(Q&A) Trademark, Patent, Utility Model and Design in Vietnam

(Q&A) Trademark, Patent, Utility Model and Design in Vietnam
March 19 10:18 2015 Print This Article

Q: We’re an IP firm in HongKong. We have clients interested in registering patent, utility model, design and trademarks in Vietnam. Could you please send us your fee schedule with the best price you could offer, and forms required for filing?

A: As the leading Vietnamese IP law firm, we are capable of assisting you with handling all IP matters in Vietnam in an efficient and cost-competitive manner. We hope to build up a long-term business relationship with your esteemed firm in the next time.

Regarding your enquiries concerning the subject matter, we would like to advise you on procedure and our fee schedule in relation to trademark, patent, utility model and design in Vietnam as follows:

 I. TRADEMARK

1. FEE SCHEDULE

In Vietnam, multi-class application is applicable. The basic fees are calculated based on the number of class of goods/services (G/S) in each application as well as the number of products designated in each class in the application. Below is the breakdown of charges for registering one trademark in three classes in Vietnam, in a smooth case, for your consideration:

1.1. TRADEMARK SEARCH

Description

Official Fees

(USD)

Attorney’s fee

(USD)

Trademark Search

 

Fee for conducting a trademark search in one classt

60.00

Note: The above-quoted fees do not include 5% VAT, bank charge (USD25) and actual communication cost.

1.2. TRADEMARK REGISTRATION

Trademark Registration

 

 

1. Fee for filing an application for one class of G/S with up to 6 services

– Fee for each additional class from 2nd one

– Fee for an additional item of services from the 6th

40.00

 

33.00

7.00

120.00

 

70.00

5.00

2. Fee for claiming priority (if any)

37.00

30.00

3. Fee for granting a registration certificate for one trademark in one class of G/S;

– for two additional classes of G/S in the application

(USD 16.00 per class)

20.00

 

6.00

40.00

 

10.00

Note: The above-quoted fees do not include 5% VAT, bank chargeand actual communication cost. In case of any office action or any possible opposition which may occur during the application prosecution, an additional charge would be incurred, upon the client’s approval.

1.3. PROCEDURE AND TIMELINE

The duration for a trademark application from mature to proceed to registration is round 14-18 months from the filing date, involving these stages (1) examination as to formality and publication on the Gazette (3 months); (2) examination as to substance (9 months) and (3) issuance of registration certificate for the registered mark (2 months). Kindly note that the term for registration process normally takes longer to several months in practice due to the workload of the NOIP and the slow examination process by the NOIP’s examiner.

1.4. REQUIRED DOCUMENTS AND INFORMATION

–         An original Power of Attorney which is simply signed by the Applicant (our form in attachment) (Please be informed that a scanned/faxed copy of the Power of Attorney is acceptable upon filing provided that the original copy is submitted within 01 month from the filing date);

–         Name and address of Applicant;

–         List of goods/services (the provided list is acceptable as per Vietnam Law and practice)

II. PATENT AND UTILITY MODEL

1.    Procedure

a. Protection criteria:

A patent shall be eligible for protection in the form of the grant of a Patent for Invention/Utility Solution when it satisfies the following conditions:

Being novel

Being of an inventive step

Being susceptible of industrial application

Patent for invention

P

P

P

Patent for utility solution

P

P

b. Validity of Patent for Patent/Utility Solution:

Patent for Invention shall have a validity starting from the granting date and expiring at the end of 20 years counting from the filing date.

Patent for Utility Solution shall have a validity starting from the granting date and expiring at the end of 10 years counting from the filing date.

c. Procedure and timeline:

A patent application will be examined through the following process:

Time Frame

Content of examination

Formality examination 1-3 months from the filing date (if all required document are submitted) or from the date of supplementation of all documents Examination of formality of the patent application
Publication 19 months from the date of acceptance of application (if no request for early publication) Publishing application in IP Gazette
Substantive examination 18 months from date or the date of filing of the request for substantive examination (if it is filed after the publication date) or from the publication date (if the request for substantive examination is filed before the publication date) Examination of criteria of protection of the patent application
Granting 01-03 months from the date of Notification to Grant Patent for Invention/Utility solution – The Applicant pay the registration and publication fees- Publishing the Patent in IP Gazette

Kindly note that the term for registration process normally takes longer to several months in practice due to the workload of the NOIP and the slow examination process by the NOIP’s examiner

d. Required documents and information:

For us to filing a patent application, the following documents/information should be provided:

1.   The Power of Attorney which is only simply to be signed by the Applicant, neither notarization nor legalization is required (The copy of the POA can be accepted at the time of filing but the original one must be lodged within 01 month from the filing date). Please find enclosed the form of POA for your simple prosecution;

2.   Name and address:
–         Applicant;
–         Author(s) of the invention/utility solution.

3.   A soft copy in word format of the English specification of the application for translation into Vietnamese is requested to provide via email at the time of instruction.

