Updated patent registration and enforcement in vietnam

All about Patents in Vietnam
Vietnam at glance
Vietnam, officially the Socialist Republic of Vietnam, a country in Southeast Asia and
the easternmost country on Indochinese Peninsula. Vietnam shares its land borders with
China to the north, and Laos and Cambodia to the west. It shares its maritime borders
with Thailand through the Gulf of Thailand, and the Philippines, Indonesia and Malaysia
through the South China Sea. Its capital city is Hanoi, while its most populous city and
commercial hub is Ho Chi Minh City (former name of Saigon) 1
.
With an estimated 96.2 million inhabitants as of 2019, it is the 15th
most populous
country in the world, with GDP per capita at 2,740USD (estimated in 2019).
Vietnam is a contracting party of Paris Convention, Patent Cooperation Treaty, Madrid
Protocol, Hague Agreement, Berne Convention, Madrid Agreement (Marks), and
several other International Treaties in the field of Intellectual Property Rights 2
.
Vietnam’s Patent Law
Hereunder are the major legal instruments for protection and enforcement of patent
rights in Vietnam:
i. Intellectual Property Law 2005 passed by the National Assembly on 29
November 2005 and came into force on 1 July 2006, and then amended and
supplemented pursuant to Law No. 36/2009/QH12 of 19 June 2009 (Vietnam IP
Law)
ii. Decree No. 103/2006/ND-CP of the Government, enacted in September 2006 and
effective as of November 2006, providing guidelines for implementing certain
articles of the Intellectual Property Law concerning industrial property, amended
and supplemented in 2010.
iii. Decree No. 105/2006/ND-CP of the Government, enacted in September 2006 and
effective as of November 2006, providing guidelines for the implementation of
certain articles of the Law on Intellectual Property regarding Enforcement of
1
https://en.wikipedia.org/wiki/Vietnam
2
https://www.wipo.int/treaties/en/ShowResults.jsp?country_id=185C

Nguyen Hoa Binh | M: +84 9633 7 4499 | E: binh@daitin.com.vn
DAITIN & ASSOCIATES CO., LTD.
Add: No. 68/14 Hoang Dieu Str., District 4, Ho Chi Minh City, Vietnam
Tel: +84-8-6934 9899 | Fax: +84-24-3200 3524 E: info@daitin.com.vn; W: www.daitin.com.vn
Intellectual Property Rights and State management of intellectual property,
amended and supplemented in 2010.
iv. Circular No. 01/2007/TT-BKHCN of the Ministry of Science and Technology,
establishing regulations to implement Decree 103/2006/ND-CP that provides
guidelines for implementing certain articles of the Intellectual Property Law
concerning industrial property. The Circular came into effect as of 9 May 2007,
and amended and supplemented four times in 2010, 2011, 2013, and 2016.
v. Circular No. 13/2015/TT-BTC of the Ministry of Finance, enacted in January
2015, defining inspection, supervision, temporary suspension of customs
procedures for exported and imported goods that are subjects of intellectual
property rights; control of counterfeit goods and goods infringing intellectual
property rights.
Patent registration
1. Type of patent & criteria for protection
Invention patent Utility Model/Petty Patent
Being novel Being novel
Involving in inventive step
Industrial applicability Industrial applicability
2. Subject matters not protected as inventions
The following subject matters shall not be protected as inventions:
1. Scientific discoveries or theories, mathematical methods;
2. Schemes, plans, rules and methods for performing mental acts, training domestic
animals, playing games, doing business; computer programs;
3. Presentations of information;
4. Solutions of aesthetical characteristics only;
5. Plant varieties, animal breeds;
6. Processes of plant or animal production which are principally of biological nature
other than microbiological ones;
7. Human and animal disease prevention, diagnostic and treatment methods.

3. 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
Under, new issued Circular No. 16/2016/TT-BKHCN amending the IP Law of Vietnam
which came into effect from January 15, 2018, the additional 6-month term for
restoration of the time limit for a PCT national phase entry is NOT available.
The exception/grace period for consideration of novelty of invention under Article 60,
in respect of exposed subject, form, place and time of disclosure, extend from 6 months
to 12 months.
For criteria on inventive step (Article 61), additional provisions on disclosures in
accordance with Article 60 shall not be used as a basis for assessing the inventive level
of such invention.
4. Documents required
For filing patent application in Vietnam, the following documents and information are
required:
(i) Power of Attorney (POA) which should be only signed by the applicant, the
original POA should be submitted within 34 months from the priority date of
the application;
(ii) The description of the application including specification and set of claims.
(iii) Amendment in national phase (if any).
5. 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 IP Vietnam within a prescribed period of time.
6. Procedure & Time frame
For grant of patent, the application will be processed through the following steps.

