CIRCULAR

ON THE PROCEDURES FOR ESTABLISHMENT OF INDUSTRIAL PROPERTY RIGHTS TO INVENTIONS/UTILITY SOLUTIONS

Pursuant to Decree No 54/2003/ND-CP dated 19 May 2003 of the Government on the functions, tasks, authority and organizational structure of the Ministry of Science and Technology;
Pursuant to Decree No 63/CP dated 24 October 1996 of the Government on detailed provisions concerning industrial property that has been amended and supplemented by Decree 06/2001/ND-CP dated 01 February 2001;
Ministry of Science and Technology guides the procedures for drafting, filing and examining applications for protection titles; procedures for granting, amending, renewing, terminating, invalidating protection titles for inventions and utility solutions.

Chapter I:

GENERAL PROVISIONS

1. Interpretation of terminologies

1.1 The terms used in this Circular are to be understood as follows:

a) "Decree" implies Decree No 63/CP of 24 October 1996 of the Government on detailed provisions concerning industrial property amended and supplemented by Governmental Decree No 06/2001/ND-CP dated 01 February 2001;

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c) "Utility solution application" implies a patent application for utility solution;

d) "Application" implies patent application for an invention and utility solution;

e) "International applications" implies international patent applications filed under the Patent Cooperation Treaty (PCT) concluded in Washington in 1970 and revised in 1984.

f) "Applicant" implies individuals or organizations (hereinafter referred to as "the subject") under whose name the application is filed.

g) "Procedure for registration of inventions or utility solutions" implies procedures for establishing industrial property rights to an invention or utility solution and other related procedures.

1.2. Other terms shall have the meaning as prescribed in the Decree.

2. Attestation of documents:

2.1. Attestation of original documents:

During the procedures for registration of inventions or utility solutions, all original documents shall be attested by the subject under whose name the document is filed, in accordance with the following:

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b) If the subject is an organization, the document must be signed and stamped by an authorized representative of the subject.

2.2. Attestation of copied documents:

a) Any copied documents shall be attested as certified copies in accordance with 2.2.b and then they can be used as official documents during the procedures for registration of inventions and utility solutions;

b) A document shall be considered as "certified copy" if the copy is attested by one of the following individuals or bodies: Public Notary, People's Committee or a competent authority, the subject (all subjects) under whose name the document is filed or their representative. If the copy consists of many pages, all pages must be attested and marginally stamped.

2.3. Attestation of translation

a) Translated documents into Vietnamese shall be attested as authentic translation form the original document in accordance with 2.3.b and then they can be used as official documents during the procedures for registration of inventions or utility solutions.

b) Attestation can be done in the following ways:

- Attested by notary

- Attested by the subject (all the subjects concerned) under whose names the original documents are made

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3. Person acting in the name of the subject to carry out the procedures for registration of inventions or utility solutions

3.1. Only persons referred to in 3.2 and 3.3 of this Circular shall have the right to act in the name of the subject to carry out procedures for registration of inventions and utility solutions before the National Office of Intellectual Property and other competent authorities.

National Office of Intellectual Property and other competent authorities shall carry out transactions with the said persons and the transactions shall be considered official ones with the subject.

3.2. As for those subjects who have the right to file applications and carry out related procedures under Article 15.2 and 15.3 of the Decree, the following persons shall have the right to carry out procedures for registration of inventions or utility solutions before the National Office of Intellectual Property and other related competent agencies:

a) The individual or his lawful representative if the subject is an individual;

b) Lawful representative of the subject; individuals that are authorized by lawful representative of the subject; the head of the Representative Offices or branch Offices of the subject, that are authorized by lawful representatives (in the case where the subject is the legal person or others);

c) The head of Representative Office of foreign subjects in Vietnam which authorized by the foreign subject as his representative; lawful representatives of enterprises established in Vietnam with 100% capital of the foreign subject which is authorized by the foreign subject as his representative;

d) Person satisfying one of the requirements mentioned in Article 3.2.a,b,c is one of the individuals, legal persons or other subjects - if the subject has many individuals, legal persons or other subjects and if the person is authorized by all of the individuals, legal persons and other subjects as their representative.

3.3. For those subjects that must file applications and carry out related procedures through IP agents as provided for in Article 15.3.b) of the Decree as well as for other subjects carrying out the said procedures through an IP representative agent, only persons that are representative by law or representative by the authorization of the IP agent having the Power of attorney of the subject shall be allowed to carry out the activities mentioned in 3.1 of this Circular.

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4.1 Authorization and exercise of the authorization for conducting procedures of registration of inventions/utility solutions must be in conformity with legal provisions on civil contracts authorization contracts under the Civil Code and provisions of this Circular.

4.2 Any authorization for conducting procedures of registration of inventions/utility solutions must be in writing (Power of Attorney), which must contain the following:

a) Name (full names), address of the authorizing party;

b) Name (full names), address of the authorized party;

c) Scope of authorization (activities to be undertaken by the authorized party in the name of authorizing party;

d) Date of making the Power of Attorney;

e) Signature and/or stamp of the person making the Power of Attorney;

f) Term of authorization

Power of Attorney without time limit shall be valid indefinitely and shall be invalidated when the authorizing party declare the termination of validity.

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4.4 In the case of authorization, when carrying out procedures for registration of inventions/utility solutions, the authorized party shall submit the original of the Power of attorney. Any changes in respect of the scope of authorization and early termination of the authorization shall be notified the National Office of Intellectual Property and other competent agencies in writing and shall have effect from the date on which the competent agency receives the notification.

4.5 If the scope of Power of Attorney covers various independent procedures and the original of the power of attorney has been submitted to the National Office of Intellectual Property, when carrying out next procedure, the authorized party shall indicate exact number and date of filing the dossier application containing the original of the Power of Attorney.

Chapter II

APPLICATION AND HANDLING OF APPLICATION

Section 1. APPLICATION

5. Formality requirements for an application

5.1 An application shall meet the following formality requirements:

a) Documents of an application shall be made in Vietnamese language, except for those documents that may be made in other language as provided for in 5.2 and 5.3 of this Circular;

b) Documents of the application shall be presented in the portrait format (except for drawings, diagrams, tables may be presented in the landscape format) on the A4-sized paper (210 x 297mm) with margins in four directions, each of 20 cm wide, except for those supporting documents which originally were not supposed to be included in the application;

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c) A document must be made in a certain form if it is so required

d) If document consists of many pages, all pages must be numbered in Arabic;

e) Documents must be clearly typed or printed without corrections, deletions using high quality and durable ink;

f) Terms used in the Application must be popular, any signs, units of measurement (metrological units), electronic fonts used in the Application must be in conformity with Vietnamese standards;

g) Application may contain supporting documents in the form of electronic data of a part or the whole Application which must be in presented in the manner required by the National Office of Intellectual Property.

5.2 The following documents may be made in a foreign language, however they must be translated into Vietnamese:

a) Power of Attorney;

b) Document certifying the legitimate right to file the Application if the applicant obtained the right to file the application from other person (certification of inheritance, Certification or Agreement on the transfer of the right to file the application (including the transfer of already filed application), Contract for assignment of work or labor Contract ...);

c) Documents certifying the priority rights (certification by the IP Office receiving the first application on its copy; certification of displaying in an exhibition; Certification of transfer of the priority right if the right has been transferred from another person...);

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a) A copy of the first Application as a proof of priority right;

b) Other supporting documents in the Application.