2.       
Fee schedule

The basic fees are calculated based on the number of independent claim, pages of Vietnamese specification, priority claims and words of specification of the patent. Details are as follows:

         i.  Filing fees:

Work

Official fee (USD)

Agency fee (USD)

1. Filing an application for invention/utility solution (with one independent claim and not exceed 5 pages of specification)

11.00

110.00

– Addition charge for each independent claim from the second one

11.00

40.00

– Additional charge for each page from the sixth one

0.70

1.00

2. Claiming priority right (if any)

36.40

50.00

3. Publication of invention/utility solution application

7.30

40.00

4. Request for substantive examination for each independent claim

32.80

50.00

5. Translating fee from English/Chinese into Vietnamese: 100 words

7.00

ii.     Estimated fee for granting:

Work

Official fee (USD)

Agency fee (USD)

1. Granting patent for invention/utility solution (including Register and Publication)

22.00

50.00

–       Additional charge for each independent claim from the second one

22.00

0.00

2. Annuities fee for the 1st year for the 1st independent claim

20.00

50.00

–       Additional charge for each independent claim from the second one

20.00

10.00

Note: The above cost does not include 5% VAT (which is calculated based on our attorney’s fees), bank charge and communication costs (which will be billed on the basic of actual expenses). No other fees are payable in case the application goes smoothly, without any objection from a third party or the NOIP’s examiner. Fees for responding to any official action include fee for filing a response to official action (at least US$50.00 each time, including official fee and our service charge) and fee for advising, preparing and reviewing which will be charged on an hourly basis at the rate of US$300/hour. We will obtain client’s approval of any further expenses incurred during the prosecution of the application prior to proceeding.

III. DESIGN

1. Time Frame of industrial design registration in Vietnam

Industrial Design Application in Vietnam shall be passed through three stages:

Time Frame

Content of Examination

Formality examination 1 month from the filing date (if all required document is submitted) or from the date of supplementation of all documents.              Examination of formality of industrial design application
Publication of industrial design application

 

2 months counted from the date of acceptance of industrial design application              Publishing industrial design application in IP Gazette
Substantive examination 9-10 months from the publication date of required date Examination of criteria of protection of industrial design application.

2. Required document for filing industrial design application in Vietnam

–     Power of Attorney (provided by S&B LAW).

–     Name and address of

+          Applicant

+          Designer

–     Title of industrial design

–     Six (05) sets of photographs/drawings in the same ratio comprising front, back, top, bottom, left, right and perspective views. Dimension of representation should not be larger than 210 mm x 297 mm (A4 size) and not be smaller than 90 mm x 120 mm.

3. Estimated Cost For Industrial Design Application In Vietnam (Full schedule of fee, kindly see attached file)

Works

Official fees (US$)

Agency fee (US$)

 1. Filing application for registration of an ID (for each variation, inclusive of filing fee, substantive examination and information search)

36

120

 – Additional charge for each additional variation from 2nd one

36

90

 – Additional charge for each figure from 2nd one

3.4

10

 2. Claiming priority right (for each earlier priority)

36

40.00

 3. Granting patents for industrial design (including Register and Publication) (*)

21.5

50

 – Additional charge for each figure from 2nd one

7.3

0

4. Preparing description of industrial design (*)

0

50.00

Minimum Total Fee – sum of those marked with (*)

 

277.5 USD

Note: The above fees are exclusive of: The translation fee: US$ 6/ 100 English words, Appeal fee (if any), actual Communication expenses; Value Added Tax (VAT) : 5% of our agency fees

The above is our advice of documents and fees for filing patent and trademark registration, industrial design in Vietnam. Should you have any inquiry, please do not hesitate to contact us.

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