✓ Filing application: the prepared patent application with all required documents
is filed into Vietnam’s IP Vietnam.
Vietnam adopts the “first to file” principle. Normally, a patent will be granted
to the person who is the first to file patent application. However, in the case of
having more than one patent application for the same invention, all of the
applicants are required to reach an agreement to proceed with only one
application. If not, such of all will be refused;
✓ Formal examination: this examination 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 PCT application.
In particular, a Notification of Acceptance shall be issued to confirm the
accorded filing date and assigned application number if the formalities are met.
In the case of the application did not satisfy the conditions, a Notification of
the Defect(s) shall be issued and the applicant shall be given a one-month
period to correct such defects. These informalities are not affected the filing
date;
✓ Publication: After being formally accepted, the application will be published
in the National Industrial Property Gazette within 02 months from the signing
date of acceptance Notice.
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: 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 from the priority or filing date of the application.
This step will be performed in eighteen (18) months from the publication date
or requesting date.
✓ Granting the Patent

At any time during the period from the publication to grant the patent, the applicant or
any third party related to the granting of a patent shall be entitled to file written
opposition with the IP Vietnam.
7. Registration costs
The total cost for registration of Patent in Vietnam mainly depends on the number of
independent claims, priorities and specification pages.
An average cost including both official and all-inclusive professional fees for
registration of patent in Vietnam from filing time up to grant usually rank from US$600
to US$2.000.
8. Average pendency time
Under Vietnam Intellectual Property Law, the patent application will be published on
the National IP Gazette in the 19th
month and the applicant can hold the request for
substantive examination until 42nd
month from the filing date or earliest priority date.
Therefore, the duration for granting patent in Vietnam depends on the route and filing
time of the substantive examine request.
If the request for substantive examination is filed simultaneously at the filing time, the
duration and pendency time can be summarized as below:
No. Filing routes
Duration
stated by law
Actual
duration
Pendency
time
1.
Domestic application
(no priority is claimed)
40 months
48 - 60
months
8 - 20
months
2.
Application filed under PCT
route
24 months
36 - 48
months
12 - 24
months
3.
Paris conventional
application
25 months
36 - 48
months
12 - 24
months

If the request for substantive examination is filed in the 42nd month from the filing date
or earliest priority date, the duration and pendency time will be as below:
No. Filing routes
Duration
stated by law
Actual
duration
Pendency
time
1.
Domestic application
(no priority is claimed)
62 months
68 - 72
months
8 - 10
months
2.
Application filed under PCT
route
32 months
44 - 56
months
12 - 24
months
3. Paris conventional application 50 months
62 - 74
months
12 - 24
months
The pendency time is mainly caused by the overload of works in Vietnam’s Patent
Office. In practice, for shortening the pending duration, our clients are usually
recommended to file the request for substantive examination at the filing time of the
application.
Patent enforcement
1. Protection background & system
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.
However, 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 IP Vietnam and/ or specialist IP rights
organizations, thus leading to delay in enforcement actions.
2. Provisional rights
Where an applicant for registration of an invention knows that such invention is being
used by another person without prior use right for commercial purposes, the applicant
may notify in writing the user of the filing of his/her application, clearly specifying the
filing date and the date of application publication in the Official Gazette of Industrial
Property so that the later shall terminate or continue such use.
Where the notified person/party continues using such invention, as soon as an invention
patent, utility solution patent is granted, the patent owner shall have the right to request
the user of such invention to pay a compensation equivalent to the price for licensing of
such invention within the relevant scope and duration of use.
3. Patent infringement
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.
4. 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 be 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.
5. Enforcing options
Vietnam has not had a specialized court or tribunal for Intellectual Property, that only
the Civil Courts and Criminal Courts. There are several 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.
6. Duration
It usually takes 02-03 years from the date on which the plaintiff is aware of the
infringement of his/her legitimate rights. In the case involves foreign elements, the
plaintiff must file the petition in Province People’s Court.
For criminal cases, the evidences are collected by the police, procuracy, court bodies
and other concerned agencies. It usually takes 12 months for a criminal trial proceeding
and another 12 months for an appeal proceeding to be completed.
7. Language
All proceedings are in Vietnamese; therefore, all foreign languages documents must be
translated into Vietnamese for submission to the competent agencies.

