a discretionary extension of time can be filed by applicants for requesting substantive examination within 6 months after the deadline of 42-months.

4. Amended Requirements on contents of a patent application

The patent application should have a section for “Objective of the invention” which should specify the goal or problem to be solved by the invention.

In addition, it is no longer required to have a separate section on

  • Example implementation(s)
  • Benefits/effects

If there are any technical benefits/effects, they can be described in the summary section

5. New changes in patent application

The above Circular states, amendments must not add any new matter (including-description, drawings and claims) it should only include the matter which was originally disclosed in the specification

Also, as per the circular re-examination will be required if any substantive amendments are made in specification post grant of notice of intention

6. Security control regulations

The Regulations on security control of inventions in Vietnam were first introduced in 2011.

These regulations specified that all those inventions which are invented in Vietnam by firms /individuals will not be protected if patent applications are submitted in a foreign country before being submitted in Vietnam or such application has been filed in other countries within six months of first filing in Vietnam.

The new circular further lays down that it is highly recommended to follow the below rule if inventors in Vietnam wish to protect their patents in-house.

Conclusion

The changes made in Vietnam Patent Procedures are in compliance with international Intellectual Property standards.

In a brief summary, the above Circular will certainly have a positive impact in the IP laws practices. However, it has put pressure on IP agents and owners by setting out stricter requirements by reducing the time frames for filing response to office actions, amended provisions, responses / payment and enforcing strict deadlines for new applications.

 

Author: Ms. Deepika Sharma, Sr. Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at  deepika@iiprd.com.

Reference:

[1] https://www.spruson.com/changes-patent-procedures-vietnam/

[2]https://www.rouse.com/magazine/news/circular-16-makes-extensive-changes-to-the-ip-system-in-vietnam-patents/

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