Patents

We provide clients of all sizes with a full range of Patent/PCT services in Vietnam, including:

• General counseling;
• Patentability searches and opinions;
• Patent validity searches and opinions;
• Drafting, translation, preparation, filling, prosecution of patent applications from filing through grant;
• Opposition, appeal, cancellation, invalidation proceedings;
• Negotiation, drafting and registration of licensing/assignment agreements and technology transfer contracts;
• Investigations and opinions on patent infringements and disputes;
• Resolution patent infringements and disputes through arbitration and mediation;
• Dealing with patent infringements through administrative remedies at the state IP enforcement competent administrative authorities (inspectorate, police agencies, market management agencies, custom offices, people’s committees);
• Civil and criminal litigation at courts against patent infringements;
• Watching services;
• Maintenance services

Our patent team includes registered patent attorneys, patent agents and technical advisors, who have science and engineering degrees and advanced degrees covering all aspects of modern technology, such as: 

• Aerospace / AgriBio / Agricultural / AgriFood / Agrochemicals / Automation / Automotive / Aviation
• Biochemical / Biomedical / Biophysical / Biotechnology
• Chemical / Chemicals / Clean & Green Technology / Communications / Computer / Construction / Consumer Goods & Services
• Electrical / Electromechanical / Electronic / Energy / Edutech
• Food & Beverage / Genetic / Information Tecnology / Laser
• Machinery / Manufacturing / Materials / Mechanical / Mechatronic / Medical / Media, Sports and Entertainments / Metallurgy / Molecular Biology
• Nanotechnology / Oil and Gas / Optical / Pakaging / Petro-Chemical
• Pharmaceutical / Pharmaceuticals / Physical / Polymers / Printing
• Robotics / Semiconductor / Signal Processing / Telecommunications / Textiles / Transportation / Unmanned Aerial Vehicles ….

Some of our patent attorneys worked in the leading IP law firms in Vietnam and have nearly 30 years of experience and expertise in patent prosecution, enforcement and litigation before joining the firm. Some of them are licensed to practice before the National Office of Intellectual Property (NOIP) of Vietnam.

We are located in the heart of Hanoi capital, about 6km away from the NOIP. This enables us to work and discuss directly with patent examiners and timely satisfies our client’s requests.

We also have a good relationship and effective cooperation with state IP enforcement competent authorities to protect and enforce client’s IP rights in Vietnam.

All of the above advantages, with our computerized IP management system, are enable us to work in a wide range of technical fields and provide professional services to clients ranging from largest multinational companies to individual inventors in an efficient, reliable, responsive, and cost-effective manner.

For more information concerning patent protection in Vietnam, please click to the desired section below or contact us.

Types of patents

• Patent for Invention;
• Patent for Utility Solution; and
• Patent for Industrial Design

Subject matters not protected as inventions and utility solutions

• Discoveries, scientific theories; mathematical methods;
• Schemes, plans, rules or methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;
• Presentations of information;
• Solutions of aesthetic characteristics only;
• Plant varieties, animal varieties;
• Processes of essentially biological nature for the production of plants and animals other than microbiological processes;
• Disease prevention, diagnostic and treatment methods for human or animals.

Filing principle

• The “first to file” principle is applied for patent applications in Vietnam.
• If several patent applications are filed for the same invention/utility solution, on the same date or claim the same priority date, then all applicants shall be required to merge the applications into one application and only one patent will be granted to all the applicants as co-owners if they so agree. Otherwise, no patent will be granted.
• If two or more patent applications are filed for the same technical solution, one(s) for invention and the other(s) for utility solution, with the same priority conditions, then the NOIP will request the applicants to select a single form of protection (invention patent or utility solution patent) and merge the applications in the similar manner as above mentioned. Otherwise, no patent will be granted.

Priority

• Priority under the Paris Convention is applied in Vietnam, based on an earlier application for the same subject matter filed in a foreign PC member country, or display of the same subject matter in an officially recognized international exhibition held in Vietnam or a foreign PC member country.
• Priority under a bilateral agreement or the principle of reciprocity as to priority can also be applied.