6. Substantive requirements for an Application:

6.1. Application must comply with the requirement of unity as provided for in Article 11(2) of the Decree. The requirement of unity shall be satisfied if the Application:

a) is filed for protection of a unique subject matter;

(b) is filed for protection of a group of technically-related subject matters to express an common unique inventive idea which may fall under the following cases:

- A subject matter is used for creating (producing, manufacturing, compounding) another one (for example, devices, substances and methods of manufacturing (compounding) devices or substances in general or a part of them);

- A subject matter is used for exercising another one (for example, method and device for exercising the method in general or a stage of the method);

- A subject matter is used for operating another one (for example, method and substance used for the method; method or device and a part of it; use of device or substance with new function and method of using them with the new function);

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6.2. Application shall comprise the following documents:

a) Request for a patent for an invention/utility which shall be made in accordance to the form prescribed in the Annex to this Circular;

b) Specification consists of Description, Claims, Drawings, Diagrams, Calculation Tables ... (if needed to clarify the nature of the described technical solution);

c) Abstract of the invention/utility solution (hereinafter referred to as "Abstract");

d) Power of Attorney (in the case where application is filed through an IP representative agent);

e) Copy of the first application(s) or document certifying the participation in an exhibition if the application requesting priority right under an international Treaty;

e) Receipt of payment of application fee, publication fee, fee for requesting priority right (if so requesting); Substantive examination fee (if so requesting), fee for classification of invention/utility solution (if the applicant failing to do so).

6.3. All documents described in 6.2. must be submitted together at the same time. The following documents can be submitted within three months from the application filing date:

a) Vietnamese translation of the documents described in 6.2.b) and 6.2.c), if the application contains the English translation of these documents;

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c) Document described in 6.2.e) of this Circular, including its Vietnamese translation (if required by the National of Intellectual property).

6.4. If there are firm grounds (information, evidence) for suspicion of the truthfulness of the information given in the Application, National office of Intellectual Property has the right to request the Applicant to submit, within one month from the requesting date, document attesting the suspected information, especially document certifying the lawful right to file the application if the Applicant enjoys the right obtained from other persons (Certification of inheritance, Certification or Agreement on the transfer of the right to file the application (including the transfer of already filed application), Contract for assignment of work or labor Contract ...); results of testing drugs on human being, animal or plant given in the Description (if the described subject matter is a drug for human being, animal or plant).

6.5. The request must contain IPC classification number of the technical solution applied for protection (according to the Strasbourg Agreement). If the Applicant fails to classify or incorrectly classify the technical solution, the National office of Intellectual Property classify and the Applicant shall be charged with classification service fee.

6.6. The description must disclose the nature if the whole technical solution that requires protection. The description must contain sufficient information to the extent that based on that information any person having average knowledge in the art will be able to carry out the technical solution.

The description must be clearly disclosed with respect to novelty, inventive step (if the subject matter requiring protection is invention) and the applicability of the technical solution.

Description consists of the following:

a) Title of the subject matter requiring protection (hereinafter referred to as "subject matter") or main subject matters;

b) The field where the technical solution is utilized or related to;

c) The state of the art in the field at the time of filing the application (the prior art), if any;

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e) Brief description of attached pictures, drawings (if any);

f) Brief description of known variants of working the invention;

g) Examples of working the invention;

h) Possible benefits (effects) from the use of the invention, if necessary.

6.7. The claims serve as basis for determining the scope of protection of invention/utility solution. The claims must be presented clearly and succinctly, be consistent with the description and drawings and satisfy the following requirements:

a) The claims must be illustrated fully in the Description, i.e. presented in the way of listing the features indicated in the Description, sufficient and necessary for determining the subject matter and for achieving the objective and distinguish the subject matter from known subject matters;

b) The claims shall not rely on any reference to the Description and drawings, except for the case when it is impossible to describe in words, such as the nucleotide order and acid amino order, diffraction diagram, state diagram;

c) The claims are written in one sentence and should (but not a must) be expressed in two parts "limitation part" and "distinctive part", where

- "Limitation part" includes the name of the subject matter and its features that are identical to the features of the closest known subject matter and connected to "the distinctive part" by the wording" "distinctive in" or "characterized in" or equivalent words;

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d) The claims may contain one or many points, where the claims with many points may be used for:

- Describing a subject matter to be protected with the first point (so called "independent point"), next point (s) shall be used for supplementing, clarifying, developing the independent point (so called "dependent point"; or

- Describing a group of subject matters that need protection, with several independent points, each of them describing one subject matter to be protected, each of the independent points may have dependent point(s);

e) All points of the claims must be numbered in Arabic followed by dots;

f) Multipoint claims used for describing a group of subject matters shall satisfy the following requirements:

- Independent points, describing individual subject matter, shall not make reference to other points of the claims, unless the reference allows to avoid full repetition of the content of other points;

- Independent points shall be followed by dependent points on which they depend.

g) If Application contains drawings, features described in the Claims may accompany reference numbers, but they must be parentheses;

6.8. Abstract is used for brief description of the nature of the invention/utility solution (not more than 150 words). Abstract must disclose main contents concerning the nature of the technical solution for information purpose. The abstract may have drawings, typical formulae.

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6.10. Requirements of Applications for invention/utility solutions relating to biotechnology:

a) Besides the general requirements for the description of invention/innovation provided for in 6.6., with respect to invention/utility solution concerning the gene sequence or a part of the gene sequence, the description must contain the list of gene sequences described in accordance with the standard of WIPO ST.25, 2 (ii) (Standard describing the list of nucleotide sequences and the acid amino sequences in the Application for an invention).

b) National Office of Intellectual Property may request the applicant to submit electronic data (in the form of floppy disks, optical disks...) that are readable by popular electronic means and containing nucleotide sequence and acid amino sequence that are identical with the list of sequences in the Description.

c) With respect to inventions/utility solutions concerning (or relating to) biological materials which cannot be described or cannot be adequately described to the extent that a person with average knowledge in the field of biotechnology can work the invention/utility solution, the latter shall be considered as fully disclosed if only:

- Samples of the biological materials have been deposited at the competent depository institution as described in 6.11 of this Circular not later than the application filing date;

- The description contains necessary information about characteristics of the biological materials that the applicant may have; and

- The request indicates the Depository Institution for the biological materials and reference number of the deposit of the biological materials issued by the Depository Institution and documents concerned certifying this are to be submitted to the National Office of Intellectual Property within 16 months from the priority date, or not later than the date of filing the request for early publication (if that is the case);

- In the case where the Applicant is not the depositor of the biological materials, the Request must clearly indicate name and address of the depositor and the document certifying the legal use of the biological materials must be submitted to the National Office of Intellectual Property within 16 months from the priority date, or not later than the date of filing the request for early publication (if that is the case);

6.11. Deposit of biological materials

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b) The samples of the biological materials must be deposited with the competent Depository Institution not later than the date of filing the application relating to the biological materials;

c) The Depository Institution for biological materials (to be appointed by the Ministry of Science and Technology) shall receive and keep the materials submitted by the Applicant of the invention/utility solution in accordance with the Regulations for keeping biological materials to be issued by the Ministry of Science and Technology.

Section 2. FILING AND RECEIVING APPLICATIONS

7. Filing Applications

Applications can be filed with the National Office of Intellectual Property or any Application receiving place to be established by the National office of Intellectual Property. Applications can also be sent by recorded mail to the Application receiving place.

8. Receiving Applications

8.1. When receiving Applications, National Office of Intellectual property shall conduct the following acts:

a) Checking the list of documents indicated in the Request;

b) Taking note of the differences between the list of documents indicated in the Request and the actually available documents in the Application;

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d) Issuing a receipt of the Application to the Applicant with the stamp certifying the date of filing the Application, Application number and the results of checking the list of documents, containing the full names and signature of the staff receiving the Application.

8.2. The National Office of Intellectual Property will not accept the Application it fails to contain the following compulsory documents:

a) Request containing information about names and address of the Applicant;

b) Description containing the claims;

c) Receipt of payment of fees.

8.3. In the case where an Application is not accepted, within 15 days from the date of receiving the Application, the National Office of Intellectual Property shall send a refusal of the Application indicating the reasons of refusal and set a term of 2 months (from the date of notifying) for the Applicant to rectify the Application.

If during this time period the Applicant submits all documents required in 8.2. of this Circular, the Application shall be considered as having been accepted on the date on which all required documents have been submitted.

With respect to those Applications that have not been accepted, the National Office of Intellectual Property shall not return the application dossier, however it must reimburse all the fees paid in accordance to the procedures for reimbursement of fees and service charges under this Circular.

