Recent changes to Vietnam’s patent laws established by the Ministry of Science & Technology in February 2007 are being compared to the older regulations to raise awareness of the patent changes occurring in the socialist republic of Vietnam. The source of the comparisons is from the set of guidelines laid down in Circular No. 01/2007/TT-BKHCN.
Patent Prosecution Matters Relating to an Administrative or General Nature
Of particular interest to applicants who have a PCT application designating Vietnam, the law now provides applicants the possibility to extend the deadline to enter the national phase into Vietnam by a further 6 months from the actual due date provided that the relevant extension fees are paid. Obviously not provided for under the old laws, this could mean a theoretical deadline of 37 months from the date of priority to enter the Vietnam National Phase since Vietnam has already a 31-month time limit (from earliest date of priority) for entering the National Phase under the auspices of PCT Chapters I and II.
The new rules also require that the Vietnamese patent specification be provided right at the date of filing for all patent applications. The old laws only required PCT applications designating Vietnam to provide translations into Vietnamese at the time of filing. Non-PCT applications were given up to 3 months from the Vietnam filing date to provide the translations.
In contrast, the deadline to respond to adverse formalities raised by the National Office of Intellectual Property (NOIP) is shortened from 2 months from the date of the adverse report notification to 1 month under the new decree.
With regards to the submission of formal documents such as the Deed of Assignment of Priority Rights, it used to be set at 3 months from the date of filing in Vietnam. The new rules have mandated 1 month from the date of filing in Vietnam to accomplish the submission.
Power of Attorney
In this light, it is helpful to look at the demands placed on the submission of the Power of Attorney (POA). The old regime dictated that at least a copy of the POA be submitted at the time of filing and the original one submitted later with no penalty fees. In contrast, the new rules say that there is no longer any need to submit the POA at the time of filing. However, the original one should nonetheless be submitted, with an incurred charge for late submission.
As for publications, patent applications are published within 2 months from the date of official acceptance. Nowadays applications may be published after 18 months from the date of priority as well, depending on which date is later.
Also in relation to the deadline for making the payment of the grant fee, the deadline is now set at 1 month from the date of NOIP notification on grant of Protection Title as opposed to 2 months previously.
Finally, the new rules provide that an applicant may request the NOIP to implement the prosecution procedures earlier than previously prescribed officially. A notification clearly specifying the reasons shall be made available to the applicant should the office refuse to undertake the early implementation.
Examination as to Substance / Contents and Subsequent Proceedings
Under the new provisions, the patentable subject matters of the invention only consist of “product and process/method”. Subject matter relating to “use” is no longer patentable.
Scope of Protection
Under the new decree, applicants are given the latitude to narrow the scope of protection to dispel the objections in the examination of contents presumably to secure patent grants faster. Once this request is made and the relevant prescribed fees paid, a re-examination will be afforded to the application. There were no such similar provisions before this decree.
Under some circumstances, the substantive examination can now be terminated earlier than the prescribed time; either at the request of the applicant or at the discretion of the NOIP who may have found that for example the application did not clearly express the nature of the object seeking protection, inter alia. There were no provisions for premature termination of the examination in yesteryears.
With regards to filing oppositions to a patent application, the old regime allowed a third party to file such opposition during the substantive examination of the application. Now under the new rules, one may still file an opposition but only during the time from the publication date of the application to the time before the date of a Decision on Granting Protection Title. Also as opposed to allowing 2 months to respond to the opposition, the applicant is now only given 1 month. There are also new provisions not provided for previously. For instance, the NOIP will now host a session between the person applying for opposition and the patent applicant to sort out the opposition issues. The NOIP will also set itself a time limit of 1 month to notify the applicant of the outstanding opposition from the date of complaint. The NOIP will also now inform the person lodging the opposition, when the opposition is of a matter concerning the registration right and where it is impossible to verify whether such opinions are valid, to submit the opposition directly to court.