Patent & Trademark Agents & Attorneys - Attorneys at  Law
 
In 2015, our firm will be present at:
- INTA Meeting, San Diego, USA, May 2-6
- Campus Asie 2015, Shanghai, CHINA, May 7-9
- AngkorPAT - IPR 2014, Siem Reap, CAMBODIA, Nov. 19-21
- AIPLA Meeting, Washington DC, Oct. 22-24
- APAA Meeting, Okinawa, JAPAN, Nov. 13-17

IP Services

 

PCT patent applications

The Patent Cooperation Treaty PCT route essentially provides an option to obtain patents in over 120 countries. It defers the cost, but does not avoid it altogether. It is very helpful in the early stages when precise country coverage is not known before the end of 12 months from the initial filing (for example potential licensees, or unexpected sales can affect the choice of countries in which patents are desired).  

Under the PCT, the international patent system is a procedure by which a single patent application may be filed in country member of the Paris Convention to obtain initial patent protection in a large number of signatory countries, the most important of which are the USA, Japan and the members of the European Patent Convention (EPC) which covers at the present time 27 European countries, as previously mentioned.

 

The main reason for filing an international application is to start the process of protecting an invention in a large number of countries by means of a single application procedure.

An international patent application, also commonly named a PCT application, is generally filed within a year of filing a national application in a country member of the Paris convention. As with the European route, the PCT application should claim the date of priority of the national application. If no priority is claimed, the PCT application as well as a European or other national applications should be filed before the invention is publicly disclosed.

Despite an important upfront fee, the PCT route is particularly suitable for speculative inventions, since it enables to procrastinate the national or regional phase, therefore the translations cost and the corresponding national fees. The PCT application remains in force for a limited period of time. After 30/31 months, it is necessary to continue protection by filing national or regional applications covering the countries of interest.

Forms and Fees

 

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                                                                                      Unitary Patent System

The future unitary patent will enable applicants to file and to protect invention with one single title that covers all the member states of the unitary patent system.

In 2012 Member States and the European Parliament agreed on the “patent package” – a legislative initiative consisting of two Regulations and an international Agreement, laying grounds for the creation of unitary patent protection in the EU. The patent package implements enhanced cooperation between 25 Member States (all Member States except Italy and Spain).

Following the adoption of the two Regulations in December 2012, the contracting Member States will proceed with the signature and ratification of the Agreement on a Unified Patent Court – the third and last component of the “patent package” setting up a single and specialised patent jurisdiction. Once the Agreement and the Regulations enter into force, it will be possible to obtain a European patent with unitary effect – a legal title ensuring uniform protection for an invention across 25 Member States on a one-stop shop basis, providing huge cost advantages and reducing administrative burdens.

Unitary patent - Ratification progress



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European Patent Office - National Patent route (INPI, DPMA, UKIPO)


Today, inventions can be protected in Europe either:
- by a bundle of European patents granted centrally by the European Patent Office (EPO), or
- by national patents, granted by the competent national authorities
such as the French INPI, German DPMA, Britisch UKIPO etc...

European & National Patents

Established by the Convention on the Grant of European Patents (EPC) signed in Munich 1973, the European Patent Office (EPO) is the outcome of the European countries' cooperation and determination to establish a uniform patent system in Europe. The EPO offers a centralised patent grant system administered on behalf of all contracting states. It receives European patent applications, establishes search reports and examines the patentability of inventions.

So far as other countries are concerned, as note above, the filing of an UK Application in effect gives you a twelve-month option period for filing Patent Application elsewhere. Patents operate mainly on a national basis, with a Patent in a particular country giving the Patent owner the right to prevent others from using the invention in that country and to prevent other from making or selling in, or importing into, that country articles incorporating the invention. There are a number of international arrangements, especially the European Patent Office (EPO) which provides a route by which a single Application procedure leads to grant of a Patent effective in up to thirty-eight European states, which are:


Contracting EPO States:

Code Member state
Since
AL
Albania
1 May 2010
AT Austria
1 May 1979
BE
Belgium
7 October 1977
BG
Bulgaria
1 July 2002
CH Switzerland
7 October 1977
CY Cyprus
1 April 1998
CZ
Czech Republic
1 July 2002
DE
Germany
7 October 1977
DK
Denmark
1 January 1990
EE
Estonia
1 July 2002
ES
Spain
1 October 1986
FI
Finland
1 March 1996
FR
France
7 October 1977
GB
United Kingdom
7 October 1977
GR
Greece
1 October 1986
HR
Croatia
1 January 2008
HU
Hungary
1 January 2003
IE
Ireland
1 August 1992
IS
Iceland
1 November 2004
IT
Italy
1 December 1978
LI
Liechtenstein
1 April 1980
LT
Lithuania
1 December 2004
LU
Luxembourg
7 October 1977
LV Latvia
1 July 2005
MC
Monaco
1 December 1991
MK
Former Yugoslav Republic of Macedonia  1 January 2009
MT  Malta
1 March 2007
NL
Netherlands
7 October 1977
NO
Norway
1 January 2008
PL
Poland
1 March 2004
PT
Portugal
1 January 1992
RO
Romania
1 March 2003
RS
Serbia
1 October 2010
SE
Sweden
1 May 1978
SI
Slovenia
1 December 2002
SK
Slovakia
1 July 2002
SM
San Marino
1 July 2009
TR
Turkey 

