The 2022 Amended IP Law: New changes to patent law in Vietnam
On June 16, 2022 Vietnam’s National Assembly adopted the Amended Intellectual Property Law (“IP Law”). The law will take effect as of January 1st, 2023.
This is the third time the IP Law is amended since its adoption in 2005. Compared with the amendments of 2009 and 2019, the IP Law undergoes this time a more comprehensive revision with over 100 articles amended and/or supplemented, but to a large extent, it has just codified existing practices currently employed by VNIPO and/or other competent authorities.
With respect to patent, below are noteworthy changes:
One of the most important changes in patent examination process is the supplement of Article 112a. on opposition procedure. According to it, opposition against a patent application must be filed within 9 months from its publication date and before the issuing date of a decision on patent grant.
We are now waiting for a Guidance detailing implementation of opposition procedure which must be issued by the Minister of Science and Technology. It is expected to be a more formal procedure compared with the current “third-party observation” procedure (with more detailed regulation on opposer’s obligation to pay fees, VNIPO’s obligation to respond etc…).
Also of note, the amended 2022 IP Law maintains the third party’s observation procedure which allows any third party to file opposing opinion during the whole period from the publication date till prior to the date of issuance of a decision on patent grant (a rather informal procedure, i.e. no fee to be paid and no obligation for VNIPO to respond etc…).
Moreover, the amended 2022 IP Law expressly specifies that third-party opinion shall only be considered as a reference source of information in the process of examination of patent application.
More grounds for refusal of patent application:
Article 117 on refusal to grant industrial property titles is amended and supplemented to expressly include more grounds for refusal of patent application. Accordingly, they include:
Those already found in the 2019 IP Law including:
(i) The subject matter does not fully satisfy protection conditions;
(ii) The applicant does not have the right to register the invention;
(iii) The patent application does not meet the first-to-file principle; and
(iv) The application fails to get consensus of all applicants; and
Those newly supplemented to the 2022 IP Law including:
(i) Where amendments and supplements to a patent application go beyond the scope of the subject matters disclosed or mentioned in the application or change in nature of the claimed subject matters;
(ii) Where the claimed invention exceeds the scope of disclosure of the original specification of the patent application;
(iii) Where the invention is not fully and clearly disclosed to the extent that a person of average skill in the related art can implement the invention;
(iv) Where the invention is directly created based on genetic resources or traditional knowledge of genetic resources, the origin of which is not disclosed or incorrectly disclosed in the application for registration; and
(v) Where a patent application has been filed in violation of regulations on security control before filing for protection overseas.
Use of substantive examination results of foreign patent offices:
Under a current practice of patent examination, VNIPO usually relies on examination results of a foreign patent office with regard to the corresponding patent application filed abroad to determine whether or not to grant a patent title. The amended 2022 IP Law has codified this existing practice by supplementing Clause 3 to Article 114 which provides that VNIPO, in the process of assessing patentability of a patent application filed in Vietnam, may use the results of substantive examination of the corresponding patent application conducted by a foreign patent office.
Extension of prior art for assessment of novelty:
Under the old 2019 IP Law, assessment of novelty of a patent application is based only on publications occurring before its filing date (or priority date in case priority is claimed). The new amended 2022 IP Law has extended the scope of prior art by amending Clause 1, Article 60. Accordingly, an invention shall also not be considered novel if it is disclosed in another patent application with an earlier filing date (or priority date), but published on or after the filing date or priority date of that application.
Security control of inventions before filing abroad
The amended 2022 IP Law includes for the first time provisions on secret inventions (which were previously provided for only in under-law documents, namely Decree 103/2006/ND-CP, amended by Decree 122/2010/ND-CP).
Specifically, the new 2022 IP Law defines secret invention as « an invention that a competent state authority determines to be a state secret according to the law on protection of state secrets”.
For an invention that belongs to technical fields that affect national security or defense, created in Vietnam by Vietnamese individual or organization, a patent application may be filed in a foreign country only if a patent application has been filed in Vietnam for security control. Patent application filed contrary to this provision shall be deemed invalid as to form. The Government shall have to issue regulations detailing implementation of this procedure.
Document required for registration of invention directly created based on genetic resources or traditional knowledge associated with genetic resources:
For inventions directly created based on genetic resources or traditional knowledge of genetic resources, applicant is required to provide documents containing explanation about the origin of genetic resources or traditional knowledge of genetic resources pertained in the patent application.
