How are Patents protected, licensed and enforced in Vietnam?

DAITIN & ASSOCIATES CO., LTD.
Ho Chi Minh City & Hanoi
No. 19 Hoang Dieu Str., District 4, HoChiMinh City, Vietnam.
T: +84-4-6270 0022; F: +84-4-6270 0020; E: info@daitin.com.vn; W: www.daitin.com.vn
NEWSLETTER ISSUE 29.2016
TABLE OF CONTENT
o TABLE OF CONTENT............................................................................................................ 1
o HOW ARE PATENTS PROTECTED? .................................................................................... 2
o HOW ARE PATENT LICENSED/aSSIGNED?........................................................................ 5
o HOW ARE PATENT ENFORCED? ........................................................................................ 5
CONTACT US:............................................................................................................................. 8

HOW ARE PATENTS PROTECTED?
Generally, in Vietnam, the Intellectual
Property (IP) Law 2005 (as amended and
supplemented a number of articles in 2009)
and the Customs Law, as well as guidance
on the implementation of such laws set out a
comprehensive legal framework for the
protection and enforcement of patent rights.
Moreover, in general speaking, Vietnam’s IP
legislation is now entirely consistent with and
covering most aspects of patent protection in
accordance with international standards
required by the WTO/TRIPS, the
international conventions and other
international treaties to which Vietnam is a
contracting party regulating patent matters,
the Paris Convention for the Protection of
Industrial Property, the Patent Cooperation
Treaty, Agreement on Trade-Related
Aspects of Intellectual Property Rights, etc.
Vietnam is member of both Paris Convention
and Patent Co-Operation Treaty (PCT).
Patent will be granted for inventions that
meet all protection criteria on novelty,
industrial applicability and inventiveness.
Time limitation
Under Vietnam’s Patent Law, the deadline
for filing a patent application for entry into the
National phase under PCT and Paris
Conventional routes will be within 31 months
and 12 months respectively from the earliest
priority date or from the international filing
date of the application
Documents required
 Power of Attorney (POA) which
should be only signed by the
applicant, the original POA is
needed;
 The description of the application
including specification, set of claims
and amendment in national phase (if
any).
 The priority document.
Language
All patent applications shall be made in
Vietnamese, with certain exempt documents
that can be filed in another language
provided that appropriate Vietnamese
translations thereof shall be submitted to the
National Office of Intellectual Property
(NOIP) within a prescribed period of time.
Procedure & Time frame
For grant of patent, the application will be
processed through the following steps.

 Filing Receipt:
 Formal examination: this
examination step will be carried out
to determine whether or not the
application for patent is filed in due
form. This step will take 01 month
from the filing date on which, all
necessary documents are duly
submitted or from the 34th month
from the priority date of the
application;
 Publication: After being accepted as
filed in due form at the end of the
formality examination, the
application for patent shall be
published in the National Industrial
Property Gazette within 02 months
from the date on which the Notice of
official acceptance of application is
filed in due form is issued.
The period for opposition by any third party
is commenced from the publication date until
before the granting date. It means that the
period for opposition is not fixed. It is
effective as far as the application for patent
is not granted.
 Substantive examination: to
determine the patentability of the
application. This examination will be
carried out on request of the
applicant which can be file at the time
of filing or within forty-two (42)
months counted from the priority
date of the application.
This step will be performed in 18 - 24
months from the publication date if
the request for substantive
examination is filed prior to the
publication date of application or
from the date on which the request is
filed after the publication date of
application;
 Granting

FLOW OF PATENT APPLICATION PROCESSED
IN VIETNAM
Publication
Application
Request for
Substantive exam
If the request has not been submitted at filing
Refusal
Opposition
If the opposition is accepted, the applicant shall file the refuse
to
Publication of Registration
GRANT PATENT
18-24 months
Substantive
Acceptance
Opinion/
Amendment
Decision of refusal
Proposed refusal
No amendment/
Opinion not accepted
Amendment/ Opinion
19th
months
Formality
Acceptance
Application
DismissalAmendmen
Notice of shortcoming
No amendment/
Amendment not accepted
Amendment made
The MOST
Court
Third Party shall have right to file the opposition
to

HOW ARE PATENT
LICENSED/ASSIGNED?
What can be licensed/assigned?
The patent owner can license or assign the
patented invention and other rights under
the granted patent to another party as
specified in the written contract which must
be approved and recorded by the Vietnam’s
NOIP before coming into effect.
What documents needed?
In order to license or assign the patent, the
following documents are needed:
 two copies of the written declaration
for registration of the contract on the
transferring rights, made according
to a set form;
 two originals or two valid copies of
the contract. If the contract is made
in a language other than
Vietnamese, it must be enclosed with
its Vietnamese translation; if the
contract consists of many pages,
each page must be appended with
the parties’ signatures for
certification or every two adjoining
pages must be appended with a seal
on their inner edges;
 original protection title;
 written consent of co-owners to
transfer of trademark rights, if those
industrial property rights are under
common ownership;
 power of attorney if the dossier is
filed through a representative; and
 fee and charge receipts.
Validity of license or assignment?
Under the Law on Intellectual Property of
Vietnam, the license or assignment shall
only be valid after being approved and
recorded by the Vietnam’s NOIP.
HOW ARE PATENT ENFORCED?
The enforcement of patent rights in Vietnam
is still weak and ineffective. In many cases
judges in rural areas lack the right
experience and legal training to bring fair
judgments in line with Vietnamese law. This
might be caused of the competent
authorities are not strong enough to prevent
infringements or the shortage of IP
specialists who handle patent infringements.
So then, in the particular case, the court
officials, judges, customs agencies, or other
enforcement agencies relate to Patent