EPO extension States:

BA Bosnia and Herzegovina
ME Montenegro

Forms and Fees

                                                                                __________________________

 UK Patents (UKIPO)

The normal course patenting in the United Kingdom is to file initially at the UK Patent Office an informal or Provisional Patent Application. This must be done before there is any public disclosure of the invention, and provides a twelve-month period during which time the technical and commercial viability of the invention can be assessed before a full Patent Application is made. The filing of a Provisional Application also gives a twelve-month period in which to decide about Patent protection abroad. Any foreign Patent Application filed within this period are treated, in effect, as if they were filed on the same date as the original UK Application.
Forms and Fees

  

French Patents (INPI)

It is essential to have an Application actually on file at the French Patent Office INPI before you make any disclosure of the invention (apart from disclosures in circumstances of confidentiality).

The preparation and filing of a Complete Specification, Claims and Abstract must be undertaken, and Formal Drawings must be filed as required by the Patent Office. Once the complete papers have been filed, the Patent Office will carry out a search through earlier Patents and will issue a search report which gives an indication of the novelty of the invention.

The application will then proceed to publication.

Forms and Fees

 

German patents (DPMA)

The German patent applications have to be filed at the German Patent Office. Once the Examiner is satisfied that the invention is patentable, the Patent is granted and lasts for a term of twenty years from the date of the Complete Application, subject to payment of annual renewal fees.

It is possible to have the Patent Office carry out these procedures very much more quickly, at the Applicants request. This may be desirable for example if infringement occurs, or to support a licence agreement. It is also possible to pursue a rapid Patent application of this type while proceeding also with a European, National or International Application.

Utility model registration provides fast and low-cost protection of technical inventions. Utility model protection is also available for chemical substances, food and pharmaceuticals, but not for processes, such as manufacturing, working or measuring processes. Whereas it frequently takes several years to obtain a patent, a utility model may be registered within a few weeks after filing the application. Filing a utility model application is a fast way to get a fully fledged, enforceable IP right.

Forms and Fees

 

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                                          Community & National Trademarks - Corporate Logos - Domain Names  

Community trademarks

Accession of the European Community to the Madrid Protocol on 1st October, 2004
As of October 1, 2004, trademark owners from member countries of the Madrid Protocol will have the possibility to designate the European Community in their application for international trademark registrations as well as in international registrations which have already been registered. After the enlargement of the European Community on 1st May 2004, trademark owners will then be able to obtain protection in 25 member states with only one designation. They will also be able to use a Community trademark application or registration as the basis for an international application under the Madrid Protocol.

If the activities of the company extend beyond a single country, or are likely to in the foreseeable future, the registration of a Community Trademark covering all territories of the European Union is recommended. The procedure are similar to those which apply in a country of the European Union.

Since 2004 and 2007, 12 more countries joined the EU which has now 27 member states:

Cyprus

Lithuania

Czech Republic

Malta

Estonia

Poland

Hungary

Slovak Republic

Latvia

Slovenia

All CTM Registrations and Applications granted or pending at the time the new Member. States join the EU will automatically be extended to those Member States without the requirement for any further administrative steps or fees. However, the use of those extended Marks may be prevented by owners of valid, earlier, conflicting rights in those additional countries.

Consequently, the cost of a CTM will inevitably rise in order to reflect this wider geographical scope. However, the applications filed before a certain date will, if successful, ultimately provide protection in 27 countries.  

Forms and Fees

 

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UK trademarks 
 

The rule of "first to file" also applies to trademarks. In the UK, rights in a Trademark arise principally from an application to register it, which has the advantage of establishing exclusive rights quite quickly. Other advantages of registration are that it makes it less likely that competing traders will adopt the same Trademark inadvertently, and that use of your own Registered Trademark cannot infringe anyone elses Registered Trademark rights.

If a Trademark has been chosen, we strongly recommend that a trademark agent conduct a search to determine whether it will conflict with any Trademark already registered or pending. Assuming that the Mark is free for use, it would then be advisable to apply immediately to register the Trademark.

