Procedure and Fees Regarding Patent Cancellation in Vietnam

1. Understanding the Grounds for Cancellation

Protecting your inventions through patents is crucial in the modern world. However, situations might arise where a granted patent needs to be canceled. This article delves into the procedures and fees associated with patent cancellation in Vietnam, drawing insights from the provided articles.

Understanding the Grounds for Cancellation:

Articles 1 and 2 outline two main scenarios for patent cancellation in Vietnam:

1. Full Cancellation: This occurs when the entire patent is deemed invalid from the beginning (ab initio). Grounds for full cancellation include:

• Applying without adhering to security control regulations (e.g., not disclosing inventions related to national defense before filing abroad).
• Failing to disclose or incorrectly disclosing the origin of genetic resources used in the invention.

2. Partial or Full Cancellation: This involves revoking all or part of a patent's validity due to specific issues:

• The applicant lacked the right to register the invention or did not obtain proper assignment from the rightful owner.
• The invention doesn't meet the patentability requirements (novelty, non-obviousness, industrial applicability).
• Amendments or supplements broaden the invention's scope beyond the original application.
• The invention's disclosure is insufficient for someone with relevant technical knowledge to replicate it.
• The patented invention exceeds the scope disclosed initially.
• The invention doesn't comply with the "first-to-file" principle.

The Cancellation Process:

Article 1 outlines the basic steps:

1. Petition: Any individual or organization can file a petition with the National Office of Intellectual Property (VNIPO) requesting cancellation, providing supporting evidence.
2. Response: The VNIPO notifies the patent owner and allows them to submit a response within two months.
3. Investigation: The VNIPO re-examines the patent regarding its validity, regardless of the owner's response.
4. Decision: Within 6-10 months (potentially longer depending on complexity), the VNIPO issues a decision to cancel all/part of the patent or reject the petition.

Appealing the Decision:

Dissatisfied parties can appeal the VNIPO's decision with the Minister of Science and Technology or through an administrative court case.

Fees Associated with Cancellation:

While the articles don't explicitly mention fees, it's crucial to inquire with the VNIPO or legal professionals about any potential costs associated with filing a cancellation petition, responding to the petition, and appealing decisions.

Additional Considerations:

• Seeking legal guidance is recommended, especially for complex cases.
• The cancellation process can be lengthy, so patience is necessary.
• Maintaining accurate records and documentation is vital throughout the process.

2. The Cancellation Process

The process of canceling a patent in Vietnam can seem daunting, but understanding the steps involved can empower you to navigate it effectively. This detailed explanation incorporates insights from the provided articles:

Initiating the Cancellation Request:

1. Petition Preparation:

• Gather evidence supporting your claim for cancellation, aligning with the grounds outlined in the previous section.
• Prepare a formal petition document outlining the specific reasons for requesting cancellation and referencing relevant legal provisions.
• Ensure the petition includes all necessary details, such as your identity, the patent number you're challenging, and the specific claims you're contesting.

2. Submission to VNIPO:

• File the petition and supporting evidence with the National Office of Intellectual Property (VNIPO).
• Pay any applicable fees associated with filing the petition (if any).

Responding to the Petition (For Patent Owner):

Notification and Response:

• If you're the patent owner, the VNIPO will notify you of the cancellation request and provide a copy of the petitioner's documents.
• You have two months to submit a written response to the petition, addressing the petitioner's claims and providing counter-arguments.
• You may also submit additional evidence to support your position.

VNIPO Investigation and Decision:

1. Independent Re-examination:

• Regardless of your response (or lack thereof), the VNIPO will conduct a thorough re-examination of the patent, evaluating its validity against the grounds for cancellation presented in the petition.
• This investigation may involve technical expertise and analysis of the invention and relevant legal provisions.

2. Decision Issuance:

• Within 6-10 months (potentially longer for complex cases), the VNIPO will issue a decision on the cancellation request.
• The decision can be:
  • Full Cancellation: The entire patent is declared invalid ab initio.
  • Partial Cancellation: Specific claims within the patent are revoked, while others remain valid.
  • Rejection of Petition: The VNIPO upholds the patent's validity.

Appealing the Decision (Optional):

Dissatisfied Parties:

• If you disagree with the VNIPO's decision, you have the right to appeal within 3 months.
• You can appeal to:
  • The Minister of Science and Technology: This involves filing a complaint outlining the grounds for your appeal.
  • The Administrative Court: This initiates a legal case challenging the VNIPO's decision.

Important Considerations:

• The burden of proof lies with the petitioner to demonstrate the grounds for cancellation.
• Seeking legal counsel is recommended, especially for complex cases or navigating appeals.
• Maintained accurate records and documentation throughout the process.
• The timeline mentioned is an estimate, and the actual processing time can vary depending on the complexity of the case.

3. Appealing the Decision

While the VNIPO's decision concludes the official cancellation process, dissatisfied parties have the right to appeal. Here's a detailed breakdown of the available appeal options in Vietnam:

Who Can Appeal?

• Both the petitioner and the patent owner can appeal the VNIPO's decision if they disagree with its outcome.
• The petitioner might appeal if the patent is not fully canceled, or their arguments are not addressed.
• The patent owner might appeal if the VNIPO partially or fully cancels the patent.

Timeframe for Appeal:

• You have 3 months from the date of receiving the VNIPO's decision to file an appeal.