Application and filing

• Each patent application can be filed for one subject matter or a number of subject matters provided that they are so linked as to form a single inventive step (unity requirement).
• For non-PCT applications claiming priority right under Paris Convention, the time limit for filing in Vietnam is 12 months from the filing date of the first filed application, or 6 months from the date the object was displayed at an exhibition.
• For PCT applications, the time limit for entering the national phase in Vietnam under Chapter I and Chapter II of PCT is 31 months counted from the filing date of the first filed application.
• For applications claiming priority right under a bilateral agreement or the principle of reciprocity, the time limit for filing shall be determined in accordance with such an agreement or principle.
• If the application claims different priority dates, the above mentioned time limits will be counted from the earliest priority date.
• Patent applications will be filed with the NOIP in Hanoi or any Receiving Office established by NOIP in Vietnam. Upon filing, a Receipt of Application will be issued in which the filing date and filing number are clearly determined.
• All applications of foreign applicants who are not resident or have not legal representative or real industrial/commercial establishment in Vietnam must be submitted through a licensed local IP agency like Tri Viet & Associates.

Protection term

• Patent shall be effective from the granting date. The validity term of patent shall be 20 years for invention, 10 years for utility solution counted from the filing date, subject to annuity payment.

Formality Examination

• All patent applications (including PCT applications) shall be subject to formality examination at NOIP, which will take place within 01 month from the date at which all the required documents are completely filed (the date may be the filing date or the date of supplementing documents).
• During the formality examination stage, amendments or supplements to the filed application can be made, provided that they must not expand the scope (volume) of protection or change the nature of the invention, utility solution.
• If the formality requirements are met, an official Notification of Acceptance will be issued by NOIP to applicant, in which official filing date, official filing number, and priority date are clearly determined and certified. To the contrary, the NOIP will reject the application with a Notification of Refusal of Acceptance or, where appropriate, notify and request the applicant to rectify the deficiencies.

Publication of accepted patent application

• All patent applications (including PCT ones) which have been accepted as to formality by NOIP will be published in Official IP Gazette, Volume A.
• For non-PCT accepted applications, the time limit for publication is normally in 19^th month from priority date, except some following cases:
• (i) If a request for early publication is filed, the application shall be published within 2nd monthfrom the date of the request or from the date of acceptance as to formality, depending on whichever comes later.
• (ii) If a request for substantive examination is filed before the date of acceptance as to formality, the application shall be published within 2nd month from the date of acceptance.
• (iii) If a request for substantive examination is filed after the date of acceptance as to formality but prior to the expiry of 18-month period from the priority date, then the application shall be published within 2nd month from the date of receipt of the request for substantive examination.
• For PCT accepted applications, the time limit for publication is within 2^nd month from the date of acceptance.

Request for substantive examination

• All patent applications are subject to request for substantive examination within a prescribed time limit. Otherwise, the application shall be deemed to be abandoned.
• Time limit for filing request for substantive examination is 42 month for invention and 36 month for utility solution counted from the priority date.
• Publication of request for substantive examination: if the request is filed before the date of acceptance as to formality, it will be published simultaneously with the accepted application; if the request is filed after the date of acceptance, it will be published within 2^nd month from the filling date of the request.

Substantive examination

• All patent applications which have been accepted as to formality and requested for substantive examination within prescribed time limit will be subject to substantive examination.
• Time limit for substantive examination is 18 months from the date of filing request for examination or from the publication date of the application, depending on whichever comes later.
• During the substantive examination stage, amendments or additions can be made to the filed application, provided that they must not change the nature of the invention, utility solution or extend the scope (volume) of protection claimed.

Refusal or Grant of Patent

• Upon expiry of the substantive examination stage, if the invention or utility solution is found not to be patentable, a Notification of Substantive Examination Result will be issued by NOIP to the applicant for amendments or corrections. Time limit for responding to the NOIP action is within 2 months from the date of issue, failure to do so will result in officially rejection of the application with a Notification of Refusal of Granting Patent issued by NOIP. 
• If the invention or utility solution is found to be patentable, a Patent will be granted under a Decision for Grant of Patent.

Publication of granted Patent

• All granted patents will be published in the official IP Gazette, Volume B.
• Time limit for the publication of granted patent is within 2^nd month from the signing date of the Decision for Grant of Patent.

