Filing A Patent Application: A Comparison Between Vietnam and the US

I. PATENTING AN INVENTION IN VIETNAM AND IN OTHER COUNTRIES UNDER THE PARIS CONVENTION OR UNDER THE PATENT COOPERATION TREATY

1. The Vietnamese application

The number of patent applications filed in Vietnam by Vietnamese inventors/companies is relatively low. There are several reasons. First, patenting an invention can be costly and complicated. Second, intellectual property protection/enforcement is relatively weak. This tends both to stifle creativity and to discourage investment in the protection of intellectual property.

More and more Vietnamese inventors and companies, however, do recognize the value of a patent. Despite its imperfections, a patent can provide deterrence against copying. Since an invention is protected only in the countries in which it is registered, an inventor/company should patent an invention in all countries in which it wishes to market or rely on its invention.

We begin with a discussion of how a Vietnamese inventor protects her invention in Vietnam, and will continue with how that Vietnamese inventor can use her Vietnam filing to obtain coverage in other countries, including in the US.

Should an inventor seek patent protection in Vietnam? If she does not want to patent her invention, she can keep her invention as a trade secret. A trade secret is a form of protection provided by statute. There is no formal or documented protection. The owner of a trade secret (which includes a patent) is protected from its direct or indirect theft. However, if a third party, through its own ingenuity (ie, not through, say, theft of the trade secret) independently discovers the secret and uses it, that third party is not considered to have infringed the rights of the trade secret owner so the owner has no right to enforce her trade secret. Likewise a trade secret owner who inadvertently discloses a secret has lost her right to enforce it.

To patent an invention, a formal application must be made. 

What can be patented in Vietnam? Several elements must be present. An eligible invention is a technical solution that has: i) worldwide novelty (ie, it is new), ii) inventive steps (ie, it is creative, and iii) industrial applicability (ie, the invention is practical, useful, etc). An invention can be a new device, a new process/method, a new substance, or a new biological material. An invention can include a new application of a previously known device, process/method, or substance. A patent application in Vietnam must be filed with Vietnam’s National Office of Intellectual Property.

An applicant may choose to conduct a search to determine whether the same or a similar invention has already been patented or is being considered. Since an invention must have worldwide novelty, the search must be conducted worldwide. This search is optional and is not compulsory. It is for reference only and to give an applicant an idea whether or not to file an application to patent her invention. If an applicant learns that the same or a similar invention has been patented in or out of Vietnam, she may decide not to apply, thereby saving the cost of filing, or she may change the invention to try to avoid the conflict. If no such search is conducted, the applicant risks a later determination that her invention lacks worldwide novelty. In such a case, the application will be rejected and filing fees and much time will be lost. We will see that conducting a search one’s self will save time later in the process.

It is advisable that these searches should be performed by a professional. That is because a patent search is too complex and specific for an applicant to conduct without patent knowledge.

a) Processing a patent application by the NOIP

The NOIP first examines a patent application as to “form”. That is, the NOIP will confirm that the application contains all required documents. It takes about two months and is a routine examination.

Generally, the dossier for a patent application includes:

 Government form in which the applicant provides her name, address, title of invention, etc;

 description of the invention including specifications, abstract, claims and drawings; it is in the Vietnamese language and must be prepared in a required technical form.

If, as is usual, the application is filed by a registered IP agent, then a Power of Attorney is also required.

If the form of the application is sufficient, it will be accepted as to form. If not, the applicant is given two months to supplement the application.

After being accepted as to form, the NOIP will not automatically examine the Vietnamese application as to “substance”. The applicant will have 42 months (from the date on which the patent application was filed) to ask the NOIP to examine the application as to substance. Generally, the purpose of the 42-month period is to give the inventor time to decide in which other countries, if any, she should also file and to prepare for filing those applications. This 42-month period is discussed further in the next section on filing a patent application abroad through the PCT.

If the applicant wishes only to pursue patent protection in Vietnam, however, she may wish to request examination immediately.

After receiving a request from the inventor, the NOIP will examine the application as to substance. In its examination, the NOIP will judge whether the invention has: i) worldwide novelty, ii) inventive steps, and iii) industrial applicability. In other words, is it patentable? To accomplish this, the NOIP performs its own patent search of existing patents and prior patent applications in Vietnam, since the application has only been filed in Vietnam at this point.

The search conducted by the NOIP is official. The results of the official search conducted by the NOIP may differ from the optional search conducted by the applicant (as suggested above). However, regardless whether or not the results are the same, the search by the NOIP will prevail. The NOIP will decide whether or not to patent the invention based only on its official search.

The invention must meet all three criteria. If the NOIP decides that it does not, the applicant has two months to comply or to present arguments designed to reverse the NOIP’s decision.