Section 3. FORMALITY EXAMINATION OF APPLICATIONS

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Formality examination of an application means checking whether or not the application complies with the all requirements in respect of formality of an Application, thus making a conclusion whether or not to consider the application as an officially accepted one.

Officially accepted Application shall be further processed. Applications failing to comply with formality requirements shall be refused (shall not be further processed).

10. Officially accepted Application

10.1. An Application shall be considered officially accepted if it does not fall under the following cases:

a) Application is made a language rather than Vietnamese, except for the cases provided for in 5.2. and 5.3. of this Circular;

b) The request fails to contain information about the inventor, Applicant, IP representative, signature and /or stamp of the Applicant or the representative;

c) There is a ground to conclude that the Applicant does not have the right to file the Application;

d) The Application was filed in contrary to the provision under Article 15 of the Decree;

e) Description, abstract were made in English, but the Applicant failed to submit its Vietnamese translation within the term set forth under 6.3 of this Circular;

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g) The Application still has shortcomings mentioned in 11. of this Circular, thus affecting the legality of the Application, after the National Office of Intellectual Property has requested the amendment of the Application, the Applicant either failed to make amendment or amended improperly;

h) There is a basis to conclude that the subject matter described in the Application does not fall under those protectable subject matters provided for under Article 787 of the Civil Code and Article 4 (4) of the Decree.

10.2. With respect to an Application containing many subject matters, if the Application falls under the cases mentioned in 10.1.g), 11.a), 11.d) of this Circular and the shortcomings do not relate to all subject matters described in the Application, the Application shall be considered partly illegal (for those subject matters having shortcomings), the Application in respect of the rest subject matters is still considered legal (officially accepted).

11. The handling of the shortcomings of the Application during the formality examination

11.1. The shortcomings of the Application to be rectified during the formality examination:

a) The application fails to comply with the requirement of the unity of invention/utility solution;

b) The Application fails to meet requirements in respect of ways of presentation

c) Information about the Applicant in various documents of the Application varies from one to another, or being erased or failing to certified in accordance to relevant provisions of law;

d) Having not fully paid the Application filing fee, publication fee and charge for classification of the technical solution (if the National Office of Intellectual Property carried out the work);

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12. Determining the Application filing date

12.1. The Application filing date is the date on which the application arrives at the National Office of Intellectual Property, which is indicated in the stamp on the Request;

12.2. With respect to international Application designating or/and electing Vietnam and satisfying requirements mentioned in 59 and 59 of this Circular, the filing date is the date of filing the international Application.

13. Determining the priority date

13.1. If an Application without a claim for priority right or with a claim for priority right but having been accepted by the National Office of Intellectual Property, the priority date is the filing date;

13.2. If an Application having a claim for priority right, the priority date (or priority dates) is the date indicated in the claim for the priority date and having been accepted by the National Office of Intellectual Property.

14. Notification of acceptance of an Application

If an Application considered as officially accepted, National Office of Intellectual Property shall notify the Applicant of the official acceptance of the Application, which indicates clearly the name, address of the Applicant; name of the industrial property representative agent (if the Application was filed through the Agent); the title of the subject matter described in the Application, priority date of the Application. In the case where the claim for the priority date has not been accepted, the reasons concerned should be indicated.

15. Unacceptance of an Application

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In the case where the Applicant does not have any position or their opinion is not appropriate in respect of the refusal of acceptance of the Application, National Office of Intellectual Property shall make a notification of refusal of acceptance of the Application and reimburse paid fees, service charge in respect of the work to be done after the formality examination at a request of the Applicant.

16. Term of formality examination of an Application

16.1. The term for formality examination is 1 month from the date of filing the Application. With respect to Application with additional documents provided for in 6.3 of this Circular, the term of formality examination is 1 month of the date of supplement of those documents;

16.2. If during the formality examination, an Application is amended or supplemented at an initiative of the Applicant or at a request of the National Office of Intellectual

Property, the term for formality examination shall be extended by 15 days. If the Application is amended or supplemented at the request of the National Office of Intellectual Property the time for the amendment or supplement shall not be included in the term of formality examination. Section 4. Publication of Applications

17. Publication of an officially accepted application

Officially accepted Applications and international Applications shall be published by the National Office of Intellectual Property in the Industrial property Official Gazette. The Applicants shall pay the publication fees.

18. Term of Publication of Applications

18.1. Applications shall be published in the 19^th month from the priority date, except for the cases provided for in 18.2, 18.3, 18.4 of this Circular.

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18.3. For those Applications where a request for substantive examination was filed before the Application is officially accepted, the Application shall published in the second month from the date on which the Application was officially accepted.

18.4. For those Applications where a request for substantive examination was filed after the Application is officially accepted but not later than the expiration of 18 months from the priority date, the Application shall be published in the second month from the date on which the National Office of Intellectual Property received the request for substantive examination.

18.5. International Applications shall be published in the second month from the date on which the application was officially accepted.

19. Published contents:

Published information concerning the Application shall include all information relating to the officially accepted Application; information concerning the assignment, division of Application...; Abstract, one or several drawings (if any);

20. Access to the information concerning the nature of the invention described in the Application is open to anyone, the later can also request National Office of Intellectual Property to provide tem the information subject to payment of certain fees.

Section 5. SUBSTANTIVE EXAMINATION OF THE APPLICATION

21. Demand for substantive examination of inventions/utility solutions

21.1. Within 42 months from the priority date of the Application for an invention and 36 months from the priority date of the Application for a utility solution, the Applicant or any third party can file a Demand to the National Office of Intellectual Property for substantive examination of the invention/utility solution. Where appropriate, the time limit for filing the demand for substantive examination may be extended by a maximum period of 6 months.

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21.2 The Demand for substantive examination of invention/utility solution, which is filed after the publication of the Application, shall be published in the Industrial Property Gazette in the second month from the date of receiving the Demand and shall be notified to the Applicant.

The Demand filed before the publication of the Application shall be published together with the Application according to 18.3, 18.4 of this Circular.

21.3. In the case where the Demand for substantive examination is filed by the Applicant as indicated in the Request referred to in 6.2.a) of this Circular, the Demand shall be made in a written form provided for in the Annex to this Circular together with the receipt for payment of the search and substantive examination fees.

21.4. If the no Demand is filed during the time limit mentioned in 21.1 of this Circular, the Application shall be considered as having been withdrawn.

22. The purpose of substantive examination

The purpose of substantive examination is to assess the patentability of the subject matter described in the Application for invention/utility solution in accordance with the criteria of protection and determine the respective scope of protection.

23. Use of the results of information search during the substantive examination

23.1 When conducting the substantive examination, the National Office of Intellectual Property shall carry out the search as provided for in 34.2 of this Circular in order to assess and compare the subject matter described in the Application in respect of protection criteria.

23.2. During the substantive examination of Application with the claim for priority date, National Office of Intellectual Property may use results of search and examination of the applications that have been conducted abroad. The Applicant can provide the National Office of Intellectual Property with the following documents for the purpose of substantive examination:

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b) Copy of the granted patent or protection title for the for subject matter described in the Application filed abroad;

c) Document relating to the background of the art that the foreign Patent Office provided to the Applicant.

24. Review of third parties' opinions

During the substantive examination, National Office of Intellectual Property shall review third parties' opinions (if any) concerning the support or opposition against the grant of protection title. National Office of Intellectual Property shall notify the third parties whether their opinions have been accepted or not with the indication of reasons of rejection (if that is the case).

25. Request for rectifying formality shortcomings and explaining the contents of the Application:

25.1. During the substantive examination, National Office of Intellectual Property has the right to request the Applicant to provided explanation of the contents of the documents in the Application or rectify shortcomings in respect of the formalities of the Application. If the Applicant fails to satisfy the request, the Application shall be considered as withdrawn and shall not be further examined.

25.2. National Office of Intellectual Property shall not request the Applicant to provide information which is beyond the scope of the subject matter described in the Application, especially the information that the Applicant wish to keep secret.