Annuity payment

• The first annuity shall be due on granting date.
• Each of subsequent annuities must be paid within 6 months before the expiration date of preceding validity year.
• A late payment of an annuity may be allowed within a 6-month grace period, subject to a fine of 10 percent of the respective annuity fee for each month overdue.

For Registration of Patent

National Application

+ Information

• Full name, address and nationality of the applicant;
• Full name, address and nationality of the inventor(s);
• Paris Convention Priority data (if any): country, application number and filing date of the original foreign application from which priority is claimed

+ Documents

• A Power of Attorney from the Applicant  (required at filing; a fax copy is acceptable provided that the original is submitted within 01 month from the filing date);
• A Deed of Assignment from the Inventor(s) to the Applicant if the Applicant and the Inventor(s) are not the same (this document must be submitted upon request of the NOIP only in case that the NOIP has reasonable grounds to doubt the Applicant’s eligibility); 
• A Deed of Assignment of the Priority Rights where the Applicant is different from the Applicant having filed the Priority Application (required within 01 month from the filing date);

Note: the POA and DOA must be signed by the Applicant if the Applicant is a natural person, or by the officer entitled to represent the Applicant if the Applicant is a legal entity and affixed by the corporate seal of such an entity (if any). Notarization and/or Legalization are/is required.

• A plain copy of the specification, claims, drawings (if any) and abstract in English for the purpose of translation into Vietnamese (required at filing); 
• Certified copy of the Priority document(s) or Exhibition certificate – applicable where the Paris Convention Priority is claimed (required within 03 months from the filing date). In case the NOIP request to submit the Vietnamese version of priority document(s), the sworn English translation(s) thereof are required (if the priority document(s) are not in English).

Intenational Application (PCTs)

+ Information

• Full name, address and nationality of the applicant;
• Full name, address and nationality of the inventor(s);
• Paris Convention Priority data (if any): country, application number and filing date of the original foreign application from which priority is claimed;
• International filing and publication numbers

+ Documents

• A Power of Attorney from the Applicant (required within 34 months from the priority date);
• A Deed of Assignment where the Applicant entering the National Phase is different from the Applicant having filed the International Application (required within 34 months from the priority date);

Note: the POA and DOA must be signed by the Applicant if the Applicant is a natural person, or by the officer entitled to represent the Applicant if the Applicant is a legal entity and affixed by the corporate seal of such an entity (if any). Notarization and/or legalization are/is required.

• If the Applicant requests entry into the Vietnam National Phase before the International Publication date, a copy of the International Application as filed (required at the date of entry); 
• An English version of Publication of PCT International Application (including specification, claims, any text matter of drawings and abstract), International Search Report (PCT/ISA/210), International Preliminary Examination Report (PCT/IPER/409), Notification of Change (PCT/IB/306), Amendments, Written Opinion to the Amendments (if any) in accordance with Articles 19 and/or 34 of PCT, and copies of amended description and claims … for the purpose of translation into Vietnamese. (Please send us in one month before the date of entry into Vietnamese national phase so that we have enough time for translating and preparing).

For Annuity of a Patent for Invention and Utility Solution

• Data related to the Patent including patent number, patent owner, regular filing date, granting date, priority date;
• The effective year for which the annuity should be paid;
• A Power of Attorney from the Patent Owner (required at filing). Notarization and/or legalization are/is required.

For Recordal of an Assignment Agreement

+ Minimum-required contents of an Assignment Agreement

• The identity of the Assignor and Assignee (full name and address);
• Details of the IP objects to be assigned (information on granted Invention/Utility Solution Patent);
• Price of the assignment and term of payment;
• Rights and obligations of each party;
• Conditions for amendment, termination and invalidation of the Agreement;
• Method for settlement of disputes;
• Date and place of signing;
• Signatures of the parties or of their authorized representatives with the full names and position of the signatories. These signatures must be duly notarized.