It takes about four years from the date the applicant files a substantive examination request, for a qualified invention to be granted a Patent for Invention.

b) Validity of a patent

A patent is effective on the date the Patent for Invention is granted. The period of validity, 20 years, is counted from the original filing date and is not renewable. Why can’t a patent be renewed? The Government provides this protection in order to encourage people to be creative and innovative. The Government considers 20 years of exclusive exploitation to be an adequate reward or incentive for inventiveness. Thus, it is reasoned that the idea should belong to the public after 20 years. During the period of validity, the owner must pay an annuity in order to maintain the validity of the patent.

If, however, the inventor chooses not to patent her invention and instead keeps it as a trade secret, the protection is indefinite. Protection under trade secret laws can last as long as the owner can keep the secret, but the inventor has the burden of ensuring protection. If the trade secret is well kept, the protection can last more than 20 years.

In Vietnam, actual use of a patented invention is compulsory. If not used in Vietnam, the patent can become void.

An invention patented in Vietnam is valid only in Vietnam. Vietnamese patent rights do not extend to other countries. If, for example, someone uses/copies an invention patented in Vietnam, in a different country, there is no basis for the Vietnamese patent holder to enforce her patent rights in the other country. If the inventor wants to patent her invention only in Vietnam, the process concludes when the NOIP grants a Patent for Invention.

In order to protect an invention abroad, the inventor must file applications to patent the invention in other countries. There are two alternatives--the Paris Convention or the Patent Cooperation Treaty system. Regardless of the route she chooses, an inventor must first file an application with the NOIP in Vietnam as discussed above. Only then may she file applications in other countries under the Paris Convention or Patent Cooperation Treaty system. However, she must file these applications prior to issuance of a Patent for Invention by Vietnam’s NOIP. Once a patent is issued in Vietnam, the invention loses its novelty, and she will no longer be able to file applications in any other country.

As indicated above, an inventor who wants to file both in Vietnam and abroad has two options.

2. Filing an application abroad under the Paris Convention

176 countries belong to the Paris Convention. The United States became a member in 1887. Vietnam has been a member since 1949. In order for an inventor to file under the Paris Convention format, the inventor must file applications in each desired country (which must also be a Paris Convention member) within one year of the filing date of the Vietnamese application with the NOIP (as discussed in “The Vietnamese application” above).

Despite the time constraint, the Paris Convention provides an advantage. If applications are filed in Paris Convention member countries within the one-year period, those applications will enjoy convention priority as from the date of the Vietnamese application. That is, although an application in a Paris Convention country is filed after the filing of the Vietnamese application, its filing date is considered the same as the filing date of the Vietnamese application. In such a case, applications filed in Paris Convention countries will take precedence over any application filed in those countries after the Vietnamese application was filed.

a) Processing a patent application under the Paris Convention

Processing patent applications via the Paris Convention is generally the same in most countries including Vietnam. First, the application is examined as to form by each country selected. If the application is sufficient, it will be accepted as to form. If not, the applicant is given two months to supplement the application.

In several countries (not including the US), after acceptance as to form, the patent office, in Vietnam for example, will not automatically examine the application as to substance. In those countries, the time period within which the applicant must file a request for examination as to substance, will vary. In Vietnam, that timeframe is 42 months from the date on which the Vietnamese application was filed with the NOIP.

After receiving a request from the inventor, the patent office in each country will commence examination as to substance. Each country will apply its own regulations to judge whether the invention has, generally: i) worldwide novelty, ii) inventive steps, and iii) industrial applicability.

The time it takes to examine an application as to substance varies in each country. However, it generally takes 3-4 years, counting from the date the application was filed in that country, for a Patent for Invention to be granted.

In each country, a patent is effective on the date the Patent for Invention is granted and is valid for 20 years. The period of validity is counted from the date on which the patent application was filed in that country. To maintain the validity of a patent, the patent owner must pay annuities.

In most countries, actual use of a patented invention is compulsory. If not used, the patent can become void.

3. Filing an application under the Patent Cooperation Treaty system

Filing through the PCT system is a bit more complex than filing through the Paris Convention system. However, this system gives the applicant much more time to file in other desired countries. See the comparison between the PCT and the Paris Convention in the next section.

There are 151 states that have become members of the Patent Cooperation Treaty. The United States became a member in 1978. Vietnam became a member in 1993. Although each system works separately and independently, a country can be a member of both the Patent Cooperation Treaty and the Paris Convention. If a desired country is a member of both, the applicant can file under either, based on her preferences.

To file under the PCT system, the Vietnamese inventor must first file with the NOIP a Patent Cooperation Treaty application within one year of the filing date of the Vietnamese application. The dossier for a PCT application includes:

 Vietnamese government application forms;

 the same description of the invention as in the Vietnamese application including specifications, abstract, claims and drawings in English.

When the PCT application, which has been filed with the NOIP, is in order, the NOIP will send it to the World Intellectual Property Organization1 for publication.

