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Updates to Vietnam Patent Regime

New regulations with regard to patent applications in Vietnam came into force on 15th January 2018.  These amended regulations aim to bring the Vietnamese intellectual property system in line with recent developments. Below are three of the main changes based on guidelines laid out in Circular No. 16/2016/TT-BKHCN from the Ministry of Science and Technology, Vietnam.

Late PCT National Phase Entry no longer allowed

Late entry into the PCT National Phase in Vietnam within 6 months of the 31-month deadline is now not allowed for applications having said deadline on or after 15 January 2018. This change entails that filing instructions by Applicants to their agents should be provided well before the 31-month deadline in order to allow ample time for preparation of the Vietnamese translation of the specification, which must be submitted at the point of national phase entry in Vietnam.

However, the National Office of Intellectual Property (NOIP) of Vietnam has not provided transition provisions in the newly-implemented Circular for PCT applications whose 31-month deadline has fallen before 15 January 2018, and whose 37-month time limit (after applying the previous 6-month grace period) falls on or after 15 January 2018.  It is unclear as to whether a request for late national phase entry in Vietnam will be allowed for such applications. Clarification on this matter from NOIP should soon be forthcoming.

Security Regulations Concerning Inventions

Article 23(b) of Decree No. 122/2010/ND-CP of December 31, 2010 (“Decree 122”), specifies that inventions of Vietnamese organisations or individuals, or inventions created in Vietnam (by Vietnamese or by foreigners) must be filed firstly in Vietnam before filing at any overseas patent offices. Patent applications with regard to said inventions may be filed elsewhere after  6 months of having been filed in Vietnam, if they are determined not to be subject to secrecy restrictions.

An applicant must obtain permission to file overseas in addition to first filing in Vietnam. Article 23(b) also states that overseas filing is only permitted in jurisdictions with laws and regulations which recognise the protection of confidential inventions.

A provision within the new Circular permits the NOIP to refuse a patent application which has contravened security control regulations, as described in Decree 122. In light of this change, it is recommended that applicants abide with the aforementioned requirements of initial filing if they do not wish to risk losing the opportunity to protect Vietnamese inventions.

Changes to deadlines to respond to official communications from NOIP

The newly-implemented Circular affords Applicants more time to prepare and attend to issues or objections set out in Office Actions issued by NOIP. The deadline for responding to NOIP’s notices of formality examination has been revised from 1 month to 2 months (extendable one time only for 2 months). As for submitting a response to NOIP’s notice of substantive examination, the time limit has been revised from 2 months to 3 months (extendable one time only for 3 months). Furthermore, the deadline to pay the fee for grant upon issuance of a notice of intention of grant is revised from 1 month to 3 months (extendable one time only for 3 months). All requisite fees in relation to requests for extensions of time must be paid before the expiration of the initial time limit for response.

It is hoped that the provisions of the above Circular will be clarified, with supplementary guidance, in future Circulars and/or Decrees to be issued by NOIP and/or the Vietnamese Government, so that the amendments can be efficiently applied into practice.

By Gladys Mirandah and Hilmi Bin Zaini