infringements have been consulted by NOIP
and/ or specialist IP rights organizations,
thus leading to delay in enforcement actions.
As the annual report of NOIP, in 2014, the
NOIP provided 123 expert comments at the
request of IP enforcement agencies; in
which, 6 on patents and 2 on utility solutions.
Patent infringement is defined as the act of
making, using, selling, or offering to sell a
patented invention, or importing into
Vietnam’s territory a product covered by a
claim of a patent without the permission of
the patent owner or licensee.
Particularly, the below acts of violations shall
be regarded as a patent infringement:
 Using the protected invention within
the validity term of the Protection
Title without the permission of the
owner;
 Using the invention without paying
compensation in accordance with the
provisions on provisional right.
In Vietnam, the facts that there are many
situations resulting in infringe on patent and
the application of the Doctrine of Equivalents
(DOE) is essential. Therefore, if either
individual or business are performing, using
or repairing of the following product and
process manufacturing, thus may fall direct
or indirect under patent infringement, as:
 A product or component of a product
is identical with or equivalent to a
product or component of a product
protected under the valid patent.
 A process is identical with or
equivalent to a process protected
under the valid patent.
 A product or component of the
product is manufactured via a
process which is identical with or
equivalent to a process protected
under the valid patent.
Two processes shall be deemed to be
equivalent if not only their natures are similar
but also they are using for the same
objectives; and, the way of achieving such
objective is substantially the same.
Preceding discovering
A preceding discovery is acceptable. In
order to prove patent infringement,
evidences recognized by law such as
readable, audible or visible materials are
usually often gathered and demonstrated to
the court by the patent owners. The
evidence can also collected by the
authorized officers or the litigations if they
get permission from competent agencies.
Pursuant to the Article 203 of IP Law in
Vietnam, parties in a civil patent
infringement case have rights and duties to
introduce evidence relevant to

substantiation of their claims or have right on
the request of the court to compel the others
parties to provide evidence such as damage
or invalidity.
Local market police and/or Sci-Technology
inspector can also be invited to the premises
of an alleged infringer.
In addition, an Assessment on the
infringement is usually obtained from the
Vietnam IP research Institute (an Intellectual
Property Assessment Organization - IPAO)
on the request of patent owner. However,
IPAO’s decisions are not conclusive on the
issue of infringement and the legal effect of
IPAO decisions is unclear. So, patent owner
will not be able to comfortably rely on such
decisions of infringement and they may be
deterred from enforcing their legitimate
rights. At this moment, the conclusion from
the IPAO on the infringement possibility is
just a reference in court and for
governmental enforcing officials.
Enforcing options
Vietnam has not had a specialized court or
tribunal for Intellectual Property, that only the
Civil Courts and Criminal Courts. There are
three enforcement options for patent rights
in Vietnam that a patent holder or a licensee
may seek to against an infringement: (1)
Administrative proceedings; (2) Civil
proceedings; (3) Criminal proceedings; and
(4) Border measures by Customs Agencies.
Since, there is no specialized intellectual
property court in Vietnam, if a patent holder
or a licensee chooses to take civil or criminal
action, the case will be heard by the People’s
Courts.
In general, a Patent infringing act,
depending on the level and seriousness, can
be handled in accordance with any of above
procedures or competitive procedure (if
appropriate). However, in Vietnam, most of
cases are handled by administrative action
(option 1), because of its high effectiveness,
short time, low cost and attendance of
expertise on patent from the Vietnam’s
Patent Office.
Practically, before taking legal actions in the
form of administrative, civil or criminal
actions against the alleged infringer, the
holders of valid patent are required to take
an initial step of sending a Cease-and-Desist
Letter to the infringer. If failing to settle the
infringement amicably, the Patent owner
shall take such legal action(s) against the
alleged infringer.

CONTACT US:
Please feel free to let us have your comment
or other requests at:
Hanoi Office:
No. 12A4, Ly Nam De Str., Hoan Kiem,
Hanoi, Vietnam
Tel: +84-4-6270 0022;
Fax: +84-4-6270 0020
Email: info@daitin.com.vn
Website: www.daitin.com.vn
Ho Chi Minh City Office:
19, Hoang Dieu Str., District 4,
Ho Chi Minh City, Vietnam
Tel: +84-4-6270 0022;
Fax: +84-4-6270 0020
Mob. +84-9-6337-4499
Email: binh@daitin.com.vn
Website: www.daitin.com.vn

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