As technology increasingly develops, patents and scientific research products are gradually launched and announced for many different purposes, including human development. The products created are one of the intellectual property assets, and registration for protection is essential to protect their intellectual property rights. However, not all technical products/processes can be registered for protection as patents. A technical product/process must meet legal conditions as well as follow a certain appraisal process to be registered for protection as a patent. This article will clarify the certain processes that an individual/business must follow when registering for a patent.
1. Basic conditions of patent
The patent is a technical solution in the form of a product or process that solves a specific problem by applying natural rules.
A product/process can be registered for patent protection when it meets the following conditions:
i. Condition 1: Does not infringe upon public interests, state interests, is not contrary to social ethics, public order, or is harmful to national defense and security;
ii. Condition 2: The patent does not fall into one of the categories that are not protected under the name of patent;
iii. Condition 3: The patent must satisfy the criteria of novelty;
iv. Condition 4: The patent must have a creative level;
v. Condition 5: The patent must be capable of industrial application.
2. Patent appraisal process
The patent appraisal process is almost similar to other industrial property rights such as trademarks and industrial designs with two main steps: (i) formal appraisal and (ii) content appraisal. However, the process will also have certain differences that the applicant needs to pay attention to in order to follow the legal procedures.
2.1 Formality appraisal
The formality appraisal process is the primary step for the National Office of Intellectual Property to conduct preliminary checks on patent applications to check compliance with the regulations on application form. A patent application shall comply with the requirements specified in Article 14 of Circular 23/2023/TT-BKHCN. Along with that, the documents to register patent including:
- Patent application form;
- Description (including description, protection claim and drawings (if any));
- Summary;
- Power of attorney (in case of filing application through a representative);
- Documents proving the right to register, if the applicant enjoys that right from another person;
- Documents proving the right of priority, if priority is claimed;
- Documents for payment of fees and charges.
The National Office of Intellectual Property will examine the patent application in turn based on the following categories:
- Checking the list of documents in the patent application;
- Checking the compliance with the regulations on the time limit of the documents in the patent application;
- Checking the compliance with the regulations on the form of the documents in the patent application.
The time to conduct the formality appraisal process will be 01 month from the date of application submission. After the prescribed time limit, the National Office of Intellectual Property will issue a notice based on the examination results:
- In case the application meets the requirements, the National Office of Intellectual Property will issue a Decision on acceptance of the valid application and publish the application;
- In case the application does not meet the requirements, the National Office of Intellectual Property will issue a Notice of intended refusal and request the applicant/industrial property representative to make amendments/supplements as required within the prescribed time limit of 02 months from the date of issuance of the notice. In case the applicant does not have any response within the above time limit, the National Office of Intellectual Property will decide to refuse to accept the application.
2.2 Patent application publication
The patent application shall be published for the purpose of enabling third parties to oppose the application and for the applicant to monitor the progress of the application. The publication period of the patent application shall be as follow:
- The patent application shall be published in the nineteenth month from the priority date or the filing date, if the application has no priority date;
- A patent application with a request for early publication shall be published within 02 months from the date the National Office of Intellectual Property receives the request for early publication or from the date of acceptance of the valid application, whichever is later.
2.3 Content appraisal
The final and most important procedure in the patent registration process is the substantive examination step. Unlike the trademark and industrial design registration procedures, the National Office of Intellectual Property will not actively examine the content of the patent application after completing the formal examination procedure. Instead, the applicant or the industrial property representative must submit a request for substantive examination to the National Office of Intellectual Property within the prescribed time period. Specifically, within 42 months from the filing date or from the priority date in case the application enjoys priority, the patent applicant may request the National Office of Intellectual Property to examine the content of the application on the condition that the application substantive examination fee is paid.
The National Office of Intellectual Property will appraise the content of the registration application in the following order:
- Evaluate the compatibility of the subject matter stated in the application with the type of protection title requested to be granted;
- Evaluating the subject matter according to each protection condition;
- Checking the first-to-file principle.
The technical solution contents to be evaluated include:
- Determining whether the subject stated in the application is a technical solution or not by considering the set of technical signs of the subject requested for protection stated in each point of the protection request to provide a technical method and/or technical means to solve the identified task to achieve the purpose set by the patent or not.
- Determining whether the subject stated in the application is a product or a process according to the technical signs stated in each point of the protection request.
- Determining whether the subject stated in the application is contrary to social ethics, public order, harmful to national defense and security, that is, it is an object that is not protected by the State or is an object that is not protected under the name of an patent in cases where for some reason this issue cannot be concluded during the formal appraisal process.
Once the above contents have been appraised and meet the prescribed conditions, the application will be approved and the Intellectual Property Office will issue a Notice of Intent to Grant a Protection Certificate. The patent will be officially protected from the time the patent is granted a Protection Certificate.
Author: NGUYEN PHAN NGOC NHI
Disclaimers:
This article is for general information purposes only and is not intended to provide any legal advice for any particular case. The legal provisions referenced in the content are in effect at the time of publication but may have expired at the time you read the content. We therefore advise that you always consult a professional consultant before applying any content.
For issues related to the content or intellectual property rights of the article, please email cs@apolatlegal.vn.
Apolat Legal is a law firm in Vietnam with experience and capacity to provide consulting services related toIntellectual Property Rightsand contact our team of lawyers in Vietnam via email info@apolatlegal.com.