8. Number of infringement suits
Under Vietnam regulates, Intellectual Property is considered as a part of Civil, there is
no specific statistical documentation or precedents of the Court on the Intellectual
Property.
According to unofficially statistical information we learnt is that the number of IP cases
is around 100 suits per year, and the number of infringement lawsuits relating to patent
rights is less than 10 cases per year. Most of the patent infringement cases are handled
by administrative action by the Science and Technology Offices.
In Vietnam, in the years before 2010, the actual technical level is relatively low and
high-tech activities are not really dynamic. Therefore, the chance of clashing in Patent
or Technological fields is quite low.
In the trend of receiving investment from foreign high-tech companies into Vietnam and
developing economy focused on quality and technology, the numbers of patent
application, number of patents granted as well as patent infringement cases are expected
to increase in the coming years.
Patent facts in Vietnam
According to the annual report on IP by the Vietnam’s IP Office, the number of patent
applications rises gradually in a 5-year period from 2010 to 2015 (kindly refer to below
table) and continuously rises from 2016 to 2018. The competent agencies of Vietnam
do not do statistics on the patent infringement suits filed and annual patent recordals;
there is only the number of patent applications and the figure of granted patents.
1. Patent applications vs. Patent granted
The below table shows the number of patent applications compared to the number of
patents which was granted by IP Vietnam in Vietnam. It can be clearly seen that the
number of such patent rises gradually year by year.
According to the figures, the number of patent applications in 2016 rises up above
applications in 2015, reached 586 applications; besides, the number of granted patent
also increased slightly from 1.368 to 1.388 patents. However, the granted patent is fairly
constant between 27% – 28% in the total of the number of applications. In the period of

2016 to 2018, the number of patents significantly increased from 1423 to 2219 cases.
Therefore, it is a rising by leaps and bounds in the field of patent.
Years
Number of patent
applications
Number of granted
patent
1981-2009 25.856 8.166
2010 3.582 822
2011 3.688 985
2012 3.959 1.025
2013 4.169 1.262
2014 4.447 1.368
2015 5.033 1.388
2016 5228 1423
2017 5382 1745
2018 6071 2219
Total 64.415 20.403
2. Top ten countries by number of Patent applications filed in 2018 in Vietnam
No. Countries Total No. Countries Total
1. Japan 1522 2. Vietnam 1016
3. Republic of Korea 930 4. USA 734
5. China 652 6. Taiwan 282
7. Germany 259 8. Switzerland 211
9. Netherland 111 10. France 102

3. Patent application/patents granted for inventions by holders
Year
Vietnamese Foreigners Total
Applications
Granted
patents
Applications
Granted
patents
Applications
Granted
patents
1981-
2009
2.239 389 23.617 7.777 25.856 8.166
2010 306 29 3.276 793 3.582 822
2011 301 40 3.387 945 3.688 985
2012 382 45 3.577 980 3.959 1.025
2013 443 59 3.726 1.203 4.169 1.262
2014 487 36 3.960 1.332 4.447 1.368
2015 583 63 4.450 1.325 5.033 1.388
2016 560 76 4668 1347 5228 1423
2017 592 109 4790 1636 5382 1745
2018 646 205 5425 2014 6071 2219

If you need any further information or assistance, please feel free to ask us.
We thank you for your kind attention and look forward to working with you.
Very truly yours,
Nguyen Hoa Binh | Co-Founding Partner
M: +84 9633 7 4499 | E: binh@daitin.com.vn
*****************************************************
(IP Agent in Vietnam, Laos, Cambodia and Myanmar)
Ho Chi Minh City | Hanoi
No. 68/14 Hoang Dieu Str., District 4, Ho Chi Minh City, Vietnam
Postal code: 700000 | Tel: +84-8-6934 9899 | Fax: +84-24-3200 3524
Email: info@daitin.com.vn | Website: www.daitin.com.vn
A member of: INTA, APAA & AIPPI

Updated patent registration and enforcement in vietnam

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