Viet Nam adopts the first-to-file system, i.e. where two or more applications are filed by many different parties for registration of the same invention, the patent may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions;
Where there are two or more applications satisfying all the conditions for the grant of patent and having the same earliest priority or filing date, the patent may only be granted to a single application out of these applications under an agreement by all applicants.
Without such an agreement, all these applications shall be refused for the grant of a patent.
Accordingly, it is advisable to file an application for a patent as soon as possible after the invention and not to make the invention public before filing the application.
Single Red Document Folder among Many Blue on White Background 3D Illustration, Find Documents Concept
In order to obtain the patent right in Viet Nam, you must file the application for granting a Patent (for Invention and for Utility solution separately), directly or by mail, to the National Office of Intellectual Property of Viet Nam (NOIP) or its branches offices in Ho Chi Minh City or Da Nang.
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 may file applications for a patent either directly or through a lawful representative in Viet Nam.
Foreign individuals not permanently residing in Viet Nam, foreign organizations and individuals not having a production or trading establishment in Viet Nam shall file applications for a patent through a lawful representative in Viet Nam.
Besides, foreign applicants can also obtain a patent right in Viet Nam by filing an international application which designates or selects Viet Nam through the PCT system.
Applicant must carry out procedures for registration of an invention under the PCT’s provisions at NOIP within 31 months from the international filing date or from the priority date, if the priority right is claimed in the application.
Patent examination procedure is regulated as follows:
Applicants should be aware of the examination process a patent going through the National Office of Intellectual Property of Viet Nam (NOIP). This process is begun with the filing of a patent application with NOIP and completed by granting a patent
Patent examination procedure consists of following steps:
Filling the patent application.
Formality examination
Request for correction and amendment
Refuse to accept the valid application
Publication of the Patent Application
Request for the Substantive Examination
The Substantive Examination
The Substantive Examination
Notification of the Substantive Examination Results
The Decision of Refusal
Request to pay fee
Entry into the National Register of Industrial Property and publication of the patent
To file a patent in Vietnam, required documents of patent application are as follows:
a) A request made in prescribed form);
b) Documents, samples, information identifying the invention/utility solution claimed for protection (e.g. a request, a description of the invention, an abstract, and other requirements for inventions in the field of biotechnologies, pharmaceuticals, generic resources and traditional knowledge);
c) Power of attorneys (POA);
d) Documents evidencing the right to registration, if acquired by the applicant from another person;
e) Documents evidencing the priority right, if claimed;
f) Receipt of fees and charges.
All documents of the patent application shall be in Vietnamese, except for the documents mentioned at point c, d, e and other documents supporting the applications, which can be made in another language but shall be translated into Vietnamese at the request of NOIP.
S&B Law – intellectual property law firm was certified by National Office of Intellectual Property (NOIP) under the Vietnam Ministry of Science and Technology having an extensive network throughout Vietnam and the world.
To be acutely aware that the construction, protection of intellectual property such as trademarks, patents, industrial designs, geographical indications, copyright,… for business is a key issue in the current integration period now, so, with a team of patent and trademark attorneys experienced in the field of intellectual property, training at the most prestigious universities on the world, S&B Law guaranteed to provide customers with innovative and highly practical solutions in the field of the protection of intellectual property rights in Vietnam and abroad.
S&B services include but are not limited to the following areas:
– Advising and drafting application of trademarks, patents, utility solutions, industrial designs, geographical indications, copyright and other objects of intellectual property rights in Vietnam and countries around the world.
– Advising and drafting documents for registration of technology transfer contracts, licensing, franchising contracts, trademark … and franchise contracts (franchise).
– Representative of dispute resolution regarding infringement of intellectual property rights in Vietnam and in foreign Countries.
S&B Law undertoke that we will be a partner and the first choice of entrepreneurs and investors.
If client would like to file a trademark in Vietnam, S&B Law would like to provide our guidance as follows:
REQUIRED INFORMATION
1. Name and address of applicant.
2. List of goods/services and/or classes of goods/services bearing the mark (according to the last edition of international classification under Nice Agreement).
3. If priority is claimed: statement of country, application number and filing date of original foreign application from which priority is claimed.
