Circular 16 makes extensive changes to the IP System in Vietnam: Patents

On 15 January 2018, the long-awaited Circular No. 16/2016/TT-BKHCN ("Circular 16") revising Circular No. 01/2017/TT-BKHCN (”Circular 01”), one of the core regulations in the Vietnam IP system, took effect with extensive changes made to the rights establishment procedures and related matters before the National Office of Intellectual Property of Vietnam (“NOIP”).

In short, there are 49 points being revised out of total 67 points of the Circular 01, focused on patent and trade mark applications examination.

This article will first focus on key changes for PATENTS.

1. Time limit for entering Vietnamese national phase of PCT applications

Time limit for entering Vietnamese national phase of PCT applications is 31 months from the earliest priority date.

Under the old Circular 01, there was a grace period of six (6) months accepted for a late entry of PCT applications in Vietnam, subject to an extra fee. This provision has been removed from the Circular 16. That said, for now the 31-month deadline is to be strictly applied without any grace period and therefore all PCT applications entering Vietnamese national phase need to meet this deadline.

2. Deadline for requesting substantive examination

The deadlines for submitting a request for substantive examination for a patent application and utility solution application are 42 months and 36 months from the earliest priority date (or the filing date, if no priority claimed), respectively. Under the old Circular 01, these deadlines could be extended by six (6) months at most, if the applicant submits a justifiable reason and a proper fee.

According to Circular 16, this 6-month extension applies only in the event of “Force Majeure Events” or “Objective Obstacles”, which are not common. In addition, the applicant is required to submit evidence of this event/obstacle.

Please refer to Item 4 below for further details of regulations on Force Majeure Events and Objective Obstacles. In the meantime, we suggest applicants strictly follow the 42- or 36-month deadline to avoid the risk that the NOIP may refuse Force Majeure Events or Objective Obstacles excuses.

3. Force Majeure Events and Objective Obstacles

Circular 16 provides that the duration of Force Majeure Events and/or Objective Obstacles will be excluded from running of statutory time limit. To enjoy this exclusion, the IP owners must submit a request accompanied with reasonable and justifiable evidences.

Back in 2011 and 2016, without such provision in Circular 01, the NOIP issued single Official Notices (no. 8332/TB-SHTT and 3755/TB-SHTT) to exclude the duration of natural disasters respectively happened in these two years for Thai and Japanese applicants with a reference to the Civil Code by recognizing these events as Objective Obstacles, but not as Force Majeure Events. Also in this Notice, the NOIP required the applicants to submit a confirmatory letter issued by competent authority to enjoy such duration exclusion.

Circular 16 provides definitions on Force Majeure Events and Objective Obstacles without reference to the Civil Code causing a question on how the NOIP will apply this regulation in practice to evaluate and conclude whether or not an event is Force Majeure Events/Objective Obstacles and/or what kind of documents are acceptable.

4. Annuity Payment

Circular 16 clearly states that a power of attorney is required for filing an annuity payment, if it is made through an IP agent. This requirement was not stated in the old Circular 01 and in the past, an IP agent could file annuity payment with an instruction letter from the patent owner, instead of a POA.

5. Regulation for Abstract

Circular 01 required an abstract not to exceed 150 Vietnamese words otherwise a notice of shortcomings would be issued, which is quite rigid. To clarify this section in Circular 16, the 150 word limit becomes advisory, which is more flexible. However, an abstract comprising all specific drawings/formulas (if any) is only to be presented within an A4 half-page.

6. Refusal of “Use” claim

Circular 16 has supplemented the regulations with respect to essential features of technical solution, according to which it asserted that function/purpose of a claimed subject matter is not considered essential technical feature. In other words, “use” claim is not accepted to be patentable in Vietnam. This is an unfavorable point for applicants, especially for the ones owning inventions in the pharmaceutical field.

7. Specification Amendments

Under the old Circular 01, the amendment relating to a patent specification could only be accepted provided that all amendment contents are within the protection scope disclosed in the “description” of original application. According to the new Circular 16, “description” is replaced by “specification” which includes description, claims and drawings. This means that the support for amendments can be based on the original claims.

In summary, the Circular 16 will definitely impact the practice of IP laws, particularly rights establishment procedures due to the above changes. Although there are still underlying issues that are unclear and controversial in the revisions, Circular 16 indeed shows that IP practitioners’ feedback over the years have been received and taken into consideration. Circular 16 upgrades Vietnam’s IP law and practice one step closer to the international standard, however, it also put more pressure on IP agents and owners by setting out stricter requirements.

Next month we will be looking how Circular 16 will impact trademarks.

Any of the above general information is not legal advice and shall not be applied in any specific matter. Please contact us for our detailed advice and recommendation for your matters.