In summary
To provide an updated overview of the current patent prosecution situation in Vietnam as well as the related regulations, this article will discuss a number of different important aspects that most of the applicants need to be aware of before and during prosecution of a patent in the jurisdiction.
Discussion points
- Subject matter ineligible for patent protection
- Novelty of an invention, grace period and exceptions
- Patent opposition mechanism
- Some other important patent regulations
- Patent examination speed and the existing mechanisms for expediting examination
Referenced in this article
- Intellectual Property Law, last amended in 2022, effective as of 1 January 2023
- Law on Protection of State Secrets 2018
- Decree 65/2023/NĐ-CP 2023
- Circular 23/2023/TT-BKHCN 2023
- Vietnam Intellectual Property Office’s Patent Examination Guideline and its Appendixes, last updated in 2023
- Vietnam Intellectual Property Office’s 2023 Intellectual Property Activities Annual Report 2024
The Law on Intellectual Property of Vietnam (the IP Law) was first endorsed in 2005. To rectify the problems and difficulties in enforcing the Law and fulfil the country’s commitments in bilateral and multilateral agreements (eg, the Agreement on Trade-Related Aspects of Intellectual Property Rights, the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, the EU–Vietnam Free Trade Agreement and the Regional Comprehensive Economic Partnership), the IP Law has undergone several amendments and supplementations, most recently in 2022. At the same time, the Vietnam Intellectual Property Office (VNIPO) has put tremendous effort into bringing Vietnam’s IP system closer to international standards. Below is an updated number of important amended and supplemented regulations applicable to patents as well as the current patent examination situation in the jurisdiction.
Subject matter ineligible for patent protection
Subject matter excluded for patent protection
As stipulated by the IP Law, an invention means a technical solution in the form of a product or process intended to solve a problem by application of natural laws. The following subject matter is excluded from patent protection:
- scientific discoveries or theories, and mathematical methods;
- schemes, plans, rules and methods for performing mental acts, training domestic animals, performing games, doing business and computer programs;
- presentations of information;
- solutions of aesthetic characteristics only;
- plant varieties and animal breeds;
- processes of plant or animal production that are principally of a biological nature and other than microbiological processes; and
- methods of prevention, diagnosis and treatment of diseases for humans and animals.
With regard to this matter, applicants must pay attention to some common types of subject matter that are refused patent protection in Vietnam as discussed below.
Medical methods and medical uses
A medical use, regardless of first use or second use, is not per se considered a product or a process under the statutory definition of a patentable invention. In addition, medical methods, including methods for prevention, methods for diagnosis or treatment performed on a human or animal body, are the subject matter excluded from patent protection.
It is quite often that when a patent application for such medical uses and medical methods is rejected, the applicant is very committed to finding a way to amend the specification or claims, or both, to seek protection for such subject matter. However, if the originally disclosed specification was for the protection of medical uses or medical methods only, the risks are that the amendments to the claims directed to such subject matter into other patentable forms, such as products (eg, preparations, pharmaceutical compositions) or process of production, may be considered to have exceeded the scope of the originally disclosed specification, or the amended subject matter may be considered to lack novelty or not involve an inventive step because they do not contain any additional technical features different from the prior art, but rather only the features of use or treatment, prevention or diagnosis. In addition, use feature in claims, which are normally expressed as ‘. . . for use’, are considered ‘function or usage’, which are not the basic technical features for assessment of novelty and inventiveness.
Considering the above, when conducting research related to medical uses and methods of prevention, diagnosis and treatment of diseases, where appropriate, applicants should also conduct additional research in related patentable subject matter (eg, products such as compounds, preparations, pharmaceutical compositions, dosages, medical devices or in vitro methods not directly for prevention, diagnostic and treatment). Additionally, to enhance the chance of success of patent protection in Vietnam, applicants are advised to sufficiently disclose the appropriate technical features for such subject matter in the specification (eg, in the case of compositions, the synergistic effect of active ingredients that brings about unexpected effects, or in the case of in vitro methods, the features of in vitro steps and conditions for performing the steps).
Computer programs
Another subject matter excluded from patent protection is computer programs, which are statutorily subject to copyright protection.
