Protecting Invention Abroad via Patent Cooperation Treaty (PCT)

Patent is an intellectual property right which owner could benefit from limited monopoly or commercialize through licensing the patent to others in return for royalty. To protect invention internationally, an inventor may file an international application with a national or regional patent office or WIPO and this aplication must comply with the Patent Cooperation Treaty (PCT) formality requirements. The patent owner should have a patent lawyer to help out with the process of patent registration, and filing an international protection through PCT process.

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What is Patent Cooperation Treaty?

The PCT is an international treaty with 153 Contracting States. This treaty helps the applicant in protecting their invention internationally when filing only one international patent application to be protected in a large number of countries instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent offices in what is called the “national phase”.

The general procedures when filing an PCT application would be:

Filing, International search, International Publication, Supplementary International Search (optional), International Preliminary Examination (optional), National Phase.

With the filing step, the applicant needs to file an international application with a national or regional patent office or WIPO, complying with the PCT formality requirements, in one language, pay one set of fees. Before International Publication, the patent must go through an International Search by an “International Searching Authority” (ISA) (one of the world’s major patent offices). The purpose of this Search is to identify the published patent documents and technical literature which may have an influence on whether invention is patentable. After that, a written opinion on invention’s potential patentability will be issued. Then, the PCT application can go directly to national phase. However, there are two optional steps which applicants may go through: (i) Supplementary International Search (optional), and (ii) International Preliminary Examination (optional). These two steps based on applicant’s request should publish documents which may not have been found by the first ISA and carry out an additional patentability analysis, usually on an amended version of application, respectively.

How long does the PCT process take? Normally, applicant will have 30 months from the filing date of the initial patent application of which they claim priority or up to an additional 18 months from the time applicant files their international patent application before they have to begin the national phase procedures with individual patent offices and to fulfill the national requirements.

At any time, however, applicant may request an early entry into the national phase instead of waiting for the expiration of 30 months from the earliest filing date of their patent application. Once the application has gone into national phase, the time required for the examination and grant of a patent varies across patent offices of each state.

One of the important steps in filing PCT is to make sure the translation into Vietnamese language match up with the original language. Patent attorneys at ANT Lawyers will assist along the process including the translation of the patent and work with the national office of intellectual property in Vietnam to follow the instructions to complete the registration process in Vietnam.

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Brief Reminder of Time Schedule to Apply PCT Application into Vietnam

According to Vietnam Law on Intellectual property, a PCT applicant who would like to go into Vietnamese phase after the end of PCT procedures need to submit the application within the following duration:

If an international application designates Vietnam, the National Office of Intellectual Property in Vietnam (NOIP) is the designated office. In this case, in order to enter the national phase, the applicant shall submit, within 31 months from the date of priority, to the NOIP the following:

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-Written declaration requesting invention registration, made according to a set form;

-Copy of the international application (if the applicant requests the entry into the national phase before the date of publication of the international publication);

-Vietnamese translation of the international application: The description, consisting of a description section, protection request, annotations for drawings and abstract (the published copy or initially filed original application, if the application has not yet been published, and modified copy and explanation of modified contents, if the international application has been modified underArticle 19 of Patent Cooperation Treaty;

-National charges and fees.

If an international application elects Vietnam, the NOIP is the elected office. In this case, if the election of Vietnam is made within 19 months from the date of priority, in order to enter the national phase, the applicant shall submit, within 31 months from the date of priority, to the NOIP the following documents:

-Written declaration request;

-sting invention registration, made according to a set form;

-Vietnamese translation of the international application: The description, consisting of a description section, protection request, annotations for drawings and abstract (the published copy or initially filed original application, if the application has not yet been published, and modified copy and explanation of modified contents, if the international application has been modified under Article 19 and/or Article 34(2)(b) of the Treaty);

-Vietnamese translations of annexes to the international preliminary examination report (when substantive examination of the application is requested);

-National charges and fees.

After having submitted the application, the time when the processing of an international application designating or electing Vietnam in the national phase starts is the first day of the thirty second month from the date of priority if the applicant files no written request for entry into the national phase earlier than the above time limits. The international application shall be put to formality examination and substantive examination according to the procedures applicable to ordinary invention registration applications. If the applicant requests in writing earlier examination of his/her application and pay the prescribed charge, the international application shall be examined earlier than the time limit specified above in accordance with the provisions of Article 2 3(2) of the Treaty.

Please be noted that in addition to the cases where an international application is considered withdrawn specified in the Treaty and the Regulation on implementation of the Treaty, an international application designating or electing Vietnam shall be considered withdrawn if the national fees are not paid to the NOIP or there is no Vietnamese translation upon the expiration of the set time limit.

