Hanoi, Vietnam – On 16 June 2022, Law No. 07/2022/QH15 (the “Amended IP Law 2022“) amending and supplementing a number of articles of Intellectual Property Law of Vietnam No. 50/2005/QH11 dated 29 November 2005, which is amended by Law No. 36/2009/QH12 and Law No. 42/2019/QH14, (the “2005 IP Law“) was approved by the National Assembly. The Amended IP Law 2022 has taken effect from 1 January 2023. In the meantime, the regulations on protection of sound trademarks have come into force from 14 January 2022.
This is the third time the Intellectual Property Law of Vietnam has been amended and supplemented since it was first promulgated in 2005. Compared with the previous amendments in 2009 and 2019, this third amendment is considered to have a fairly wide scope, i.e. with more than 100 articles of the Law being amended and supplemented. However, it can be said that the amendments and supplements under the Amended IP Law 2022 mainly focus on the legalization of practices that have been applied by the Intellectual Property Office of Vietnam (IP Vietnam) and other relevant authorities.
We provide below some notable amendments in relation to patent matters under the Amended IP Law 2022 for your information.
Novelty of inventions
The 2005 IP Law generally provides for the novelty of inventions (Article 60.1). The Amended IP Law 2022 has concretized Article 60.1 to provide for the two cases where an invention is considered to have lost its novelty. Specifically, an invention is considered novel if it does not fall into one of the following cases:
- It is publicly disclosed by use or by means of a written description or any other form either inside or outside Vietnam before the filing date or the priority date, as applicable, of the patent application.
- It is disclosed in another patent application which has an earlier filing date or priority date but is published on or after the filing date or priority date of such application.”.
Opposition to a patent application
The 2005 IP Law provides a mechanism for a third party to give opinions to the Intellectual Property Office of Vietnam (IP Vietnam) on granting or not granting a patent to a patent application:
- The time limit is from the date the patent application is published in the Official Gazette of Industrial Property to the date of a decision to grant a patent.
- A document containing the third-party’s opinions is considered a source of reference information for the examination of a patent application.
The Amended IP Law 2022 has added a new mechanism to oppose the grant of patents for patent applications, specifically:
- The time limit for the opposition is nine (9) months from the date the patent application is published and before the date of a decision to grant a patent.
- The opposition must be made in writing, enclosed with documents or cited sources of information to prove the opposition, and fees must be paid.
- The order and procedures for handling the opposition will be detailed by the Minister of Science and Technology.
According to the current patent examination practice, IP Vietnam usually relies on the examination results of foreign patent offices for the corresponding patent application filed abroad as an important base to consider granting/rejecting the grant of a patent to a patent application filed in Vietnam. In order to legitimize this practice, the Amended IP Law 2022 has officially added Clause 3 to Article 114, which stipulates that during the substantive examination, IP Vietnam can use the results of substantive examination of a patent application which contains a subject matter identical with the claimed invention conducted by a foreign patent office during examination of patentability in Vietnam.
Invalidation of a patent
Compared with the 2005 IP Law, the Amended IP Law 2022 has amended and supplemented a number of provisions on invalidation of patents, namely:
Two cases where a patent is invalidated in whole:
- A patent application filed against the provision on security control.
- Applications for registration of inventions that are created directly based on genetic resources or traditional knowledge of genetic resources but do not disclose or incorrectly disclose the origin.
Six cases where a patent is invalidated in whole or in part:
- The applicant does not have the right to register the invention and is not assigned the right to register by a person who has the right to register.
- The invention does not meet the protection conditions in respect of novelty, inventive step and industrial applicability; or the invention is contrary to social ethics and public order, harmful to national defense and security.
- Amendments to a patent application widen the scope of the subject matters disclosed or stated in the application or change the nature of the subject matter claimed in the application.
- The invention has not been disclosed sufficiently and clearly to the extent based on which a person with average knowledge of the relevant art can carry out the invention.
- The scope of a patent granted to the invention extends beyond the scope disclosed in the original specification of the relevant patent application.
- The invention does not satisfy the first-to-file principle as provided for in Article 90 of the Amended IP Law 2022.
For further information on the Amended IP Law 2022, please do not hesitate to contact us.