Under the VNIPO’s Patent Examination Guideline, an invention relating to computer programs that is classified as a ‘computer-implemented invention’ may be eligible for patent protection, but it must be presented in the form of a method, apparatus or storage medium instead of computer program, computer software, signal carrying program, computer program or software product, or the like.
A method shall be rejected patent protection if it includes steps running on a conventional computer system, processing non-technical data to automate a process without producing any technical effect other than ordinary interactions between a program and a computer or aiming to solve any technical problem.
However, if running on a computer, the computer program produces technical effects other than those ordinary interactions between a program and a computer, then the relevant method can be eligible for patent protection. Below are some examples of types of features of an invention related to computer programs that can be considered to produce technical contributions and technical effects other than those ordinary interactions between a program and a computer:
- Implementation of mathematical method, of which the input and output are related to a technical purpose and the result of the mathematical method directly (causally) affects the technical purpose (eg, a method is implemented by a computer to control a specific physical process by analysing the functional relationship between two parameters).
- Artificial intelligence and machine learning based on computational models and algorithms serving a technical purpose such as enhancing the accuracy of an estimated result, optimising or simplifying a specific process.
- Simulation, design or modelling, including the use of a specific formula based on technical considerations to determine specifications to obtain a specific technical purpose.
- Presentations of information related to content of information and the way the information presented credibly assisting the user in performing a technical task by means of a continued or a guided human–machine interaction process, the assistance to the user in performing the technical task is objectively, reliably and causally linked to the presentations of information.
- User interfaces including features defining user input (eg, features specifying a mechanism enabling user entering text, for example by providing a predictive input mechanism, making a selection or submitting a command).
Novelty of an invention, grace period and exception
The IP Law, amended in 2022, has extended the scope of the prior art used for assessing the novelty of an invention. Accordingly, the prior art shall include not only inventions publicly disclosed but also those disclosed in any other patent application that has an earlier filing date or priority date but is published on or after the filing date or priority date of the patent application for which the protection of the invention is being sought.
Additionally, under the latest amended provisions of the grace period and exception for novelty assessment, an invention is considered not to have lost novelty if it is filed in Vietnam within 12 months from the date on which:
- it is publicly disclosed by a person with the right to register the same or a person who directly or indirectly obtained the information about the invention from the person with the right to register the same; or
- it is disclosed in an application or a protection title for industrial property protection published by the VNIPO, but such publication is not compliant with the regulations or such application was filed by a person who does not have the right to register the invention.
For such a 12-month grace period to be applicable, the concerned date is the date on which the patent application is filed in Vietnam, not the priority date or international filing date (especially in the case of a Patent Cooperation Treaty application).
Patent opposition mechanism
In the latest amendment of the IP Law, a provision dedicated to the opposition proceeding was added, prescribing that an opposition to a patent application shall be filed within nine months of the publication date and before the date on which a protection title is granted.
This new provision is intended to minimise the cases of abuses of the right to oppose as well as reduce the delayed examination time, which has been a serious issue in practice. A third party’s opposing opinions, if not filed in accordance with the opposition mechanism, will only be considered as a reference during the substantive examination, to which the VNIPO shall not have any obligation to respond or inform the final result. Whereas, a duly filed opposition shall be dealt with in accordance with a compulsory procedure, at the end of which the final results of the opposition as well as the examination of the opposed patent application shall be informed in writing to the opponent.
Legal bases for patent opposition or refusal and cancellation
In the latest amendment of the IP Law, many new provisions were added, providing sufficient legal bases for refusal of a patent application (also for opposition) and cancellation of a patent protection title, as summarised in the below list:
- the filing of the application was not compliant with the security control regulations;
- if the invention is directly created based on genetic resources or traditional knowledge of genetic resources, the relevant patent application does not disclose or inaccurately discloses the origin of the genetic resources or traditional knowledge of genetic resources in the specification;
- the invention or the filing for registration of the invention is contrary to the state’s policy on intellectual property;
- the invention does not meet the requirements for patentability (typically, the invention is excluded from patent protection, lacks novelty, does not involve an inventive step or is not industrially applicable);
- the applicant does not have the legitimate right to register the invention;
- the patent application does not meet the requirements as to the first-to-file principle;
- the amendments or supplementation of the patent application has expanded the scope of the subject matter disclosed or stated in the application or resulted in a change of the nature of the subject matter as claimed;
- the scope of the claims exceeds the scope of disclosure of the initial specification of the application; or
- the invention is not fully and clearly disclosed in the specification to the extent that based on which it may be performed or realised by a person skilled in the art.
