Patent applications under the PCT Treaty | IPOV’s key functions and procedures

Individuals and organizations seeking patent protection in foreign jurisdictions were previously required to submit separate applications directly to each country in which they sought protection. Doing so was quite costly and time-consuming.

Vietnam’s ratification of the Patent Cooperation Treaty (PCT) in 1994 has greatly alleviated patent owners when applying for protection from foreign countries in Vietnam. As of 2021, 153 countries are party to the PCT.

1. Forms for submitting patent applications under the PCT Treaty in Vietnam

In Vietnam, the agency tasked with processing international patent applications is the Intellectual Property Office of Vietnam (IPOV) which is located in Ha Noi City. In addition, patent applications under the PCT can be submitted in person or by mail to IPOV Representative Offices in Ho Chi Minh City or Da Nang City.

Because Vietnam is a member of the PCT, PCT patent registration in Vietnam is divided into 03 procedures, including application to:

• patents of Vietnamese origin;
• patents that have selected Vietnam, and
• patents with Vietnam designation.

2. IPOV’s responsibilities

Based on the functions and duties of the IPOV, when receiving patent applications under the PCT Treaty, this authority will carry out:

• Receive all international applications;
• Collect the fee for dispatching international applications and notify applicants of the fees due to the International Bureau and the International Search Office under the PCT;
• Check whether all fees are timely paid;
• For patent applications that appoint Vietnam or select Vietnam, perform a formal appraisal of the application and check compliance with regulations.
• Particularly for patent applications of Vietnamese origin, identify patents for which protection is sought. If a patent is classified as a national secret, its application is discontinued. Any paid fees excluding the fees for sending and copying international applications are refunded to the applicant;
• Send a copy (file copy) of the international application originating in Vietnam to the International Bureau and another copy (search copy) to the International Search Office;
• Correspond by mail with applicants and the International Bureaus.

3. Some notes for the application process

International applications originating in Vietnam and filed to the National Office of Intellectual Property (‘NOIP’) must be written in English. Each application must be filed in 3 copies. For applications with insufficient copies, the IPOV will make additional copies. The applicant will bear the cost of any additional copies.

The designated international search offices and international preliminary examination offices are the patent, industrial property or intellectual property offices of Australia, Austria, the Russian Federation, Sweden, the Republic of Korea and the European Patent Office.[1]

If an international application designates Vietnam:

The IPOV or its representative offices are the designated offices. In order to enter the national phase, the applicant must submit a complete set of documents to IPOV. The complete set of documents must be submitted within 31 months from the priority date.

If an international application selects Vietnam:

The IPOV is the selected office if the selection of Vietnam is made:

• Within 22 months from the date of priority, or
• 03 months from the date the international search report is transmitted to the applicant, or
• Published by Article 17.2 (a) of the PCT Treaty or issues a formal opinion by Rule 43bis of the Regulations implementing the Treaty, whichever ends later.

To enter the national phase:

The applicant should within 31 months from the date of priority submit to the NOIP the sufficient dossier. International applications filed with the NOIP within 6 months after the expiration of the above-mentioned time limit may be accepted on the condition. Importantly, the applicants must pay the prescribed fees.

Notes: The applicants for the three above cases cannot apply directly but must go through a legal representative in Vietnam.

To be granted priority:

The applicant should reaffirm in the written declaration, and pay the fee for a priority claim. Furthermore, the applicant must submit the Vietnamese translations of necessary documents previously submitted to the International Bureau.

4. Conclusion

Thus, the procedure for filing a patent application under PCT in Vietnam is quite clear to access. Individuals and organizations can use their intellectual property representatives to directly apply for PCT patent registration in Vietnam or send it by post. Publicizing related procedures and fees is also a convenient point for accessing information.

With these advances, we hope that individuals and organizations will have more opportunities to protect their inventions. This significantly boosts creativity and drives the growth of Vietnam’s knowledge-based economy.