25.3. The rectification of the shortcomings shall be conducted by the Applicant himself. National Office of Intellectual Property shall not rectify the shortcomings instead of the Applicant.

26. Discontinuation of the substantive examination

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a) The Application does not describe clearly the nature of the subject matter: Documents relating to the nature of the subject matter such as the Description, Claim do not contain sufficient information about the nature of the subject matter or the information given is unclear, irrelevant, or unspecific or not uniform to the extent that it is unable to identify the subject matter.

b) The subject matter is not relevant to the requirements for granting a patent for invention/utility solution or the subject matter falls under the list of objects that are not protected as provided for in Article 787 of the Civil Code and Article 4.4 of the Decree;

c) There is a request filed by the Applicant for discontinuation of the substantive examination or withdrawal of the Application.

26.2. The National Office of Intellectual Property shall notify the Applicant of the discontinuation of the substantive examination giving the reasons of the discontinuation in accordance with the procedures as in the case of notification of the results of substantive examination (except for the case the discontinuation is at the request of the Applicant.

27. Appeal against the discontinuation; Resumption of substantive examination

27.1. The Applicant has the right to appeal against the discontinuation of substantive examination and the National Office of Intellectual Property has the responsibility for handling the appeal of the Applicant in accordance with Section 3, Chapter 4 of this Circular.

27.2. If results of the handling of the appeal of the Applicant show that the appeal is reasonable, the National Office of Intellectual Property shall resume the substantive examination. In this case, the National Office of Intellectual Property shall not be entitled to extend the time limit for substantive examination.

28. Nature, order for assessment of the subject matter in terms of criteria of protection

28.1. The assessment the subject matter in terms of protection criteria is to determine the subject matter satisfies requirements for granting a patent for invention/utility solution or not, where appropriate, the subject matter is assessed by each criterion for protection.

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The assessment shall be carried out consecutively in accordance with each point of the Claim.

28.3. The assessment of each subject matter shall be terminated if:

a) There is a ground to conclude that the subject matter does not satisfy one of the criteria of protection, or

b) There is no ground to conclude that the subject matter does not satisfy any criteria of protection;

In case a), the substantive examination is terminated by the conclusion that the subject matter does not meet one of the criteria of protection;

In case b), the substantive examination is terminated by the conclusion that the subject matter does the criteria of protection.

29. Notification of the results of substantive examination

29.1. The National Office of Intellectual Property of Vietnam shall send a notification of the results of the sustentative examination to the Applicant or the third party requesting the substantive examination, with clear indication whether or not the subject matter satisfies the criteria of protection;

29.2. If the subject matter described in the Application is irrelevant to requirements for granting a patent for invention/utility solution or if the subject matter is relevant but fails to satisfy the criteria of protection, where the notification shall indicate the intention to refuse the grant of the protection title, and indicate the reasons for refusal, as well as to fix a time limit of two months from the date of notification so that the Applicant can express his opinion; if the scope of protection is too wide, the notification shall indicate the reasons and the intention to narrow the scope (scale) of protection.

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29.4. If the subject matter satisfies the criteria of protection or in the case mentioned in points 29.2. and 29.3. of this Circular, where the Applicant has narrowed the scope (scale) of protection so that the subject matter satisfies criteria of protection, or rectification is satisfactory and/or opposition is reasonable, the notification of results of substantive examination (or the second notification of results of substantive examination for the cases mentioned in points 29..2 and 29.3 of this Circular) shall fix a time limit for the Applicant to pay the fee for publication of the protection title, fees for registration and grant of protection title and annual fee for the first year. The said time limit is two months from the date of notification.

29.5. If during the time limit, the Applicant fails to rectify the shortcomings, or the shortcomings are not properly rectified and/or there is no opposition or the opposition is not reasonable, the National Office shall officially refuse the grant of protection title.

In the case the notification of results of substantive examination set a time limit for payment of fees as provided for in Point 29.4 of this Circular, the Applicant fails to pay the fee for publication of the protection title, fees for registration and grant of protection title during the time limit, the National Office of Intellectual Property shall refuse to grant the protection title. If during the time limit the Applicant has paid the fee for publication of the protection title, fees for registration and grant of protection title except for annual fee for the first year, the protection title shall be granted anyway, however its validity shall be suspended pursuant to Article 28.2b) of the Decree.

29.6. With respect to Applications containing many subject matters, if only some of the subject matters fall under the case mentioned in Point 29.5 of this Circular, the refusal shall apply only to those subject matters (a protection title shall be granted to the rest subject matters). In order to obtain a protection title, the Applicant must amend the specification in respect of the rest subject matters satisfying the requirements provided for in Point 6 of this Circular.

30. Time limit for substantive examination

30.1. Time limit for substantive examination is 12 months from the date of receiving the demand for substantive examination (if the demand is filed after the date of publication of the Application) or from the date of publication (if the demand for substantive examination is filed before the date of publication of the Application).

30.2. If during the substantive examination, the Applicant himself or at the request of the National Office of Intellectual Property amends, supplements documents of the Application, the time limit for substantive examination shall be extended by one month. If the Application is amended at the request of the National Office of Intellectual Property, the time for amendment, supplement of the Application shall not be included in the time limit for substantive examination.

30.3. Before expiration of the time limit for substantive examination, the National Office of Intellectual Property shall send the notification of results of substantive examination to the Applicant and the demander for substantive examination in accordance with Point 29 of this Circular.

Section 6. AMENDMENT OF APPLICATIONS

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31.1. Before National Office of Intellectual Property issues a notification of refusal to accept the Application, notification of refusal to grant a protection title, or decision of granting protection title, the Applicant, himself or at a request of the National Office of Intellectual Property, amends, supplements documents of the Application, including the separation of the Application (i.e. separation of one or several technical solutions described in the Application for invention/utility solution into one or many new Applications).

The Applicant shall submit the amended documents (to replace the ones submitted earlier) and a statement explaining the differences between the amended documents and the original one and pay the required fees.

31.2. Amendment and supplement of Application shall not broaden the scope (scale) of protection beyond the contents disclosed in the description and shall not change the nature of the subject matter described in the Application and shall ensure the unity of the Application. If the amendment has changed the scope (scale) of protection or the nature of the subject matter, the Applicant must file a new Application and re-start the procedures from the beginning.

31.3. Separated Applications shall retain the filing date/priority date(s) of the original Application. As for each separated Application, the Application filing fee and any other fees, charges shall be subject to payment if they were not paid for the original Application or for procedures which were independent of the original Application. Separated Applications shall be handled under the same procedures as for a new Application, but shall not be published if the separation of the Application was made after the publication of the original Application. The date of filing the demand for separation of Application shall be the date of amendment, supplement of the original Application in order to determine the time limit for examination of the original Application. The original Application (after separation) shall be handled further under the normal procedures, and the Applicant shall pay the fees for amendment, supplement of the Application.

31.4. The Applicant is entitled to request the record of changes of the name, address of the Applicant, the change of the Applicant (new Applicant as a result of assignment of the Application, change of the right to the Application resulting from inheritance, merging, separating entity according the judgment by the Court...). Request for recording changes shall be made in writing and the requester shall pay required fees. The request may cover changes of many Applications with the same contents of changes that should be recorded, provided that the Applicant pays required fees in respect of the related Applications.

31.5. In the case of converting the Application for invention into an Application for utility solution or vice versa in accordance with Article 13 of the Decree, procedures which were not conducted for the original Application, shall be handled further for the converted Application. Date of converting the Application shall be the date of amendment, supplement of the Application for the purpose of determining the time limit for examination of the converted Application.

The demand for conversion of an Application for invention into an Application for utility solution in accordance with Article 13.2 of the Decree shall be accepted in the case of refusal of granting a patent for invention because of lacking an inventive step.

Chapter III.

ASSESSMENT OF SUBJECT MATTER IN TERMS OF CRITERIA OF PROTECTION

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32.1. The subject matter described in the Application shall be considered irrelevant with requirements for granting patents for inventions/utility solutions, if the subject matter is not a technical solution or is not the use of a technical solution.