4. Transliteration and meaning of the mark if it is contains foreign characters other than English
REQUIRED ENCLOSURES
1. Power of Attorney (PoA), simply signed by the applicant. The applicant may not submit or submit only copy of the PoA at the time of filing the application, but the original one must be submitted within 1 month from the filing date.
2. 15 samples/prints of the mark, the size of which do not exceed 8 cm x 8 cm.
3. If the Convention priority is claimed: a certified copy of the priority document(s) and its English translation is required.
GENERAL INFORMATION:
1. The validity term of registration certificate is of 10 years from filing date. It is renewable, each of 10 years.
2. The validity of a registration may be suspended by a request of any third party if the trademark is not used in five consecutive years without proper reason.
If client would like to file an patent in Vietnam, SBLaw would like to provide our guidance as follows:
I.For National patent application:
REQUIRED INFORMATION
1. Name, address and nationality of the applicant.
2. Name, address and nationality of the inventor.
3. Title of the Invention/Utility solution.
4. Data of Convention priority, if any (Original country, Application number and filing date).
5. Name and address of the inventors
REQUIRED ENCLOSURES:
1. Patent specification in English version including description, claims, abstract and drawings, if any.
2. Power of Attorney (PoA) which is simply signed by the applicant. The lack of PoA may be accepted at the time of filing application. However, it’s better if the client can provide copy of PoA at that time. The original PoA must be submitted within 01 months from filing date.
3. Deed of Assignment, if the applicant and inventors are not the same;
4. Certified copy of the priority document, if priority right is claimed. This certified copy must be submitted within 03 months from filing date.
II.For Entering Vietnam National Phase of PCT application:
For a PCT application, the time limit for entering into the National Phase is 31 months counted from the priority date if Vietnamese is designated and selected.
1. PCT documents: Copy of the PCT application and amendments thereof according to Article 19 of PCT, PCT publication, International Preliminary Examination Report, and Amendment, if any;
2. The original POA can be submitted within 01 months from filing date;
Remark: As the Vietnamese translation of the patent specification must be submitted at the time of filing, the English version is required to early provide for translation. If early sending document is not convenient, the PCT application number should be early informed for downloading the specification from PCT database.
GENERAL INFORMATION:
1. Request for substantive examination must be filed within 42 months (as for invention) or 36 months (as for utility solution) from priority date.
2. Term for entering National phase in Vietnam of PCT application is 31 months from priority date.
3. The validity term of Patent is 20 years for invention and 10 years for utility solution, counted from the legitimate filing date and effective from the granting date.
5. Annuity is required to be paid from the 1st effective year.
If client would like to file an industrial design in Vietnam, SBLaw would like to provide our guidance as follows:
I.REQUIRED INFORMATION
1. Name, address and nationality of the applicant;
2. Name, address and nationality of the designer;
3. Stating the article for which registration is sought (title of design);
4. The class in which the design is to be registered according to the Locarno International Classification, if any;
5. Statement of country, serial number and filing date of the original foreign application (first filing), if priority is claimed.
II.REQUIRED ENCLOSURES
1. Six (06) sets of pictures (photographs or drawings) illustrating the design. The pictures must not exceed the international size A4. All pictures must be made in the same scale. There must be as many pictures as it takes to show all of the different sides of the design.
2. Brief description of design in English
3. Power of Attorney: copy of Power of Attorney is accepted for filing application but the original one must be submitted within 01 month from the filing date.
III.GENERAL INFORMATION:
1. The validity term of the registration is 5 years from the regular filing date and effective from the granting date, with possible extension of two additional 5-year periods (max.15 years).
2. Different variations of a design can be filed in a single application or separate applications. In the latter case, a statement of the design is a variation of the previously filed design is required. All variations of a design will be granted with only one Certificate.
3. Time necessary for obtaining registration is 10 months basically.
SBLAW provides full range of intellectual property services covering research and advice on IP laws, filing and prosecution of applications for patent, trademark, industrial design, copyright and domain name, copyright protection, watching and investigation of IP right Infringement, assistance in negotiation and obtaining IP Right Licensing, assignments and renewals, availability searches, initiating procedures for oppositions and cancellations; negotiation and drafting of contracts on licensing, technology transfer, franchising and distribution; and taking enforcement, anti-counterfeit action and commercial exploitation of IP rights.
