Overview Although Vietnam has a number of mechanisms for accelerating the patent examination process, most of them have not lived up to the expectations of applicants. However, a fast-track patent prosecution highway (PPH) program was opened for the first time between the Intellectual Property Office of Vietnam (IP Office) and the Japan Patent Office (JPO) in January 2016, creating opportunities for all applications originating from Japan. The PPH program has been rolled out in the following stages: After more than six years of implementation, this program is considered successful and can be extended to support Japanese enterprises in establishing patent rights in Vietnam. Effectiveness This program has many advantages, such as: Applications originating from Japan are usually of good quality with clear and coherent specification It is possible that the IP Office’s requirements for specifications are already very consistent with Japanese applicants’ way of drafting specifications thanks to the JPO’s training programs for the IP Office. Patents in Japan usually have a short examination timeline and are granted very quickly, even within the application filing timeline in Vietnam (12 months from the priority date for applications filed under the Paris Convention and 31 months from the priority date for applications filed as PCT national phase applications). The coordination between the JPO and the IP Office has been very good. PPH applications are processed in a quick and efficient manner. Japanese applicants and their representatives also often coordinate well with the IP Office to rectify formality shortcomings and avoid prolongation of the examination period. Although there are no official statistics from the IP Office, according to independent statistics for applications whose PPH requests were filed by Tilleke & Gibbins’ associate firm (one of the most prolific filers under the PPH), the examination period for applications under the PPH has been

Experts from Tilleke & Gibbins’ intellectual property team have written the Vietnam chapter of Practical Law’s Intellectual Property Transactions Global Guide 2022, a high-level comparative overview of intellectual property laws and regulations across more than 30 jurisdictions. The Intellectual Property Transactions Global Guide focuses on business-related aspects of intellectual property, such as the value of intellectual assets in M&A transactions, and the licensing of IP portfolios. The topics covered include the following: IP assignment IP licensing Research and development collaborations IP audits IP aspects of M&A Lending and security interests Settlement agreements Employee and consultant agreements Key issues in IP transactions To read the Vietnam chapter, please visit the Practical Law website or click on the link below.

Patent is an essential piece of the amended Law on Intellectual Property (“Amended IP Law”), which was passed by the National Assembly of Vietnam on June 16, 2022, and will take effect on January 1, 2023 (except for the regulation on protection of experimental data for agrochemical products, which will take delayed effect on January 14, 2024). Among the amended and supplemented contents of the Amended IP Law, there are notable patent-related amendments to Article 60 on assessing the novelty of inventions and Article 96 on grounds for invalidating patent protection titles. We discuss these changes below. Secret Prior Art Under Article 60.1 A significant amendment to Clause 1, Article 60 of the Amended IP Law on the novelty of inventions is to broaden the scope under which an invention can be considered to have lost its novelty. For the first time in Vietnam, “secret prior art” –a patent application with an earlier filing date or priority date but published on or after the filing date or priority date of an examined patent application – is introduced as a prior art document. In the diagram above, at the time of filing of the A2 application, secret prior art A1 has been filed but not yet published, making it inaccessible to the public. At this point, only the A1 applicant and the IP Office are aware of the A1 application. Under the current provisions of the 2005 IP Law, as amended in 2009 and 2019, the A1 patent application is not eligible to be a prior art document when assessing the novelty of A2. However, based on the “first-to-file principle” and the principle of priority, the IP Office has still had other approaches to bar the patentability of an A2 patent application if there is such an A1 application. By