32.2. Technical solutions - subject matters for protection of inventions/utility solutions;

a) A technical solution - subject matter protected under invention/utility solution - is a combination of necessary and sufficient information about technical manner and /or technical means for resolving a specific problem.

b) A technical solution shall fall under the following categories:

- Technical solutions in the form of devices (instruments, machine/apparatus, equipment, elements, electric circuits...) which are expressed in a combination of information identifying an artificial product characterized by certain features (characteristics) of the structures, and the product has the function (effect)) for satisfying a certain human needs;

- Technical solutions in the form of substances (materials, substances, foodstuff, pharmaceutical products...) which are expressed in a combination of information identifying an artificial product which is characterized by features (characteristics) of the presence, proportion and the state of ingredients, having the function (effect) for satisfying a certain human needs;

- Technical solutions in the form of gene, plants, animals, change of genes, ...)

which are expressed in a combination of information about genetics, sport which are changed by the intervention of human being, capable of self-reproduction;

- Technical solutions in the form of processes (process of technology, method of diagnosis, prediction, forecast, control, treatment...) which are expressed in a combination of information identifying manners of conducting a specific process, work characterized by features (characteristics) of the order, conditions, measures, means for performing operations for achieving a certain purpose;

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d) In the following cases, subject matter described in the Application shall not be considered as technical solutions:

- The subject matter described in the Application is just an idea or an intention, is raised a problem, but not the solution for the problem, unable to answer the question: "how?" or/and "by what means?;

- The raised problem is not of technical nature and cannot be resolved by a technical manner (for example, various kinds of rules, games, mathematical, physical laws, theorems, methods and systems of organization, management, education, training, linguistic systems, methods of arrangement of information, development plan for a certain territorial region, the shape of a product bearing only aesthetic value ...);

- Natural products or determined by the nature, which are not products of human creativity.

33. Assessment of the applicability of a technical solution

33.1. In accordance with Article 4.3. of the Decree, a technical solution shall be considered applicable, if with the information about the nature of the technical solution given in the Description, it is possible to work the technical solution and achieve the results as described in the Description.

33.2. The technical Solution mentioned in the Application shall be considered "workable", if:

a) Information on the nature of the technical solution together with technical conditions is given clearly and adequately to the extent that it would make it possible for a person with average knowledge in the art to create, manufacture or/and use, exploit or/and work the technical solution;

b) The above mentioned creation, use, exploitation or the working of the technical solution shall be repeatable and give the same results identical to that indicated in the Description;

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a) The nature of the subject matter or the guidance for working the subject matter are contrary to the basic principles of science (for example, failing to comply with the law/principle of energy conservation ...);

b) The subject matter is composed of elements/components which are not technically connected or are impossible to connect together (combine, couple, bind,...);

c) The subject matter contains inner contradictions;

d) It is possible to work the subject matter only limited number of times (impossible to work repeatedly);

e) The working of the technical solution requires special skills which are impossible to transfer or explain to others;

f) Results achieved vary from time to time of working the technical solution;

g) The results achieved diverse from that described in the Application;

h) Lacking or failing to have sufficient most important guidance for working the technical solution;

i) Other relevant reasons.

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34.1. A technical solution shall be considered to have novelty, if it satisfies the conditions provided for in Article 4.1 of the Decree.

34.2. The minimum information source

a) To assess novelty of technical solution described in the Application, it is at least required to do information search in the following compulsory information sources (but not limited to searches in these minimum sources):

- All other Applications received by the National Office of Intellectual Property which are in the same IPC class as that of the subject matter described in the Application - taking into account the sub-class (third figure) and having earlier priority dates than the priority date of the Application, except for those Applications have not been or shall not be published;

- Patent Applications or/and patents granted by other Organizations, States within 25 years prior to the priority date of the Application which are contained in the patent database available at the National Office of Intellectual Property, with the range of search mentioned above;

b) Where necessary and possible, the search may be extended to scientific researches/reports, results of research programs ... in the same technical field, which have been published and available at the National Center for Scientific and Technological Information-Documentation.

34.3. Purpose of Search and Search Report

a) The purpose of search is to find technical solutions whose technical nature is similar or identical with that of the technical solution described in the Application, where:

- Two technical solutions shall be considered identical if all major technical features (characteristics) are identical or equivalent (replicable each other);

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- "Compatible technical solution" shall be the technical solution which is identical or similar to that described in the Application.

b) Search Report shall indicate the search field, scope of search and the search results (list of technical solutions found, indication of identical features, source of information, date of publication of the respective information) and full names of the person who made the report (the person who conducted the search).

34.4. Assessment of novelty of a technical solution

a) Assessment of novelty of a technical solution described in the Application shall be conducted by comparing basic features (characteristics) of the technical solution with the technical solution found as a result of search, where:

Major feature of a technical solution is the feature relating to the function, the effect, the structure, link, composition, ... together with other basic features that constituting a necessary and sufficient combination of features determining the nature (content) of the subject matter (including both the functions and effects);

Basic features of a technical solution described in the Application are contained in the Claim of the invention/utility solution. Basic features of a technical solutions described in other documents shall be embodied and detected in accordance with the described documents or the actual embodiment of the technical solution.

b) Corresponding to one point of the Claim, the technical solution described in the Application shall be considered as having worldwide novelty, if:

- No relevant prior art (comparable technical solution) has been found as a result of search; or

- Relevant prior art has been found, but the technical solution described in the Application has at least one basic feature which is absent from the comparable technical solution (the feature is so called "distinctive basic feature").

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35.1. Technical solution described in the Application shall be considered to be involving an inventive step if it satisfies the requirements set forth in Article 4.2. of the Decree. The assessment of the inventive step of the technical solution described in the Application shall be carried out under this Point.

35.2. Minimum required documentation When assessing the inventive step of a technical solution, it requires to carry out search in the minimum required documentation (but not limited to the documentation) as provided for in Point 34.2 of this Circular (except for those Applications which have not been published on the priority date of the Application).

35.3. Assessment of the inventive step

a) Assessment of the inventive step of the technical solution described in the Application shall be carried out by assessing basic distinctive feature(s) described in the Claim so as to make a conclusion:

- Whether or not the basic distinctive feature(s) are considered to be disclosed in the minimum required documentation; and

- Whether or not the combination/basic distinctive features are considered obvious.

b) Corresponding to one point of the Claim, a technical solution shall be considered as involving an inventive step if the incorporation of the basic distinctive feature in the combination of the basic features of the technical solution is the result of creative activity and is not obvious result of common knowledge in the art.

c) In the following cases, inter alia, with respect to one point of the Claims a technical solution shall be considered as not involving an inventive step if:

- The combination of main distinctive technical features are obvious (any person having average knowledge in the art would understand that to carry out the function or achieve the intended purpose it is inevitable to use the combination of the technical features and visa versa, when using the combination of technical features, it shall inevitably possible to achieve the respective purpose or carry out the function);

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- The technical solution is a simple combination of known technical solutions where the functions, purpose and effects are also just a simple combination of those of the known technical solutions.

d) Under this Point:

- Two technical features shall be considered identical if the have the same nature;

- Two technical features shall be considered similar if they have similar nature, the purpose and the way of achieving it are basically similar.

36. Assessment of patentability of a technical solution; Determination of scope (scale) of protection

If there is a firm ground to conclude that the technical solution described in the Application does not meet one of the protection requirements, the technical solution shall be considered unpatentable and the National Office of Intellectual Property shall refuse to grant patents for invention/utility solution. In the reverse case, the technical solution shall be considered patentable and National Office of Intellectual Property shall make a decision to grant a patent for invention/utility solution with the scope (scale) of protection as described in the Claims.