Our IP practice covers not only in Vietnam but also other countries in Asia and other regions where our associated offices locate. In addition, we are co-operating with our associated IP Agents in Australia, China, Germany, Hong Kong, Indonesia, Japan, Korea, Malaysia, Singapore, Thailand, UAE and USA to protect IP rights for clients in Vietnam and abroad.
Our key achievements:
▶ Acting for Military Bank, VSTV, Ryukyu Cultural Technological Village Co., Ltd, KOVA etc for trademark registration in Vietnam, Laos and Cambodia;
▶ Acting for Ryukyu Cultural Technological Village Co., Ltd being a plaintiff in a case relating to copyright infringement over its hand-made glasses in Vietnam;
▶ Acting for VTC Online in negotiation with Sony Music Entertainment relating to use of music works in Vietnam;
▶ Acting for a foreign invested company being a defendant in a case relating to copyright infringement over software in Vietnam;
This process of handling trademark infringement in Vietnam includes the following steps:
1. Establishing the representative qualification and preparing all necessary documents
In order to establishing the representative qualification of S&B Law, the required document is Power of Attorney (POA) appointing S&B Law is a IP representative and the scope of POA must include “the right of enforcement and protect all IP rights in Vietnam”
The required documents for settling the infringement of trademark in Vietnam are:
– Notarized copies of Certificate of Trademark Registration (CTR) (03 sets); or
– Certified copies of NOIP of CTR (03 sets); or
– Notarized copies of License Agreement which has been registered at NOIP (if any);
– Three (03) samples of infringed products and three samples of alleged products if these products are not poison, inflammable, explosive; or
– Images or pictures of infringed products and alleged products (03 sets);
– Information of infringer (such as name, address…)
Trademark Attorney of S&B Law
2. Examination
Examination is not compulsory, but the conclusion of the examination is one of the most important documents for settling the infringement and it is an evidence resource that authority office shall base on for settling the case.
Therefore, examination should be taken before officially settling the case.
The required documents for this work include:
– Application;
– Notarized copy of POA;
– The documents proving the right of the applicant (certified or notarized copies of CTR);
– The documents proving the infringement action of infringer (samples or pictures/images of samples)
Time for examination is about from 7 to 11 working days.
3. Settling the infringement action
Based on the conclusion of examination, officials could choose the following options
Option 1: Sending a cease and desist letter (C&D Letter).
Accordingly, SBLaw will send a C&D letter to the infringer and request them to take the following actions:
– Immediately ceasing the act of manufacturing, circulating goods/services bearing the infringing element; and
-Taking back all goods/services bearing the infringing elements that have been already circulated on market within a period prescribed by SBLaw or customer’s instruction;
– Signing an undertaking commits that will not infringe against IP rights of the customer in future;
– Apologizing Letter (If any);
-Other documents (if any);
If the infringer does not comply with the above mentioned request, the customer could apply the Option 2 as below.
Note: This option is not compulsory.
Option 2: Filing a petition requesting authority state bodies to settle the infringement action (administrative measure)
Accordingly, SBLaw will prepare all necessary documents and request authority office to punish the infringement action of infringer.
Depending on the location, complication of the case, the authority office should be chosen in accordance with the regulation of Decree No. 99/2013/ND-CP.
Necessary documents:
– A notarized copy of POA;
-Petition;
– The documents proving the right of the applicant (certified or notarized copies of CTR);
– The documents proving the infringement action of infringer (samples of alleged products or picture/images of alleged products/services);
– Conclusion of examination of VIPRI;
– Other documents;
Within ten working days counted from the date of receiving the petition, the authority office must check the legitimate of the petition and attached documents. When documents or evidence supplied by the requester are insufficient, the violation-handling agency shall request the requester to supplement documents and evidence or give explanations within 30 days after being requested.
Within 30 days after receiving the complete dossier which satisfies the requirements, the competent person shall notify the requester of the time of handling, procedures and measures and request cooperation and support of the industrial property rights holder in the inspection, examination, verification and handling of the violation.
