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LEGAL ACTIONS AND PROCEDURES AFTER FILING

	For invention/utility solution registration applications
	For design registration applications
	For layout-design registration applications
	For trademark registration applications
	For geographic indication registration applications

FOR INVENTION/UTILITY SOLUTION REGISTRATION APPLICATIONS

Formal examination

All patent applications for invention/utility solution (including PCT applications) shall be examined as to formality by the NOIP within one (01) month from the filing date. In this stage, the NOIP checks whether the application (i) is made in conformity with the prescribed formalities for patent applications; (ii) fully contains the required documents (iii) satisfies the unity of the application, as well as whether the solution of the application is exclusive subjects.

During the formality examination period, the applicant may themselves make voluntary amendments or corrections to the documents for the application without expanding the scope of protection or change the nature of the invention/utility solution sought for protection. If it is the case, the duration of formal examination shall be extended by the time taken for such amendments or corrections.

Notification of shortcomings

The term for reply to the NOIP’s notification in this stage is 01 months from the signing date of the one.

Publication of the application

The application is accepted as to form shall be published in IP Gazette, Volume A (for application)

in the 19^th months from the priority date or the filing date of the application with no priority or in the 2^nd month from the acceptance date, depend on which is latter;
in the 2^nd month from acceptance date for the PCT application after it has been entried to national phase;
in the 2^ndmonth from the date of filing request for early publication or from the acceptance date for the application with request for early publication, depend on which is latter.

Request for Substantive examination TOP

The applicant or any third party may request NOIP to examine the application as to substance of the application. The time limit for filing request of substantive examination is 42 months from the early priority date with respect to application for invention and 36 months with respect to application for utility solution. Such time limit may be extended but not more than 6 months with reasonable reasons.

Substantive examination

The Substantive examination shall only be carried out by the NOIP for accepted applications for invention/utility solution under the request therefore filed by the applicants or any third party in a specific form.

It takes 12 months for the NOIP to examine patent applications from the date of receipt of the request for substantive examination (if such request is filed after publication of the application) or from the publication date (if such request is submitted before publication of the application).

Until the NOIP makes a notice of refusal of or a decision on the grant of a Protection Title, the applicant may make amendments, supplements to the patent application, provided that no change in nature of the invention or utility solution or extend the scope of the claimed protection. He may also withdraw the application at any time prior to the end of the substantive examination period.

Conversion of the application TOP

Until the NOIP makes a notice of refusal of or a decision on the grant of a Protection Title, the applicant may convert an invention registration application with request for an Invention Patent into an utility solution registration application with request for a Utility Solution Patent and vice versa. All information of filed application such as filing date and priority date shall be retained. In this circumstance, filing fees and examination fees shall not be refund and the conversion fees shall be paid by requester.

Suspending the substantive examination

The NOIP may suspend the substantive examination in the following cases:

The solution is not clearly expressed.
The object of the solution belongs to non-patentable ones.
There is a request or declaration of withdrawal/abandonment from the applicant.

Notification of Substantive Examination Result

Upon expiry of the substantive examination period, the NOIP will issue a Notification of Substantive Examination Result to the applicant and/or the concerned party to notify:

intended refusal with reasons therefore or deficiencies which need to be cured within 2 months from the signing date. The applicant must respond to the NOIP within such time limit, and if the applicant fails to respond or the response is unsatisfactory, the NOIP will officially reject the application with a Notification of refusal of Granting Patent within 15 day from expiry date of the above time limit.
intended allowance with an invitation to pay fee for registration, publication and granting a patent, as well as for 1^st annuity if the invention/utility solution is patentable. Such payment shall be made within 01 months from the signing of the Notification. Failure to pay the fee within the time limit shall result in refusal of the application by the NOIP within 15 day from expiry date of the above time limit.

In the case where the applicant pays the fees for granting a patent, publication, registration but fails to pay the fee for 1^st annuity within time-limit then the NOIP shall still issue the patent but it shall be invalid immediately after the day of its issue.