+ Documents required for recordal of an Assignment Agreement

• A Power of Attorney from the Assignee and Assignor (required at filing: a fax copy is acceptable provided that the original is submitted shortly thereafter). Notarization and/or legalization are/is required.;
• The original Patent for Invention/Utility Solution;
• A notarized copy of Business Licence/Investment Licence (if the Assignee is a Vietnamese entity);
• Two original or certified copies of Assignment Agreement duly executed by both parties with the signatures verified by Notary Public, including appendix or appendices (if any) and their Vietnamese translations;

+ Notes

• The Assignment Agreement must be recorded with the National Office of Industrial Property of Vietnam (NOIP) to be legally effective and enforceable in Vietnam. 
• The request for recordal of the Assignment Agreement should be submitted within 60 days from the signing date.
• For those agreements to which one party is a Vietnamese entity which is State-owned or State-funded, the agreements shall be subject to approval by the Ministry of Science and Technology (MoST) before being recorded by the NOIP. 
• If the Agreement is executed in English only, the Vietnamese translation of the Agreement is required. The Vietnamese translation must be certified by a Notary Public in Vietnam. Tri Viet & Associates can provide translation service.
• The Assignment Agreement must be affixed with Corporate Seals or certified by Notary Public.
• A standard form of Assignment Agreement containing minimum-required provisions will be provided upon request.

For Recordal of a License Agreement

+ Minimum-required Contents of a License Agreement

• The identity of the Licensor and Licensee (full name and address);
• Details of the IP objects to be assigned (information on granted Invention/Utility Solution Patent);
• Scope of the License including: type of license (exclusive or non-exclusive); object(s) of license (Invention/Utility Solution Patent); territory of license (Vietnamese territory or part thereof); term of license (within the term of validity of the corresponding Invention/Utility Solution Patent). In case of a sub-license, the scope of the sub-license must fall within the scope of the corresponding exclusive license.
• Price of the License and term of payment;
• Rights and obligations of each party;
• Conditions for amendment, termination and invalidation of the Agreement;
• Method for settlement of disputes;
• Date and place of signing;
• Signatures of the parties or of their authorized representatives with the full names and position of the signatories. These signatures must be duly notarized.

+ Documents Required for Recordal of an License Agreement

• A Power of Attorney from the Licensor and Licensee (required at filing: a fax copy is acceptable provided that the original is submitted shortly thereafter). Notarization and/or legalization are/is required;
• A certified copy of the Invention/Utility Solution Patent;
• A copy of the Certificate of Recordal of the corresponding exclusive Agreement (if the Agreement to be approved is a sub-agreement);
• A notarized copy of Business Licence/Investment Licence of the Licensee (if the Licensee is a Vietnamese entity);
• Two original or certified copies of License Agreement duly executed by both parties with the signatures verified by Notary Public, including appendix or appendices (if any) and their Vietnamese translations;

+ Notes

• The License Agreement must be recorded with the National Office of Industrial Property of Vietnam (NOIP) to be legally effective and enforceable in Vietnam. 
• The request for recordal of the License Agreement should be submitted within 60 days from the signing date.
• For those agreements to which one party is a Vietnamese entity which is State-owned or State-funded, the agreements shall be subject to approval by the Ministry of Science and Technology (MoST) before being recorded by the NOIP. 
• If the Agreement is executed in English only, the Vietnamese translation of the Agreement is required. The Vietnamese translation must be certified by a Notary Public in Vietnam. Tri Viet & Associates can provide translation service.
• The License Agreement must be affixed with Corporate Seals or certified by Notary Public.
• A standard form of License Agreement containing minimum-required provisions will be provided upon request.

For Recordal of Change of Name and/or Address

• A Power of Attorney from the Patent Owner (required at filing). Notarization and/or legalization are/is required.;
• A notarized Declaration on Change of Name and/or Address by the Owner, or a certified copy of Official Record on Change of Name and/or Address (required at filing);
• Original Invention/Utility Solution Patent (required at filing).

• PCT database of World Intellectual Property Organazation (WIPO)
• Patent database of European Patent Office (EPO)
• Patent database of US Patent & Trademark Office (USPTO)
• Patent database of UK Intellectual Property Office (UKIPO)
• Patent database of Japan Patent Office (JPO)
• Patent database of Korean Intellectual Property Office (KIPO)
• Patent database of Russian Patent & Trademark Office (RPTO)
• Patent database of National Office of Intellectual Property of Vietnam (NOIP)
• Patent databases of Other Countries
• Patent databases from Google