SBLaw Firm provides clients with legal services relating registration patent service in Vietnam as follows
– To research and assess ability of protection in Vietnam and other countries such as Asean’s nations, Europe United, The US, Japan, Korea, Hong Kong, China, Russia;
– To consult procedure and represent in submitting an application asking agencies to issue the patent of invention in Vietnam and in foreign countries;
– To maintain and extend the validity of patents in Vietnam and in foreign countries;
– To assess breach capability and co-ordinate with authorized bodies in protecting rights over patents being protected in Vietnam as well as in other countries;
– To assess and evaluate the validity of patent of inventions issued in Vietnam and in foreign countries;
– To designate lawyers joining in negotiating, drafting, assessing and registering contracts which relate to transferred and used rights or owned rights of technological inventions protected in Vietnam and foreign countries.
SBLaw Firm provides clients with legal services relating registration Industrial design service as follows:
-To research and assess ability of protection in Vietnam and other countries like Asean’s nations, Europe Union, The US, Japan, Korea, Hong Kong, China, Russia;
-To consult procedure and represent in submitting an application asking agencies to issue certificate of industrial designs in Vietnam and in foreign countries;
-To maintain and extend the validity of industrial design in Vietnam and in foreign countries;
-To assess infringed capability and co-ordinate with authorized bodies in protecting rights over industrial designs being protected in Vietnam as well as in other countries;
-To assess the capability industrial designs of certificate issued in Vietnam and in foreign countries;
-To designate lawyers joining in negotiating, drafting, assessing and registering contracts which relate to transferred and used rights or owned rights of industrial designs protected in Vietnam and foreign countries.
SBLaw Firm provides clients with legal services relating registration copyright and related rights service in Vietnam as follows:
– To consult determine author, owner of copyright and related rights;
– To consult bases wherein copyright and related rights originated and established in Vietnam and international intellectual property agencies;
– To consult the range wherein the copyright protected;
– To represent clients to conduct to establish subject of matters relating copyright such as works of applied art, the copyright over literary works, cinematographic works, performance, computer of software;
– To represent clients conduct to establish related subject of matters such as rights over performer, rights over video and phonogram recordings;
– To represent phonogram, video producers, broadcasting organizations and singers in order to join in negotiating exchanging and exporting, importing copyrights and related rights.
SBLaw Firm provides clients with legal services relating registration trademarks and filling service in Vietnam as follows:
– To research, assess the capability of registration in Vietnam and other countries such as nations of Asean, Europe United, The United states, Japan, Hong Kong, Korea, China, Russia;
– To consult procedure and represent clients in submitting an application of registration trademarks in Vietnam and in foreign countries;
– To consult in choosing and using the trademarks and names of trade;
– To submit and conduct procedure to register the trademarks
– To maintain and extend the validity of trademarks in Vietnam and in foreign countries;
– To assess the infringed capability and co-ordinate with agencies in protecting rights over the trademarks;
– To assess the validity of the certificate of registration trademarks issued in Vietnam and foreign countries
– To designate lawyers taking part in negotiating, drafting, assessing and registering the contracts which relate to used rights, owned rights and commercial franchising marks protected in Vietnam and in foreign countries;
– To design, value the marks and consult in creating identification of marks for the internal as well as external enterprises.
1. Documents identifying an industrial design registered for protection in an industrial design registration application include a description and a set of photos or drawings of such industrial design. The industrial design description consists of a section of description and a scope of protection of such industrial design.
2. The section of description of an industrial design must satisfy the following conditions:
a/ Fully disclosing all features expressing the nature of the industrial design and clearly identifying features which are new, different from the least different known industrial design, and consistent with the set of photos or drawings;
b/ Where the industrial design registration application consists of variants, the section of description must fully show these variants and clearly identify distinctions between the principal variant and other variants;
c/ Where the industrial design stated in the registration application is that of a set of products, the section of description must fully show features of each product of the set.
3. The scope of protection of industrial designs must clearly define features which need to be protected, including features which are new and different from similar known industrial designs.
4. The set of photos and drawings must fully define features of the industrial design.
