Invention and Utility Solution

Requirements for patentability of an invention

The Vietnamese IP Law sets out three main requirements for an invention to be eligible for the invention patent, namely:

• It is novel;
• It must involve an inventive step;
• It is susceptible for industrial application.

In the meantime, a lower standard of inventiveness is applied to a utility solution patent. An invention qualified for utility solution patent needs to be not common knowledge and:

• It is novel;
• And it is susceptible for industrial application.

Ineligible patent subject matters

Subject matters which fall outside the scope of patentability are provided in the Article 59 of the Vietnamese IP Law, those are:

• Discoveries, scientific theories or mathematical formulae or algorithms;
• Diagrams, plans, rules and methods to perform intellectual activities, animal training, gaming or in the field of economic activities (also called business methods); computer programs.
• Presentations of information.
• Aesthetic creations.
• Plant or animal species.
• Biological processes for obtaining plants and animals, but not a microbiological process.
• Methods of prevention, diagnosis and medical treatment of humans and animals.

Patent term

The patent term is a limited period of time that when it expires, the invention goes the public domain, meaning that anyone can use the invention without the permission of patent holder. The term of a patent is 20 years the filing date of application. The term of a utility solution patent is 10 years the filing date of application.

Generally speaking, patent cannot be extended beyond the statutory patent term. However, a rare exception has just established thanks to the adoption of the Europe-Vietnam Free Trade Agreement (EVFTA). Under the Article 12.40 of the Treaty, Vietnam, for the first time, has a mechanism to compensate for the reduction in the effective patent life resulting unreasonably delays in the granting of the first marketing authorization (MA). Consequently, a pharmaceutical drug patent is likely going to succeed to extend the life of such patent.

It is noteworthy, however, that above-mentioned compensation mechanism is not going to be applied directly but must be incorporated in the domestic laws before being implemented. The latest related-legal document, the Resolution No.102/2020/QH14, is silent on the extension mechanism and picked the monetary compensation instead. Therefore, we need to wait until the introduction of the new IP law to see how the patent term extension mechanism is regulated.

Types of application for a patent in Vietnam

There are three ways to obtain patent for an invention within Vietnam jurisdiction, namely:

• National application: patent applicant can lodge an application (for Invention and for Utility solution separately) either by themselves directly to the Vietnam National Intellectual Property Office (the NOIP) or through a local industrial property representative. Organizations, individuals of Viet Nam, foreign individuals permanently residing in Viet Nam and foreign organizations and individuals having a production or trading establishment in Viet Nam are entitled to these two options. On the other hand, foreign individuals not permanently residing in Viet Nam, foreign organizations and individuals not having a production or trading establishment in Viet Nam are required to have Vietnamese lawful representative.
• Paris Convention application: The Paris Convention for the Protection of Industrial Property 1883 (Paris Convention) requires Member States to accord national treatment in respect of those forms of intellectual property rights, including patent. It provides a means of access national patent systems for foreign patentees. Vietnam has been a member of this Convention since 1949. Thus, if a foreign applicant makes the first application for a patent in a country that is a party to the Paris Convention (‘the basic application’) other than Vietnam, the applicant has twelve months that day in which to make the Convention application (‘the priority period’) to Vietnam and enjoy the national treatment. Likewise, if a patent application is originally lodged in Vietnam, it is prosecuted as if it were a national application when it is filed in other Contracting nations.
• PCT application: The Patent Cooperation Treaty 1970 (PCT) established an International Patent Cooperation ‘for cooperation in the filing, searching, and examination, of applications for the protection of inventions, and for rendering special technical services’. The PCT provides a measure for applicant to seek patent protection in any number of selected PCT contracting states by filing one international application. Accordingly, the application may be filed in Vietnam with the Vietnam NOIP, which will act as the PCT ‘receiving office’. This single application acts as a national patent application in each designated state, and is regarded as equivalent to a regular national within the meaning of the Paris Convention. Similarly, an international application through PCT can enter its “national phase” in Vietnam and being treated as if it were a national application. The international filing date becomes the priority date unless an earlier priority date can be claimed on the basis of a prior patent application – national or PCT – for the same invention. The registration for patent application must be carried out under PCT’s provisions at NOIP within 31 months the international filing date or the priority date.

Rationales of getting patents in Vietnam

A patent can bring quite a few of possible advantages to patent holder, those are:

• A patent confers the holder a monopoly to possess and exploit their invention all across Vietnam.
• A patent gives the owner the right to stop others infringing their exclusive rights, including copying, manufacturing, selling or importing their invention without their permission.
• Patent holder gets protection for a pre-determined period, allowing them to keep competitors at bay.
• Patent holder can then use their invention themselves to generate revenue the invention. Alternatively, they can license the patent for others to use it or they can sell it. This can provide an important source of revenue for your business. Indeed, some businesses exist solely to collect the royalties a patent they have licensed.
• A patent is a lawful proof for possession of an invention where a dispute arises concerning the ownership of such invention.