Chapter IV:

GRANT, REGISTRATION, APPEAL, SUSPENSION, INVALIDATION OF PROTECTION TITLES

Section 1: GRANT, RE-GRANT PROTECTION TITLES, THE DUPLICATES THEREOF

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37.1 Within 10 days from the date on which the Applicant had fully and timely paid all fees and service charges provided for in Point 29.4, National Office of Intellectual Property shall start the procedures for granting Protection Titles in accordance with the provisions under Article 23 and 26 of the Decree.

After the grant of the Protection Title, if detecting any shortcomings, the owner of the Protection Title is entitled to request National Office of Intellectual Property to make amendment the Protection Title. If the shortcoming is caused by the Applicant, the owner of the Protection Title shall pay the fees for the amendment or supplement. If the shortcomings are caused by the National Office of Intellectual Property, the owner of the Protection Title shall not pay the fees for amendment or supplement. The amendment shall not change the nature, subject matter, scope (scale) of protection.

37.2 From the date on which the National Office of Intellectual Property issued the Decision for granting the Protection Title, the Applicant shall not transfer or assign the Application to others. If a contract for assigning the Application has been signed between the Applicant and a third party but yet to proceed before the National Office of Intellectual Property, the Contract shall be changed to a Contract for assignment of the ownership over invention/utility solution in accordance with the newly granted Protection Title.

38. Right to request for granting, regranting Duplicates of Protection Titles and regranting protection Titles

38.1. In the case where industrial property rights are subject to common/joint ownership, the common owners who have not been granted a protection title in accordance with the provisions under Article 26.3 of the Decree, may file a request to the National Office of Intellectual Property for granting a Duplicate of the Protection Title, subject to payment of fees for granting the Duplicate of the Protection Title.

38.2. In the following cases, the owner of industrial property who has been already granted a Protection Title (including the Duplicate of the Protection Title) may request the National Office of Intellectual Property to re-grant the Protection Title or a Duplicate of the Protection Title, subject to payment of fees for granting the Protection Title or the Duplicate of the Protection Title.

a) The Protection Title or the Duplicate of the Protection Title is lost, subject to reasonable justification;

b) The Protection Title, the Duplicate of the Protection Title are damaged (torn to pieces, dirty, fade ... to the extent that it become unusable), provided that the damaged Protection Title, the Duplicate of the Protection Title are to be submitted for replacement;

39. Documentation for granting, re-granting Duplicates of Protection Title; re- granting Protection Titles

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a) Request for granting, re-granting Duplicates of Protection Titles or re-granting Protection Title (to be made under the format provided for in the Annex to this Circular);

b) Document justifying the reasons of the loss of the Protection Title, the Duplicates of the Protection Titles or damage thereof (if requesting the re-grant of the Protection Title or the Duplicates of the Protection Title);

c) Power of Attorney (if the Application filed via representative Agent);

d) Receipt of payment of fees for the granting of Protection Title or the Duplicates of the Protection Title.

40. Handling the dossier requesting the granting, the re-granting of Duplicates of Protection Title; the re-granting Protection Titles

40.1. National Office of Intellectual Property shall examine the Dossier for requesting the granting, re-granting of the Duplicates of the Protection Title or the Protection Title within one month from the date of receiving the Dossier. In the case where the Dossier satisfies the requirements under Point 39 of this Circular, National office of Intellectual property shall issue a decision to grant, re-grant the Duplicates of Protection Titles to the Protection Titles and make a record in the National Register.

40.2 The Duplicate of the Protection Title shall fully contain the information of the respective Protection Title. The re-granted Protection Title, the re-granted Duplicate of the Protection Title shall fully contain the information of the Protection Title or the first Duplicate of Protection Title and shall contain the indications "Duplicate" or "re-granted Protection Title".

40.3. In the case where the Dossier fails to meet the requirements under Point 39 of this Circular, National Office of Intellectual Property shall issue a Notification of refusal to grant the Duplicate of the Protection Title or Notification of refusal to re-grant the Protection Title, subject to indication of reasons of refusal.

Section 2. NATIONAL REGISTRATION, PUBLICATION OF DECISION FOR GRANTING PROTECTION TITLES

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41.1. National Register (Register) of inventions/utility solutions is the official, publicized database which contains full information on the legal status of the industrial property rights established by the State with respect to the inventions/utility solutions;

41.2. Register for inventions, Register for utility solutions contain respective items of each type of Protection Title, each item shall contain:

a) Information on the Protection Title (number, date of granting the Protection Title, the invention title, the scope (scale) of the protection, the term of protection, names and address of the owner of the protection Title, full name of the inventor;

b) Information on the Application for granting the Protection Title (Application number, application filing date, priority date of the application, name of the representative Agent (if available);

c) Any information concerning changes of the Protection Title, the legal status of the Protection Title (renewal, suspension, invalidation/revocation, recovery of validity); assignment, transfer of the right to use the invention/utility solution; number, date of granting and names of the person who has been granted, re-granted the Duplicates or the Protection Title;

41.3. The Register is made and stored in the paper, electronic forms or other forms by the National Office of Intellectual Property. Any one is entitled search the electronic Register (if available) or request the National Office of Intellectual Property to provide a copy of the Register (copy of relevant items of the Register), subject to payment of fees.

42. Publication of the Decision for granting Protection Titles

All granted Protection Titles shall be published by the National office of Intellectual Property in the Official Industrial Property Gazette in the second month from the date of issuing the Decision. The applicant shall have to pay the publication fee.

Information to be published shall include the information contained in the respective Decision; Abstract; one or several pictures or drawings (if any).

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43. Persons entitled to appeal, subject matters of appeal and time limit for filing an appeal

43.1. Within the time limit provided for in Article 27.3., persons entitled to make an appeal as provided for in Article 27.1 of the Decree, shall have the right to take procedures for appeal against the official Notification of refusal and other decisions of the National Office of Intellectual Property concerning the registration procedures for inventions/utility solutions.

43.2. The time limit for the first appeal provided for in Article 27.3 of the Decree applied in accordance with Article 31 of the Law of Appeal and Denunciation shall be 90 days from the date on which the persons entitled to appeal, received or knew the Notification, the Decisions of the National Office of Intellectual Property on the refusal to accept the Application, the granting or refusal of granting Protection Titles.

44. Dossier of Appeals

44.1. General requirements

Dossier of appeal shall comply with formalities provided for in Points 5.1.a) to 5.1.e) of this Circular. Each Dossier shall relate to one Decision or Notification that is appealed. One Dossier of appeal may also relate to several Decisions or Notifications if they have the same contents and reasons of appeal, provided that the appellant shall pay fees for appeal as provided for each Decision or Notification that is appealed.

44.2. Dossier of appeal shall include:

a) Appeal form as provided for in the Annex to this Circular;

b) Copy of the appealed Decision or Notification;

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d) Evidences supporting the appeal (if necessary);

e) Power of Attorney (if the Application filed through a Representative Agent);

f) Receipt of payment of fees.

44.3. Evidences are documents (fact/proof) or in kind (material proof) that are used to substantiate, justify the reasons for appeal.

Evidences must satisfy the following requirements:

a) Evidences can be documents written in foreign languages subject to the availability of a Vietnamese translation if required by the competent person in charge of handling the appeal;

b) In the case where evidences are documents in the name of individuals, organizations without a stamp or foreign individuals or organization, the signatures thereof shall be attested by the Public Notary or the competent agency ;

c) In the case where evidences are information carriers (publications, video types...), subject to each case it is required to indicate the origin, time of publication of the above documents, or to indicate the origin, time of publication of the information contained in the respective information carriers;

d) Evidences must accompany a document clearly describing the features that are directly related to the contents of the appeal.

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The appellant must ensure the honesty in providing evidences and shall be responsible for consequences of the inhonest provision of information.

46. Withdrawal of appeal dossier

46.1. The appellant can send a written notification about the withdrawal of the dossier of appeal at any time. If the withdrawal of the dossier of appeal is carried out by a representative industrial property agent, the right to withdraw the Appeal shall be indicated by the appellant in the Power of Attorney.

46.2. The withdrawn dossier shall be considered as if it was not filed. The dossier and paid fees shall not be subject to refund.