In the PCT application, all Patent Cooperation Treaty contracting states are automatically designated. Among those designated countries, the inventor will then select the countries where she wants to patent her invention and file one application with the intellectual property office in each such country. The act of filing in each country is referred to as “entering the national phase” (“National Phase Application”). For example, the National Phase Application that will be filed in the US is call “the US national phase application”.

Depending on the country, an applicant has 30 or 31 months from the filing date of the original Vietnamese application to file her application. Most countries require such an application to be filed by a professional.

Similar to procedures under the Paris Convention, after receiving the application, the patent office in each selected country examines it as to form. When the application is in order, the patent office will examine the application as to substance. In several countries, the applicant must file a request to ask the patent office to examine the application as to substance.. Similar to the Paris Convention, in Vietnam, the applicant has 42 months from the filing date of the Vietnamese application (which was filed with the NOIP as discussed in Section I.1--The Vietnamese application), to file a “substantive” examination request.

In Vietnam, for example, the 42-month period gives the inventor: i) time to decide in which countries to file a National Phase Application and ii) time to decide in which countries to file a request for substantive examination. For example, if she files a National Phase Application in ten countries, but only files substantive examination requests in seven countries, she will pay fees for a substantive examination in only those seven countries.

Although the inventor in Vietnam has 42 months, she need not wait. Rather, she can file a National Phase Application and substantive examination request at any time within the 42 month window.

In the PCT system (as in the Paris Convention system), the patent office in each selected country, after receiving the request, will examine the application as to substance. If the invention meets all requirements, a separate Patent for Invention will be granted by each country.

The validity of a patent under the Patent Cooperation Treaty is essentially the same as under the Paris Convention. There is, however, one major difference. Under the PCT system, the patent is valid for 20 years counting from the filing date of the PCT application, not from the filing date of the Vietnamese application. To maintain the validity of a patent, the inventor must pay annuities. Again, an invention patented in one country is valid only in that country, and a patent owner has no patent rights in countries where she has not patented her invention. In addition, and again, it is a general rule in most countries that the use of the patented invention is compulsory. If not used in a particular country, the patent can become void in that country.

4. Comparison between the Paris Convention and the PCT system

(In all countries, regardless of whether they are under the Paris Convention or the Patent Cooperation Treaty or in Vietnam, the substantive examination process is the same and includes official searches for prior applications and patents in that country).

II. PATENTING AN INVENTION IN THE US AND ABROAD UNDER THE PCT SYSTEM

This section discusses how a US inventor can patent her invention in the US, and also in other countries through the PCT system. The purpose of this section is to compare the differences between filing with the NOIP in Vietnam by a Vietnamese inventor, and filing with the United States Patent and Trademark Office in the US by a US inventor.

The procedures and regulations regarding a patent application in the US are outlined in the Manual of Patent Examination Procedures (“MPEP”) and the process is governed by the United States Code (“U.S.C.”) and United States Code of Federal Regulations (“C.F.R.”). Under 35 U.S.C. §101, inventions that may enjoy US patent protection, fall under four main categories:

 processes

 machines

 manufactures

 composition of matter

The main categories of exclusion from patent protection include: natural laws, physical phenomenon, and abstract ideas. These are commonly referred to as “judicial exceptions,” based on case law in the US Vietnamese patent law, by contrast, does not include any explicit analogous exceptions.

In addition to falling within the above-specified categories, an invention must have utility2, novelty3, and non-obviousness4 in order to be patentable in the US.

1. How to file a patent application with the USPTO in the US

All US patent applications are filed with and examined by the USPTO. In contrast to the Vietnamese system, there are two categories of applications:

 provisional: this patent application has a duration of only one year and provides the applicant no practical protection. Its true purpose is to make an early filing date if a non-provisional application cannot be filed immediately.

 non-provisional: This category is further divided into 3 subcategories (utility, design, and plant patent applications). This is the type of application that people commonly think of as a patent application.

Since utility applications are the most commonly filed type of application, we have limited our discussion to utility applications. Utility applications usually cover all patentable inventions other than new plant varieties or designs.

A patent application in the US must have the following components:

 specification (in other words--description): this must include various sections, such as an abstract, detailed description of the invention, brief description of the drawings, claims (all non-provisional utility applications must have at least one claim), etc.;

 declaration/oath;

 drawings;

 filing and other fees.

Other documents, such as a power of attorney (“POA”), information disclosure statement (“IDS”), tables, etc, may also be required.

While the general components are similar to those required for filing in Vietnam, there are some differences in the specific requirements that govern these documents, such as format. (Thus, it is important to understand the intricacies of the patent application requirements before filing in either the US or Vietnam.) These are issues that patent professionals understand well and are a critical part of the services provided.