The new 2022 IP Law also provides that organizations and individuals who are assigned to manage genetic resources and provide genetic resources and traditional knowledge associated with genetic resources under contracts for accessing genetic resources and sharing benefits, unless otherwise agreed between parties, shall have the right to register invention.
No fee refund in case of withdrawal of patent application:
According to the old 2019 IP Law, in case patent application is withdrawn, fees already paid for procedures which have not yet been carried out shall be refunded upon applicant’s request. This provision has been deleted from the amended 2022 IP Law. Accordingly, it is expected that no refund will be made in case of withdrawal under the new IP Law.
More grounds for invalidation of granted patent:
Article 96 of the old 2019 IP Law provides for only two grounds for invalidation of patents, namely:
(i) The applicant neither has right to register the invention nor being assigned such right; or
(ii) The subject matter does not satisfy protection conditions at the moment of grant.
The amended 2022 IP Law has codified a number of new grounds for invalidation of a granted patent, including:
(i) where a patent application has been filed in violation of regulations on security control before filing for protection overseas;
(ii) Where the invention is directly created based on genetic resources or traditional knowledge of genetic resources, the origin of which is not disclosed or incorrectly disclosed in the application for registration;
(iii) Where amendments and supplements to a patent application go beyond the scope of the subject matters having already been disclosed or mentioned in the application or change in nature of the claimed subject matters;
(iv) Where the invention is not fully and clearly disclosed to the extent that a person of average skill in the related art can implement the invention;
(v) Where the patented invention goes beyond the scope of disclosure of the original specification of the patent application; and
(vi) Where the patent application does not meet the first-to-file principle.
Also, the amended Article 96 clearly states that if a patent is invalidated, the validity of the patent is null from the date of granting the patent.
According to Clause 4, Article 201 of the old 2019 IP Law, IPR enforcement competent authorities (including courts and administrative authorities) have the right to ask for expert’s opinion while handling cases or matters they have accepted.
In practice, due to the lack of knowledge and experience in the field of intellectual property, handling authorities often rely on conclusion of IPR infringement issued by Vietnam Intellectual Property Research Institute (VIPRI) under Ministry of Science and Technology. Clause 5, Article 201 is amended to state that expert’s opinion shall not provide conclusion on infringement or conclusion on dispute, and shall be only one source (among others) of evidence supporting authorities in handling and resolving IPR infringement cases.
Compensation for patent owner due to delay in granting free sale certificate for pharmaceutical product:
The new Article 131a is supplemented to the amended 2022 IP Law to be in line with Vietnam’s commitments under its Free Trade Agreement with European Union (“EVFTA”). According to it, patent holder is not required to pay fee to use the protection title for the period of delay in the procedure for obtaining free sale certificate.
Right to register inventions created under assignment financed by the State:
Under the amended 2022 IP Law, the right to register an invention being result of science and technological task assignment financed totally by the State shall automatically belong to the organization in charge of the assignment, except for inventions in the field of state security and defense.
In addition, the 2022 IP Law provides for cases where the State transfers the right to register inventions being result of state-funded assignment to other organizations and individuals, and cases where the State allows other organizations and individuals to use such invention without authorisation of the holder of the exclusive right. Patent right for invention being result of state-funded assignment can be assigned only to organization established under Vietnamese laws or Vietnamese citizen residing in Vietnam.
The 2022 IP Law also specifies obligations of organization in charge of assignment, obligation to pay remuneration to inventors in case of invention being result of state-funded scientific and technological task assignment.
New ground for compulsory licensing (pharmaceutical):
The 2022 IP Law provides for additional ground for patent compulsory licensing, namely “the use of an invention to meet the demand for pharmaceuticals for diseases prevention and treatment of other countries that are eligible for import under international treaties to which the Socialist Republic of Vietnam is a member.”
It also provides for an exemption from compensation obligation upon compulsory transfer of invention, according to which, licensee does not have to pay the patent holder a compensation “in case the right to use an invention is transferred under a compulsory decision to import pharmaceuticals under the mechanism of an international treaty to which the Socialist Republic of Vietnam is a member and the compensation for the use of the invention transferred under a compulsory decision has been paid in the exporting country”.