Recovering of substantive examination TOP

The applicant may oppose the NOIP’s Notification of Suspending of Substantive Examination. The opposition must be made in writing and submitted with NOIP within 02 months from the signing date of the Notification:

If the opposition is adequate, the NOIP will recover the substantive examination and the time for applicant making opposition is not counted into the term of examination.
if the opposition is inadequate, the NOIP will officially stop examining of the application and issue a Notification of refusal of Granting Patent. The applicant may appeal in accordance with Appeal Protocol which is regulated by Vietnam Laws.

Registration and Publication of Patent

Invention/utility solution is granted as a patent shall be published in the IP Gazette, Volume B within 2 months from the date of Decision for granting patent and enters into the National register of Industrial Property.

Opposition

Any third party may oppose the rights for registration, priority or protective conditions and other matters related to the application and the granting of patent with respect to published invention/utility applications. The opposition must be made in writing and lodged with the National Office of Intellectual Property (NOIP) during the period of substantive examination of the applications. The opposition shall include the grounds therefore together with documents or references evidencing those grounds. No fee shall be paid by the opposing parties. The NOIP shall be obliged to consider the opposition together with the examination of the patent applications. The NOIP’s Notification for granting or refusal of granting of patent with respect to the opposed applications must also be sent to the opposing parties.

FOR DESIGN REGISTRATION APPLICATIONS TOP

Formality examination

All Industrial Design applications shall be examined as to formality by the NOIP in term of one (01) month from the filing date. In this stage, the NOIP checks whether the application (i) is made in conformity with the prescribed formalities for applications; (ii) fully contains the required documents, (iii) satisfies the unity of the application, as well as whether the design of the application is exclusive subjects.

During the formality examination period, the applicant may make amendments or additions to the documents of the application without expanding the scope of protection or change in nature of the design sought for protection. If it is the case, the duration of formal examination shall be extended by the time taken for such amendments or additions.

Notification of shortcomings

The term for reply to the NOIP’s notification in this stage is one (01) month from the signing date of the one.

Publication of the application

The application is accepted as to form shall be published in IP Gazette, Volume A (for application) in the 2^nd month from the acceptance date of the application.

Content of publication of design applications in the Industrial Property Gazette of the NOIP shall encompass bibliographic data and a number of drawings or photos of the design that is sufficient for its disclosure.

Substantive examination TOP

Substantive examination shall be carried out automatically by the NOIP for all design applications that have been accepted as to form to check whether the applied designs satisfy the patentability criteria.

The period of substantive examination is 6 months from the publication date of the application.

The applicant may make amendments, supplements to the design patent application during the substantive examination period but before the NOIP making a notice of refusal of or a decision on the grant of a patent, provided that such amendments, supplements may not change the design or extend the scope of the protection. He may also withdraw the design application at time prior to the end of the substantive examination period.

Suspending the substantive examination

The NOIP may suspend the substantive examination in the following cases:

The nature of the applied design is not clearly disclosed.
The applied design falls into non-patentable subject matters.
There is a request or declaration of withdrawal or abandonment from the applicant.

If the opposition is adequate, the NOIP will recover the substantive examination and the time for applicant making opposition is not counted into the term of examination.
If the opposition is inadequate, the NOIP will officially stop examining of the application and issue a Notification of refusal of Granting Patent. The applicant may appeal in accordance with Appeal Protocol which is regulated by Vietnam Laws.

Notification of reason for refusal TOP

Upon expiry of the substantive examination period, if the design is found not to be patentable, the NOIP will issue a notification of Examination Result of Application to the applicant notifying its intended refusal with reasons therefore or deficiencies which need to be corrected. The applicant must respond to the NOIP within 02 months, and if the applicant fails to respond or the response is unsatisfactory, the NOIP will officially reject the application with a Notification of refusal of Granting design patent within 15 day from expiry date of the above time limit.

Invitation to pay fee for registration, granting and Publication design patent

If the substance examination finds the design patentable, the NOIP will send a Notification to invite the applicant to pay fee for registration, granting and publication of the Design patent. Payment shall be made within 02 months from the signing of the Notification. Failure in Payment of the fee shall result in refusal of the granting the design patent.

Registration and Publication of design patent

All design patent granted shall be published in the IP gazette, Volume B within the 2 months from the date of Decision for granting design patent and recorded into the National register of Industrial Property.