Once the USPTO receives a proper application, a filing date and number will be issued. An application must contain at least the specification (or description) and necessary drawings in order to receive a filing date. The declaration/oath, fees, claims, and other documents can be submitted at a later time. If an incomplete application is received, the USPTO will issue a Notice of Incomplete Application specifying a time period within which the applicant must submit the remaining documents.

Once an application is complete, it will be placed in the queue for examination and will be assigned a patent examiner. From there, a patent application will receive some form of first official action on the merits (ie, an Office Action or Allowance).

An Office Action is a notification that there is a problem with the patent application. This can be anything from anticipation of one or more claims by a prior art-reference (or in other words, prior applied/patented invention) (ie, the invention lacks novelty9) or the examiner’s belief that more than one invention is being claimed in a single application (restriction requirement). Obviousness10, however, is currently most commonly used to reject claims. Upon receipt of an Office Action, the applicant must respond within the period of time stated on the Office Action (usually 6 months: 3 months free of charge followed by another 3 months with payment of a fee). The first Office Action is usually non-final. However, if the problem remains unresolved, a final Office Action will be issued. This requires the applicant to resolve the problem in her response or to appeal. Alternatively, the applicant can file a Request for Continued Examination (“RCE”) if accompanied by the proper fee.

If there are no problems with the application, the applicant will be issued a Notice of Allowance. This means that the application has been accepted and is pending issuance of a patent. Upon the payment of various issuing fees, the applicant will receive a patent. Due to the individualized nature of the process, there is no set time for examination of an application. However, the term of validity of a non-provisional utility patent is 20 years from the filing date of the application, similar to a Patent for Invention granted in Vietnam.

In contrast to the Vietnamese patent system, actual use is not required in order to maintain the validity of a US patent. Rather, the only US requirement is the payment of maintenance fees according to the following schedule: 3.5, 7.5, and 11.5 years from issuance of the patent.

2. Filing a PCT application with the USPTO

If a US inventor wants to patent her invention in other countries through the PCT system, as long as at least one of the inventors is a resident or national of the US, she can go straight ahead and file a PCT application with the USPTO as the Receiving Office. Unlike the situation in Vietnam, she is not required to file an application with the USPTO first. In Vietnam, a Vietnamese inventor must file an application with the NOIP first, and then file a PCT application, also with the NOIP.

If the inventor wants to file a domestic US application first, she must file the PCT application within 12 months of the filing date of the US application if she wishes to claim priority to the domestic US application.

For all inventions conceived in the US, the applicant must obtain a foreign filing license in order to apply for a patent application outside of the US. However, the USPTO generally construes any previously filed US application or PCT application to contain an implicit/automatic request for such a license. It may, however, take some time for this license to be granted.

Once the PCT application is filed, there is no need to file a request for examination, as in Vietnam. Rather, the applicant has 30 months (from the earliest claimed priority date) to enter the national phase. The procedures for further examination of the application are the same as described above for PCT applications filed in Vietnam.

III. A CONCLUDING COMPARISON

While this article seeks to simplify the patent application process, it is in practice a very tedious and costly procedure no matter in which country the applicant chooses to file. This makes the decision whether or not to patent an invention and, if so, in which countries, of the utmost importance. While an inventor may initially consider filing for patent protection domestically in Vietnam, she should consider some factors that may make it more valuable to file for protection in the US. (or elsewhere abroad) instead of (or in addition to) filing in Vietnam.

For example, while a legal patent protection framework exists in Vietnam, enforcement issues make practical protection of inventions unlikely. Vietnamese courts are largely unequipped to handle patent infringement suits, which could leave an inventor without any forum to pursue enforcement of her patent rights. The US, in contrast, provides strong protection and enforcement of patent law. With an amassed depth of case law, there are forums much better suited and prepared to enforce patent law in the US than in Vietnam.

This, in addition, leads to transparency considerations in dealing with patent law. With much less development, Vietnamese patent law may be more opaque and less practiced, making it difficult for counsel or applicants to work with the law in writing a patent application. With a much more developed body of patent law, the US provides more transparency in its patent laws and guidance with respect to interpretation. This may allow patent prosecutors in the US. to write patents that provide much more comprehensive protection.

Finally, the inventor should consider the market she seeks to target. Even when filing a PCT application, an applicant must pay fees for filing for and obtaining patent protection in each desired country. Thus, it could be costly and inefficient to obtain patent protection in a country in which the applicant does not wish to market the invention. In addition, most countries require actual use of a patent in that country to retain validity of the patent.

However, if an inventor wishes to obtain patent protection in more than one country (including the US and/or Vietnam), filing a PCT application and following through with the procedures for each selected country is by far the most efficient course of action compared to following the Paris Convention. As shown earlier in the comparison chart, the PCT system will permit an applicant more time--31 (or 30 in the US) vs 12 months--to decide in which countries she will file a so-called National Phase Application.