47. Handling of an appeal dossier

47.1. Within ten days from the date of receiving the appeal dossier, the competent person in charge of handling the appeal shall examine the dossier in respect of the formality requirements and issue a notification to the appellant whether the dossier of appeal is eligible for handling or not, where indicating the date of handling the dossier or indicating the reasons that the dossier is not handled.

47.2. The appeal dossier shall not be handled in the following cases:

a) The appellant did not have the right to appeal;

b) The dossier of appeal is filed beyond the time limit;

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48. Related party

48.1. With respect to those handled appeal dossiers , the competent person in charge of the handling of the appeal shall send a written notification of the contents of the appeal to the persons whose rights and interests are directly related ("related party") and fix a time limit for the person to express his opinion. The time limit is two months from the date of issuing the notification.

48.2. Related party is entitled to supply information, evidences justifying their arguments.

48.3. If during the time limit, the related party does not have any opinion, the appeal shall be handled based upon the opinion of the appellant.

49. Decisions of the handling of appeal

Based on arguments and evidences of the appellant and related parties, the person in charge of handling the appeal must issue a Decision of handling the appeal within the period provided for in Article 27.4 of the Decree.

Before issuing a decision of handling an appeal, the competent person in charge of handling the appeal shall notify the appellant and related party the arguments and evidences of the other party that have been used for handling the appeal as well as the intended decision of handling the appeal and fix a period of two months from the date of notification for related parties to express their views.

The time for the appellant and related parties to provide arguments, evidences at a request of the competent person in charge of handling the appellant shall be considered as the time for amendment or supplement of the dossier and shall not included in the time limit for handling the appeal.

50. The effect of the Decision of handling an appeal

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a) First decision of handling the appeal, if the appellant will not file a second appeal or make an administrative lawsuit; or

b) Decision of handling of the second appeal or the decision of the court, if the appellant makes a second appeal or make an administrative lawsuit.

Section 4. SUSPENSION, INVALIDATION OF A PROTECTION TITLE

51. Right to suspend, invalidate protection titles

Within the term of validity of a protection title, anyone can request the suspension, invalidation of the protection title in accordance to the provisions of Articles 28, 29 of the Decree under the order and procedures of this Section.

52. Dossier for requesting the suspension / invalidation of protection titles

52.1. A Dossier for requesting the suspension/invalidation of a Protection Title shall comply with the requirements as to formality provided for at Point 5.1.a) to 5.1. e) of this Circular.

52.2. A Dossier may apply for suspension/invalidation of a number of Protection Titles for the same reasons provided that the requester pays prescribed fees with respect to each Protection Title.

52.3. A Dossier requesting the suspension/invalidation of Protection Title(s) shall include:

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b) Evidences (if necessary);

c) The Power of Attorney (if application was filed via an IP representative Agent);

d) Receipt of payment of fees.

53. Handling Dossier requesting suspension/invalidation Protection Titles

53.1. Dossier requesting suspension/invalidation shall be processed in accordance with the procedures provided for in Points 47, 48, 49, and 50 of this Circular.

53.2. If failing to agree with the results of the National Office of Intellectual Property with respect to the handling the request for suspension/invalidation of Protection Titles, the requester or/and concerned party shall have the right to appeal against Decision or Notification in respect of the procedures provided for under Points 47, 48, 49 and 50 of this Circular.

53.3. Information concerning the suspension / invalidation of Protection Titles shall be published in National Industrial Property Gazette and shall be recorded in the National Register for inventions / utility solutions.

53.4. If the person requesting the suspension / invalidation of Protection Titles is the owner of the Protection Title, the National Office of Intellectual Property shall consider whether the suspension / invalidation shall affect the interests of a third party or not (whether or not exists a valid licensing contract in respect of the said subject matter), but shall not handle the Dossier in accordance with Point 53.1 and 53.2 of this Circular.

Chapter V:

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54. Procedures before the National Office of Intellectual Property Provisions on publication filing and on other related procedures before the National Office of Intellectual Property as prescribed in Article 15.2 and Article 15.3 of the Decree and Point 3 of this Circular shall also apply to international applications for inventions, utility solutions.

55. Application Receiving Office Competent Office in charge of receiving international applications is the National Office of Intellectual Property.

National Office of Intellectual Property shall be responsible for:

a) Receiving international applications originated from Vietnam;

b) Receiving and forward respective fees to the International Bureau and International Searching Authority in accordance with provisions under PCT;

c) Taking control over the payment of fees in terms of timeframe;

d) Checking and processing international applications originated from Vietnam in accordance with provisions under PCT;

e) Identifying the subject matter seeking for protection; if the subject matter seeking for protection is of the national secret, the following works shall not be continued and respective fees shall not be refundable to the applicant;

f) Sending a copy (dossier) of international applications originated from Vietnam to the International Bureau and one copy (the search copy) to the International Search Authority;

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56. Language:

International application of Vietnamese origin shall be filed with the National Office of Intellectual Property in English or Russian.

57. International Search Authority (ISA) and International Preliminary Examination Authority (IPEA)

As for those international applications of Vietnamese origin, competent ISAs and IPEAs are patent Offices, IP Offices of Australia, Austria, Russian Federation, Sweden, Republic of Korea and European Patent Office.

58. International application where Vietnam is designated

If Vietnam is designated in an international application, the National Office of Intellectual Property shall be the designated Office. In that case, in order to enter the national phase, within the time limit of 31 months from the priority date, the applicant shall pay the National Office of Intellectual Property:

a) Request for the granting of patent for invention/utility solution to be made in the form provided for in the Annex to this Circular;

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

c) Vietnamese translation of the international application: the specification, including the description, the claims, footnotes to drawings and the abstract (the published version or the originally filed version (if the application has not been published), and the amended version and the version explaining the amendment, if the PCT application amended in accordance with Article 19 of the Patent Cooperation Treaty);

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e) National fees and service charges.

59. International application where Vietnam is elected

If Vietnam is elected in an international application, the National Office of Intellectual property shall be the elected Office. In that case, if Vietnam is elected within the time limit of 19 months from the priority date, in order to enter the national phase, the applicant shall submit the National Office of Intellectual Property the following documents, within the time limit of 31 months from the priority date:

a) Request for the granting of patent for invention/utility solution to be made in the form provided for in the Annex to this Circular;

b) Vietnamese translation of the international application: the specification, including the description, the claims, footnotes to drawings and the abstract (the published version or the originally filed version (if the application has not been published), and the amended version and the version explaining the amendment, if the PCT application amended in accordance with Article 19 of the Patent Cooperation Treaty);

c) Specification and amended abstract (if the amended version mentioned in Point 59.b) of this Circular is available);

d) Vietnamese translation of the international preliminary examination report (if there is a request for substantive examination of the application);

e) National fees and service charges.

60. Claim of priority right

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61. Amendment, supplement of relevant documents during the national phase

Pursuant to Rule 51bis of the Regulations under the PCT Treaty, the applicant shall submit the Power of Attorney, the document for assignment of the right to file the application during the international phase within 34 months from the priority date.

In accordance with Article 28 and Article 41 of the PCT Treaty and Rules 52.1(b) and 78.1(b) of the Regulations under the PCT Treaty, during the national phase the applicant may make amendment, supplement of the application in accordance with Point 31 of this Circular. At the moment of entering the national phase, the applicant shall also be able to make amendment, supplement the specification in accordance with Point 31 of this Circular.

All amended documents submitted to the National office of Intellectual Property shall be made by the applicant in Vietnamese language.

62. Starting time for the handling international applications

The handling of international applications designating Vietnam or electing Vietnam at the national phase shall be commenced on the first date of the 32^nd month from the priority date, unless the applicant requests the early handling of the application.

63. Examination of international applications

International applications shall be subject to both formality examination and substantive examination in accordance with the procedures provided for applications (national applications).

64. International applications being considered withdrawn

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65. Fees and service charges

Applicants filing international applications originated from Vietnam shall pay prescribed fees and service charges at the rates and the procedures stated in the Regulations under the PCT and the Regulations of the Ministry of Finance.