FOR LAYOUT-DESIGN REGISTRATION APPLICATIONS TOP

Confidentiality

The applicant may request protection of confidentiality of information in its application for registration of layout design by submitting request protection of confidentiality in accordance with NOIP’s guidelines and providing instructions about data, material containing confidental information. The NOIP shall be obligated to protect confidental information pursual to a request made by applicant in accordance with provisions of Laws.

Formal Examination

All layout design applications shall be examined as to formality by the NOIP in a duration of one (01) month from the filing date.

During the formality examination period, the applicant may make amendments or additions to the documents of the application without expanding the scope of protection or change in nature of the layout design sought for protection. If it is the case, the duration of formal examination shall be extended by the time taken for such amendments or additions.

Notification of shortcomings

The term for reply to the NOIP’s notification in this stage is one (01) month from the signing date of the one.

Notification of the formal examination result TOP

If the application is deemed proper, NOIP shall issue a Notification of Acceptance and also state that the subject matter of the application may be grantable as a Certificate if there are no adequate opposition to this layout design registration made by any third parties within 03 months from publication date of layout design in IP Gazette.

Publication

The application is accepted as to form shall be published in IP Gazette, Volume A (for application) in the 2^nd month from the acceptance date of the application.

Only a competent State Body conducting procedures to invalidate Certificate or conducting procedures to handle acts of infringements of the rights to layout design shall be permitted to access to protected confidential information on this layout design.

Notification of intending allowance/intending refusal of granting a Layout design registration Ceriticate

After time-limit of 3 months from publication date of layout design in IP Gazette:

if there are no opposition to this layout design registration made by a third party or if a third party objects but there is a conclusion that objection is inadequate, then NOIP shall issue a notice of intending allowance of granting a certificate for this layout design as in application and require the applicant to pay fee for publication, registration and granting certificate within one (01) month from the issuance date.
If there is a opposition to this layout design registration made by a third party and this opposition is demonstrated to be adequate then NOIP shall conduct procedure to refuse granting a layout design registration certificate in accordance with provisions of Laws.

Registration and Publication

Registered Layout design shall be published on the IP Gazette Volume B within the 2 months from the date of Decision for granting certificate and recorded into the National register of Industrial Property.

FOR TRADEMARK REGISTRATION APPLICATION TOP

Formality examination

All trademark applications shall be examined as to formality by the NOIP. It takes one (01) months from the filing date for the NOIP to check whether the application is made in due form, check the categorizing of mark, describing of mark, or check the classification of the list of goods and/or services and whether mark belongs to excluded matters.

During the formality examination period, the applicant may make amendments or corrections to the documents of the application and the classification of goods/services without expanding the scope of protection or change in nature of the mark sought for protection. If it is the case, the above time-limit of formal examination shall be extended by the time taken for such amendments or corrections.

Notification of shortcomings

The term for curing shortcomings stated in this Notification is 1 months from the date of signing the Notification.

Publication of the application

All trademark applications accepted as to form shall be published in IP Gazette, Volume A (for applications) in the 2^nd month from the acceptance date.

Content of publication of trademark applications in the Industrial Property Gazette of the NOIP shall encompass bibliographic data and trademark representation and the list of goods/services covered by the applications.

Opposition

Any third party may oppose the granting of trademark registration certificate with respect to published trademark applications. The opposition must be made in writing and lodged with the National Office of Intellectual Property (NOIP) during the period of substantive examination of the trademark applications. The opposition shall include the grounds therefore together with documents or references evidencing those grounds. No fee shall be paid by the opposing parties. The NOIP shall be obliged to consider the opposition together with the examination of the trademark applications. The NOIP’s notification for allowance or refusal of granting a trademark registration certificate with respect to the opposed applications must also be sent to the opposing parties.

Substantive examination TOP

Upon expire of the formality check and where the application is accepted as legitimate, the application shall be passed to substantive examination which takes place within a 6 month period from the date of publication of the application. The substantive examination is to consider whether the claimed trademark (i) possesses distinctiveness, (ii) is of those subjects excluded from trademark protection and (iii) has an ability to cause other misunderstanding.

During this period, the applicant may make amendments to the application. As to the list of goods/services, the applicant may restrict it, but not expand. As to the trademark sample, it is possible to make a minor change.

