Who can file patent application in Vietnam? A company, which do not have address in Vietnam can file a patent application by themselves ? All individuals and legal entities have right to apply patent registration application to competent authority as long as they satisfy following conditions:
In today market, the strong development of science and technology are favorable conditions to promote new creative activities of humans in all fields of social life. Accordingly, the creation of new inventions is considered as technical solutions that solve real-world problems.
Invention is considered as technical solutions in the form of a product or a process to solve a problem identified by the application of laws of nature. So many people assume that anyone who invents an invention has the right to file a patent application. Is this correct? This article will answer the above question.
Patent protection conditions in Vietnam
According to Article 58, Law on Intellectual Property of Vietnam, an invention shall be protected by mode of grant of invention patent if it meets the following conditions:
- Being novel
- Involving an inventive step
- Being susceptible of industrial application.
Note: in case an invention only satisfies two conditions: being novel, being susceptible of industrial application, the invention shall not be granted an invention patent but only patent for utility solution.
Who can file patent application in Vietnam?
All individuals and legal entities have right to apply patent registration application to competent authority as long as they satisfy following conditions:
- Invention is created at the expense of the inventor;
- Organizations and individuals that invest funds and material facilities for the author in the form of assignment or hire (unless otherwise agreed by parties or provided by law);
- Individuals and organizations that jointly create or invest in the creation of such invention have the right to apply patent registration application to competent authority;
- Invention created by using technical and material facilities or budget fund of the government:
In case the government supports the whole process of patent creation with funds of the government, the right to file patent registration application shall belong to the government;
In case the invention is created on the basis of capital contribution of the government, a part of the right to apply patent registration application corresponding to the capital contribution ratio shall belong to the government;
In case an invention is created on the basis of cooperation between an organization, a state agency and another organization or individual, a part of the right to apply patent registration application shall be calculated corresponding to the ratio of contributions of these subjects in such cooperation.
Some important cases to note:
The applicant does not have an address or a commercial presence in Vietnam
Article 7 of Decree 103/2006 / ND-CP has regulation:
- Foreign organizations and individuals that satisfy the conditions for protection of industrial property rights in Vietnam specified in Article 2 of this Decree may file applications for industrial property registration in Vietnam under treaties on or concerning international filing procedures. Treaties mentioned in this Clause include:
- The 1970 Patent Cooperation Treaty, which was revised in 1984 (hereinafter referred to as the PCT for short);
- The 1891 Madrid Agreement on International Registration of Marks, which was revised in 1979 (hereinafter referred to as the Madrid Agreement) and the 1989 Protocol Relating to the Madrid Agreement (hereinafter referred to as the Madrid Protocol);
- Other treaties on or concerning international filing procedures to which Vietnam is a contracting party, as from the date such treaties become binding on Vietnam.
Vietnamese organizations and individuals
Vietnamese organizations and individuals may file applications for international industrial property registration to request the protection of their rights in Vietnam if it is so provided for by such treaties.”
Thus, in the case that the applicant for an invention has no address or branches and representative offices in Vietnam, but the country of the applicant is a member of the PCT Treaty, the Marid Agreement or other international treaties which relate to international filing procedures to which Vietnam is a party, the applicant may apply for international patent registration through these systems.
The applicant may also choose to apply for patent registration through an industrial property representative office in Vietnam such as A&S Law.
In case the author is an employee of the company
According to the regulation on the right to patent registration at Point b, Clause 1, Article 86 of the Intellectual Property Law: “Organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring unless otherwise agreed by the involved parties whose agreements are not contrary to the provisions of Clause 2 of this Article.”
Based on the labor relationship in the invention creation process, the inventor is an employee of the company and he/she receives salary from the company. Accordingly, he/she created the invention by the expense of the company during the time working at the company. Thus, in this case, the company is the subject who has right to apply a patent registration application for the invention.
In case of registration of inventions of the consignor and consignee
Pursuant to the regulation on the right to patent registration at Point b, Clause 1, Article 86 of the Intellectual Property Law: “Organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring unless otherwise agreed by the involved parties whose agreements are not contrary to the provisions of Clause 2 of this Article.”
A consignor is the person who invests funds in the consignee to create an invention. Therefore, the consignor has the right to apply patent registration for this invention.
In case the owner of a foreign company transfer the right to patent registration to a subsidiary in Vietnam
Pursuant to the regulation on patent registration rights in Clause 4, Article 86 of the Intellectual Property Law: “A person who has the registration right as provided in this Article may assign that right to other organizations or individuals in the form of a written contract, bequeathal or inheritance in according.”
In this case, the owner of a foreign company must make a written contract showing the content of the transfer of the right to registration of the invention to the Vietnamese subsidiary.