AMENDMENT AND RENEWAL OF PROTECTION TITLES

Section 1. AMENDMENT OF PROTECTION TITLES

66. Entitlement of requesting for the recording of changes of protection titles

The owner of the protection title has the right to request the National Office of Intellectual Property to record any changes concerning the name, address of the owner of the protection title and changes concerning the ownership of the protection title (shift of the ownership as a result of inheritance, merging, separating, change of the legal form of business establishment or as a result of a decision by the court...). Person enjoying the rights of the owner of the protection title shall also have the right to request the recording of the changes concerning the ownership.

Person requesting the recording of the changes concerning the name, address and the ownership shall be subject to payment of prescribed fees for recording the changes.

67. Request for the recording of the changes concerning the protection title

To make the above changes, the owner of the protection title shall file a request for making relevant changes of the protection title, which include:

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b) The original of the protection title;

c) Documents certifying the change in the ownership (the certificate of the right of the heirship, certificate of merging, separating, a decision of the court...) (in the case of requesting the recording of the changes concerning the ownership of the protection title);

d) Receipt of payment of the fees for recording changes in the protection title;

e) The Power of Attorney (if the application was filed through an IP representative agent).

68. A single request for making changes of a number of protection titles

A request may refer to a number of protection titles and may also be incorporated into the requests provided for under Points 31.1, 31.2 and 31.4 of this Circular if proposed changes are of the same nature, provided that the person who filed the request shall pay prescribed fees for each protection title and/or applications concerned.

69. Handling of the request for making changes concerning the protection title

National Office of Intellectual Property shall handle the request for the recording of changes concerning the protection title within one month from the date of receiving the request. If the request is acceptable, the National Office of Intellectual Property shall make respective changes of the protection title, make the recording of the changes in the register and publish the changes in the National Industrial Property Gazette. On the contrary, if the request is not acceptable, the National Office of Intellectual Property shall notify the person who filed the request of its intention of refusal of making the changes with the indication of reasons of refusal and fix a time limit of two months from the date of issuing the notification for the person to make necessary corrections of shortcomings or to make an objection against the refusal. If during the time limit, the shortcomings have not been made or the correction is inadequate and/or no objection has been made or the objection is not relevant, the National Office shall issue an official notification of refusal of the request for making changes concerning the protection title.

Section 2. RENEWAL OF PROTECTION TITLES

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In order to renew the protection titles of inventions/utility solutions, the owner of the protection title must pay renewal fees within 6 months prior to the expiration of the term of protection. The renewal fees may be paid on a latter date, but not latter than 6 months from the date of expiration of the term of protection, but subject to the payment of 10% of the respective fees for the delay.

71. Calculation of the protection year

Each protection year is the one year period calculated from the end of the previous term of protection. The first year of protection is calculated from the date of granting protection title.

As for protection titles granted under the Regulations on innovations and inventions of 1981, the first year of protection is calculated from the priority date of the application. In the case where the last year of protection is less than 12 months, the renewal fees shall be calculated on monthly basis (the ratio of the number of months in the year multiply with the annual fees rate).

72. Recording of the renewal

National Office of Intellectual Property shall record the renewal in the national register, and at a request of the owner of the protection title, the renewal shall also be recorded in the protection titles.

73. Recovery of the validity of protection titles, legal consequences of the interruption of the validity

After the expiration of 6 months but not exceeding 12 months from the end of the term of protection, if the holder of the protection title fails to pay prescribed fees under Point 70 of this Circular, if the protection title has not been suspended at a request of a third party in accordance with the procedures provided for in Points 52 and 53 of this Circular, the validity of the protection titles shall be recovered, provided that the holder of protection title shall pay the fees for recovery and renewal of the protection title. Anyone who has been using inventions, utility solution during the interruption of the validity of the protection title, shall have the right to continue using the invention/utility solution, but not to expand the scope and the scale of the use.

Chapter VII

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74. Collection of fees and service charges

When receiving dossier/applications or any requests for any services, National Office of Intellectual Property shall check receipts of payment of fees, service charges.

If fees and service charges have not been paid as required, National Office shall make an invoice indicating items and amounts of fees, service charges and send the invoice to the applicant. Upon the payment, the applicant shall be given two copies of receipt, one of which is to be attached with the application as an evidence of payment of fees.

75. Refund of fees, service charges

Paid fees, service charges shall be subject to full or partial refund at a request of the applicant in the following cases:

a) The paid amount of fees, service charges exceeds the prescribed amount;

b) The case referred to under the second paragraph of Article 32(2) of the Decree.

76. Forms of refunding fees, service charges

76.1. The person requesting the refund has two options of getting the refund:

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b) Use the refundable fees, service charges to pay as fees, service charges for other services, procedures. In the first case (via intermediaries), the fees for the intermediaries are to be paid by the applicant. To get the refund of fees, service charges, the applicant shall file a request for refund of fees, service charges in accordance with a form issued by the National Office of Intellectual Property with indication of the preferred way of refunding.

76.2. If accepting the request for refund of fees, service charge, National Office of Intellectual Property shall make a notification of refund, indicating amount of refund, way of refund and send it to the applicant. The person refunded with fees, service charges shall sign the receipt of the refund of fees, service charges issued by National Office of Intellectual Property.

If not accepting the request for refund of fees, service charges, National Office of Intellectual Property shall send a notification to the applicant indicating reasons of refusal.

77. Extension of time limits

Time limits for amendment, supplement of documents at the request of National Office of Intellectual Property, and time limits for objection against decisions, intentions of the National Office of Intellectual Property shall be subject to an extension with the same period at a request of the applicant, which shall be subject to payment of the extension fees (fees for late handling of dossier).

78. Handling before time limits

The person in question is entitled to request National Office of Intellectual Property and other competent agencies to carry out the procedures before the time limits which shall be subject to payment of fees for handling dossier before time limits.

Subject to abilities and practical conditions, National Office of Intellectual Property and other competent agencies shall either accept or refuse the request for handling before time limits.

Chapter VIII

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79. Responsibilities of officials and people fulfilling public duties in the field of industrial property

79.1. Cards, officials or people working on con tract basis at the National Office of Intellectual Property and other competent agencies who are in charge of carrying out procedures under this Circular (hereinafter referred to as person in charge of public duties concerning industrial property) shall have the obligation to fulfill the legal provisions concerning their duties.

79.2. Persons in charge of public duties concerning industrial property, conducting acts infringing laws, shall be handled in accordance with Decree No 97/1998/ND-CP dated 17 November 1998 of the Government on measures and material liabilities against government officials and in accordance with the Labor Law.

79.3 Persons in charge of public duties concerning industrial property, conducting acts infringing laws, causing damages to others, shall have the responsibility to compensate the damage in accordance with Decree No 47/CP dated 3 May 1997 of the Government on the compensation of damage caused by government officials, and competent persons of judicial authorities (courts).

80. Appeals

The applicant and other related persons have the right to appeal against not only the decisions, notifications relating to the procedures for establishment of rights but also other decisions and notifications of the National Office of Intellectual Property and other competent agencies concerning industrial property procedures in accordance with legislation on appeal, denunciation and administrative procedures.

The order and procedures for appeals and handling of appeals stipulated under Articles 27 of the Decree and Points 47,48,49 and 50 of this Circular shall apply mutatis mutandis to the above decisions and notifications.

81. Regulations on the Applications, Procedures for Filing Applications for Protection of Inventions/Utility Solutions

Regulations on applications and procedures for filing applications for protection of inventions/utility solutions relevant to provisions of the Decree and this Circular shall be established by the Ministry of Science and Technology.

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This Circular shall replace Circular 3055/II-SHCN dated 31.12.1996 of the Ministry of Science, Technology and Environment on the procedures for establishment of industrial property rights.

This Circular shall enter into force 15 days after its publication in the Official Industrial Property Gazette.

ON BEHALF OF THE MINISTER
FOR SCIENCE AND TECHNOLOGY
VICE MINISTER




Bui Manh Hai