Available Appeal Options:

1. Appeal to the Minister of Science and Technology (MOST):

• This option involves submitting a written complaint to the MOST outlining the specific reasons for your appeal and highlighting any errors or inconsistencies in the VNIPO's decision.
• The MOST will review your complaint and may:
  • Uphold the VNIPO's decision.
  • Instruct the VNIPO to reconsider the case.
  • Issue their own decision on the appeal.

2. Appeal to the Administrative Court:

• This option initiates a legal case against the VNIPO's decision in the administrative court system.
• You will need to file a formal lawsuit and follow the court procedures, which might involve presenting evidence, attending hearings, and legal representation.
• The court will ultimately issue a judgment that either:
  • Upholds the VNIPO's decision.
  • Overturns the VNIPO's decision.
  • Remands the case back to the VNIPO for further consideration.

Important Considerations:

• Each appeal option has its advantages and disadvantages. Consult with a legal professional to determine the best course of action for your specific case.
• Appealing to the MOST might be faster and less expensive than going through the court system, but the scope of review might be limited.
• Appealing to the court offers a more comprehensive review but can be time-consuming and costly, requiring legal expertise.
• Gather all relevant evidence and documentation to support your appeal arguments.
• Understand that appealing the VNIPO's decision adds another layer of complexity and potentially delays the overall process.

By understanding the available appeal options and their nuances, you can make an informed decision about challenging the VNIPO's decision and increase your chances of a successful outcome.

Disclaimer: This information is for general guidance only and does not constitute legal advice. Please consult with a qualified lawyer for specific legal advice regarding your situation.

4. Fees Associated with Cancellation

•  VND 150,000/ 01 application;
• Fee for formality examination: VND 180,000/ 01 independent point;
• Fee for formality examination from page 7 of the description onward: VND 8,000/ 01 page;
• Fee for publication of valid application: VND 120,000/ 01 application;
• Fee for publication of valid application from the 2nd image onwards VND 60,000/ 01 image;
• Fee for examination of requesting priority (if any): VND 600,000/ 01 priority application;
• Fee for the patent search for the examination process: VND 600,000/ 01 independent point;
• Fee for substantive examination: VND 720,000/ 01 independent point;
• Fee for substantive examination from page 7 of the description onward: VND 32,000/ 01 page.

5. Additional Considerations

Understanding the core procedures and potential fees associated with patent cancellation in Vietnam is crucial. However, navigating the process effectively requires considering several additional factors:

1. Time Commitment and Delays:

• The entire cancellation process, from petition filing to final decision, can take 6-10 months, with complexities potentially extending it further.
• Appeals to the MOST or the court system add another layer of time and complexity.
• Be prepared for potential delays due to technical evaluations, evidence analysis, or administrative procedures.

2. Importance of Evidence and Documentation:

• Gather strong, compelling evidence to support your claims, whether you're the petitioner or the patent owner.
• Maintain meticulous records and documentation throughout the process, including communication records, expert reports, and relevant legal documents.
• This meticulousness can strengthen your position and facilitate smooth processing by the VNIPO or the courts.

3. Seeking Legal Expertise:

• While not mandatory, consulting a qualified intellectual property lawyer is highly recommended, especially for:
  • Complex cases involving intricate legal arguments or technical aspects.
  • Navigating appeals and litigation processes requiring legal expertise.
  • Understanding the nuances of Vietnamese intellectual property law and regulations.
  • Minimizing potential risks and maximizing your chances of a successful outcome.

4. Alternative Dispute Resolution (ADR):

• Consider exploring mediation or arbitration as alternative dispute resolution mechanisms before initiating appeals.
• ADR can be quicker, less expensive, and more amicable than formal court proceedings, especially for less complex cases.
• Both parties must consent to ADR, and the outcome might not be legally binding.

5. Maintaining Professionalism and Communication:

• Throughout the process, maintain professionalism and respectful communication with all involved parties, including the VNIPO, legal representatives, and the other party.
• Clear and concise communication can avoid misunderstandings, facilitate smoother progress, and potentially create opportunities for amicable settlements.

6. Staying Updated on Legal Changes:

• Intellectual property laws and regulations can evolve. Stay informed about any relevant updates to ensure your understanding and actions align with the current legal landscape.
• Consulting legal professionals or regularly checking official websites can help you stay current.

7. Emotional Toll and Stress Management:

• Patent cancellation processes can be stressful and emotionally challenging.
• Consider seeking support mechanisms like stress management techniques or professional counseling to manage the emotional impact effectively.

By carefully considering these additional factors and seeking appropriate guidance, you can approach the patent cancellation process in Vietnam with greater clarity, preparedness, and potential for a successful outcome.

Disclaimer: This information is for general guidance only and does not constitute legal advice. Please consult with a qualified lawyer for specific legal advice regarding your situation.

6. Conclusion

Navigating the intricacies of patent cancellation in Vietnam requires a comprehensive understanding and careful planning. This article has equipped you with the essential knowledge, from the grounds for cancellation and the procedural steps to potential fees and additional considerations. Remember, the process can be complex, and seeking professional legal guidance is invaluable.

By proactively gathering evidence, staying informed, and considering alternative dispute resolution options, you can increase your chances of a successful outcome. Whether you're seeking to challenge a patent or defend your own, this guide serves as a starting point for informed decision-making and effective navigation through the process.

Remember, intellectual property rights are crucial for innovation and protecting your inventions. Utilize this knowledge responsibly and ethically, and strive to contribute to a fair and balanced intellectual property landscape in Vietnam. f you need further explanation on this subject, please don't hesitate to contact us through email at lienhe@luatminhkhue.vn or phone at: +84986 386 648. Lawyer To Thi Phuong Dzung