International trademark applications (applications for international registration of a mark designating Vietnam) shall be also subject to the substantive examination within 12 months from the date on which the International Office issues notice of application for international registration of a mark designating Vietnam.

Notification of Substantive Examination

Upon expiry of the substantive examination period, the NOIP will issue a Notification of Substantive Examination Result to the applicant and/or the concerned party to notify:

intended refusal with reasons therefore or deficiencies which need to be cured within 2 months from the signing date. The applicant must respond to the NOIP within such time limit, and if the applicant fails to respond or the response is unsatisfactory, the NOIP will officially reject the application with a Notification of refusal of granting of certificate within 15 day from expiry date of the above time limit.
intended allowance with an invitation to pay fee for granting of certificate, publication of decision of granting of certificate and registration of trademark if the trademark is registrable. Such payment shall be made within 01 months from the signing of the Notification. Failure to pay the fee within the time limit shall result in refusal of the application by the NOIP within 15 day from expiry date of the above time limit.

Regarding to the application of international registration of a mark, the NOIP shall issue a Decision of Acceptance of Protection for the trademark in question.

Regarding to well-known marks, the well-known marks shall be protected and by owners without registration

Registration and Publication of TMCR

All registration trademarks shall be published in the IP Gazette, Volume B within the 2 months from the date of Decision for granting of certificate and recorded into the National register of Industrial Property for Trademarks. All information in the decision shall be published, including: trademark representation, the list of goods/services bearing the trademark.

FOR GEOGRAPHICAL INDICATION REGISTRATION APPLICATION TOP

Formality examination

All geographical indication registration applications shall be examined as to formality by the NOIP with duration of one (01) months from the filing date.

During the formality examination period, the applicant may make amendments or corrections to the documents of the application without expanding the scope of protection or change in nature of the subject matter sought for protection. If it is the case, the above time-limit of formal examination shall be extended by the time taken for such amendments or corrections.

Notification of shortcomings

The term for curing shortcomings stated in this Notification is 1 months from the date of signing the Notification.

Publication of the application

All geographical indication applications accepted as to form shall be published in IP Gazette, Volume A (for applications) in the 2^nd month from the acceptance date.

Content of publication of trademark applications in the Industrial Property Gazette of the NOIP shall encompass bibliographic data and summary of special nature of product bearing a geographical indication and name of such product.

Opposition

Any third party may oppose the granting of geographical indication registration certificate with respect to published geographical indication applications. The opposition must be made in writing and lodged with the National Office of Intellectual Property (NOIP) during the period of substantive examination of the applications. The opposition shall include the grounds therefore together with documents or references evidencing those grounds. No fee shall be paid by the opposing parties. The NOIP shall be obliged to consider the opposition together with the examination of the applications. The NOIP’s notification for allowance or refusal of granting a certificate with respect to the opposed applications must also be sent to the opposing parties.

Substantive examination TOP

Upon expire of the formality examination and where the application is accepted as legitimate, the application shall be passed to substantive examination which takes place within a 6 month period from the date of publication of the application. The substantive examination is to evaluate (i) whether object of the application is consistent with a certificate of geographical indication registration, (ii) ability of object in satisfying to protection criteria, (iii) whether object is those subjects excluded from protection.

Notification of Substantive Examination

Upon expiry of the substantive examination period, the NOIP will issue a Notification of Substantive Examination Result to the applicant and/or the concerned party to notify:

intended refusal with reasons therefore or deficiencies which need to be cured within 2 months from the signing date. The applicant must respond to the NOIP within such time limit, and if the applicant fails to respond or the response is unsatisfactory, the NOIP will officially reject the application with a Notification of refusal of granting of certificate within 15 day from expiry date of the above time limit.
intended allowance with an invitation to pay fee for granting of certificate, publication of decision of granting of certificate and registration of the geographical indication if the geographical indication is registrable. Such payment shall be made within 01 months from the signing of the Notification. Failure to pay the fee within the time limit shall result in refusal of the application by the NOIP within 15 day from expiry date of the above time limit.

Registration and Publication

All registered geographical indications shall be published in the IP Gazette, Volume B within the 2 months from the date of Decision for granting of certificate and recorded into the National register of Industrial Property. All information in the decision shall be published.