In the cases of (1) or (2), the patent protection title shall be cancelled in its entirety. Depending on the merits of each case, there might be certain differences in the application of the same legal basis for refusal in whole or in part of a patent application or cancellation in whole or in part of a patent protection title.
Some other important patent regulations
Security control of inventions
Even though confidential inventions and security control over inventions were first stipulated a long time ago in Decree 122/2010/NĐ-CP 2010, only until recently have the relevant provisions been added into the IP Law.
For the inventions created in Vietnam of which the right to register belongs to Vietnamese citizens who are permanently residents in the country or organisations established in accordance with the national regulations, the applicants should refer to the list of ‘the technical fields affecting national defence and security’, which are designated by the government. If the invention is related to this list, the applicant needs to consider filing a patent application in Vietnam so as to carry out the prescribed security control procedure before filing a patent application for that invention overseas.
Such regulations are especially important for foreign corporations to take into consideration in the cases where they intend to let their Vietnamese subsidiaries file patent applications abroad for the inventions created in Vietnam.
Using the substantive examination result of a foreign patent application
Under the new provisions of the IP Law, an applicant can request the VNIPO to accelerate the substantive examination of a patent application in Vietnam based on the examination of a corresponding foreign patent application that is issued by a Patent Office of a country within a list approved by the Ministry of Science and Technology. If the request is accepted, as stipulated, the VNIPO shall issue a notification on the substantive examination of the Vietnamese patent application within 12 months of the date of request. However, applicants still have to wait in the upcoming time until the regulation is applicable in practice.
Patent examination speed and the existing mechanisms for expediting examination
VNIPO’s patent examination speed
The Patent Examination Centre of the VNIPO consists of six specialised sections:
- electronics – telecommunication section;
- mechanical section;
- construction and transport section;
- medicine – pharmacy section;
- biology – agriculture section; and
- chemical technology – metallurgy section.
To date, the number of patent and utility solution applications received by the VNIPO has been continuously increasing every year, and the examination capability has also been improved, which can be seen through the number of patents granted in recent years. In the table below are the statistics of the number of applications received and patents granted over the years.
| Year | Number of applications | Number of patents |
|---|---|---|
| 1981–2017 | 66,724 | 19,799 |
| 2018–2023 | 51,848 | 22,281 |
Despite VNIPO’s tremendous efforts, due to its limited resources and many other reasons, the practical patent examination timeline has often exceeded the statutory time limit. In 2024, the VNIPO has made significant adjustments to speed up the application processing and reassign the examination workload, striving to shorten the substantive examination time to some extent closer to the prescribed time limit. Hopefully in the future, the entire timeline from filing through granting of patents will be reduced to about two-and-a-half to three years from the current average four to six years.
Existing mechanisms for expediting examination
Currently, the VNIPO is applying a number of mechanisms for expedited examination for the patent applications as follows.
| Programme | Implementation and practical results |
|---|---|
| The ASEAN Patent Examination Cooperation | It has not produced an effective result as originally expected because the examiners hesitate to use the examination results issued by ASEAN patent offices. Instead, they often regard the examination results issued by other advanced patent offices, typically USPTO, EPO, JPO, KIPO and CNIPA. |
| Patent Prosecution Highway (PPH) between the VNIPO and the JPO | The Japan–Vietnam PPH pilot programme has helped shorten the substantive examination time down to nine to 12 months. The annual quota under this programme is 200 requests. |
| PPH between the VNIPO and the KIPO | The Korea–Vietnam PPH pilot programme has helped shorten the substantive examination time down to nine to 12 months. The annual quota under this programme is 100 requests. |
| Collaborative Search and Examination Programme (CS&E) between the VNIPO and the IPOS | The Singapore–Vietnam pilot cooperation programme runs from 1 March 2023 to 28 February 2027. During this period, the two offices will receive and process a maximum of 20 CS&E requests per year for an initial duration of two years. |