It is important to adhere to the deadline and patent attorney of ANT Lawyers always follow up with the Client to remind on the schedule to follow when submitting for PCT application in Vietnam

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Regulation On Imposing Anti-Dumping Duty under Vietnam Laws

Imposition of anti-dumping measure includes imposition of provisional anti-dumping duty and official anti-dumping duty. According to Law on export and import duties 2016, anti-dumping duty means an additional import duty imposed upon dumped imports in Vietnam that cause or threaten to cause considerable damage to domestic manufacturing or prevent the formation of domestic manufacturing.

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The imposition of provisional anti-dumping duty is decided by the Minister of Industry and Trade according to the preliminary determination provided by the investigating authority. The rate of provisional anti-dumping duty shall not exceed the dumping margin defined in the preliminary determination. The maximum duration of imposition of provisional anti-dumping duty is 120 days from the days on which the decision on imposition of anti-dumping duty comes into force. In case of the request of an exporter of like products exported to Vietnam, the Minister of Industry and Trade may give an extension of provisional anti-dumping duty up to 60 days. The provisional anti-dumping duty shall be imposed after 60 days since the issuance of the decision on investigation of the Minister of Industry and Trade. The amount of anti-dumping duty paid under decision on imposition provisional anti-dumping duty issued by the Minister of Industry and Trade that is in excess of the payable amount after the official decision of Minister of Industry and Trade shall be refunded to the taxpayer.

The imposition official anti-dumping duty is decided by the Minister of Industry and Trade according to the final determination provided by the investigating authority. The rate of anti-dumping duty shall not exceed the dumping margin defined in the final determination. The maximum duration of anti-dumping duty is five years from the day on which the decision on imposition of anti-dumping duty comes into force, unless it is extended as prescribed in the law.

Two conditions for applying anti-dumping duties are the imports being dumped in Vietnam and the dumping margin must be determined and the dumping causes or threatens to cause considerable damage to domestic manufacturing or prevents the formation of domestic manufacturing. Rules for applying anti-dumping duties include: (1) Anti-dumping duty may only be applied to a reasonable extent to prevent or minimize damage to domestic manufacturing; (2) The anti-dumping duties shall be applied after an investigation is carried out and conform to the investigation conclusion as prescribed by law; (3) Anti-dumping duty shall be imposed upon dumped imports in Vietnam; (4) The application of anti-dumping duties must not cause damage to domestic socio-economic interest.

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Distinguish Assignment of Industrial Property Rights And the Licensing of Industrial Property Rights

According to Law on Intellectual Property in Vietnam, industrial property rights means rights of an organization or individual to inventions, industrial designs, designs of semi-conducting closed circuits, trademarks, trade names and geographical indications, trade secrets which such organization or individual created or owns, and the right to prevent unfair competition.

Accordingly, these rights may be transferred to other organizations and individuals that are not creators or owners of those objects. Transfer of industrial property rights includes two types of “assignment of industrial property rights” and “licensing of industrial property rights”.

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The assignment of industrial property rights means the transfer of ownership right by the owner of such industrial property right to another organization or individual. It means assignor shall have to transfer all the rights of the industrial property object to assignee and after the two parties complete the transfer procedure, assignee shall be fully entitled to make decisions upon that industrial property object. However, when transferring, the parties should pay attention to the following matters: (i) Industrial property right owners may only assign their rights within the scope of protection; (ii) Rights to geographical indications shall not be assignable because this object is physical and cannot be moved; (iii) Rights to trade names may only be assigned together with the transfer of the entire business establishment and business activities under such trade name for instance under merger and acquisitions; (iv) The assignment of the rights to marks must not cause confusion as to properties or origins of goods or services bearing such marks (v) Rights to marks may only be assigned to organizations or individuals who satisfy conditions for persons having the right to register such marks.

Licensing of industrial property objects means permission by the owner of such industrial property object for another organization or individual to use the industrial property object within the scope of the owner’s right. Unlike assignment, licensing of rights is when the owner of industrial property object temporarily grant rights to other organizations and individuals to use their industrial property objects for a definite period of time. Licensing of industrial property rights also has certain restrictions such as (i) The right to use geographical indications or trade names shall not be licensable; (ii) The right to use collective marks must not be licensed to organizations or individuals who are not members of the owners of such collective marks; (iii) The licensee must not enter into a sub-license contract with a third party unless allowed by the owner; (iv) Mark licensees shall be obliged to indicate on goods and goods packages that such goods have been manufactured under mark license contracts; (v) Invention licensees under exclusive contracts shall be obliged to use such inventions in the same manner as the invention owners.

Accordingly, the parties need to understand the purpose, scope and object of transfer of industrial property rights, and thereafter sign corresponding agreements being being assignment of industrial property rights or licensing of industrial property rights. Copyright, trademark, patent lawyers could be of help to provide consultancy and legal advice to ensure the rights and obligations are clearly spelled out to avoid potential dispute in Vietnam during the transfer of industrial property rights.

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