Registration is only possible if the Trademark is distinctive, i.e. it does not consist of words or symbols which should be available to anyone to use. Thus, a Trademark which simply describes the goods (e.g. DAIRY for butter) would not be registrable. Other Trademarks may not be distinctive when they are first adopted, for example surnames or geographical designations, but such a Trademark may be registered if it can be shown that it has in fact become distinctive as a result of acquiring reputation through use.

Forms and Fees

 

 

French Trademarks 
 

If a Trademark has not been selected, it would be useful to consult a trademark agent at an early stage with a number of possible trademarks. This would allow the trademark agent to identify any problems from existing Trademark Registrations, and advise on the registrability of each of your proposed Trademarks, before you commit substantial expenditure to publicity and packaging.

Once the Trademark has been filed, it is examined, and if found acceptable it is advertised in the weekly Trademark Journal to give third parties the opportunity to oppose. Assuming no opposition, the Trademark is then registered for ten years calculated from the date of filing the Application, and therefore can be kept in force indefinitely by renewal at intervals of ten years.

Forms and Fees

 

 

German trademarks

Trade mark protection in Germany arises from the entry in the register of the German Patent and Trade Mark Office and is subject to a prior application. Trade mark protection may also arise from due to intensive use of a sign in the in course of trade or from the fact that a sign is well-known. Registration of a trade mark confers to its owner the exclusive right to use the trade mark in relation to the protected goods and/or services. Trade mark owners can sell and assign their trade marks anytime. The owner of a trade mark can grant others a right of use of the trade mark (trade mark license). A trade mark can be renewed indefinitely and last forever. If the renewal fee is not paid every ten years, the registration will be cancelled.
Forms and Fees

 

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Community & National Designs


Community Registered Designs


According to Art. 19 (1) CDR a registered Community design confers the right to prevent others from “using” it. The scope of protection encompasses any design which does not produce on the informed user a different overall impression (Art. 10 (1) CDR). No product falling within the scope of protection of a registered Community design may be made, offered, put on the market, imported or exported for using the product, or stocked for those purposes (Art. 19 (1) CDR).

Although the scope of protection conferred by a registered Community design is identical to the scope of protection of an unregistered Community design, the rights conferred by the latter have the additional requirement that the use results from “copying” (Art. 19 (2) CDR). Copying requires knowledge of the protected design. Therefore, if a design results from an independent work of creation by a designer, it does not constitute copying.

In practice, the holder of an unregistered Community design has to provide facts allowing the conclusion that the designer of the purportedly infringing product knew or could have known this design. In practice, a designer would seek presentation of his design on an official or officially recognized international fair, allowing not only claiming a right of priority for the purposes of filing for a registered design within six months (cf., Art. 44 CDR), but also providing the opportunity to obtaining evidence for making the design available to the circles specialized in the sector concerned, operating within the Community. Please note that Art. 19 (2) S. 2 CDR provides a rule of presumption in that it does not constitute copying if the contested use results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the unregistered Community design. In practice, substantial similarity of the designs show prima facie that the copy does not result from an independent work.

Forms and Fees

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British Registered and Unregistered Designs

On 1 October 2006, the UK designs registration system will change with the coming into force of the Regulatory Reform (Registered Designs) Order 2006, the Registered Designs Rules 2006 and the Registered Designs (Fees) Rules 2006. This means that customers will be able to use a new multiple application form which will be quicker and cheaper than making single applications, and a new option to defer publication of any design by up to 12 months will be introduced. The examination process will be simplified with the cessation of novelty examination. 
Forms and Fees

 

French Registered and Unregistered Designs

A design with a new character, that is to say an overall visual impression different from that of previous designs, may be subject, in addition to protection by copyright, of protection by the law of designs. To this end, an application for registration, including a reproduction of the design claimed, must be filed with the INPI. The right conferred by a registered design allows the holder to prevent any unauthorized use of that design by a third party. This monopoly is granted to the holder for five years, renewable for periods of five years to a maximum of 25 years. The choice of protection by the right design to complement the protection without formalities of copyright, has the advantage of constituting evidence of the date of creation.
Forms and Fees

 

German Registered and Unregistered Designs

Since  1st June 2004, a new German Design Model Act is entering into force - Spare Part Protection remains possible:
Germany is harmonizing its national Design Model Act in compliance with the European Directive 98/71/EC of October 13, 1998 on the legal protection of designs. With effect from June 1, 2004, the new German Design Model Act enters into force.
Forms and Fees


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                                                                            Intellectual Property in CAMBODIA  
 

 

To restore both people’s awareness as well as administrative implementation for the protection of this major trade-related field, the Government of Cambodia has initiated many efforts hoping that it will contribute a significant part to the development of the Cambodian economy in the long-run by :
- encouraging foreign direct investment,
- promoting the transfer of technologies,
- creating confidence among local and foreign traders,
- promoting research & development,
- creating local jobs, and
- expanding Cambodia’s trading activities with its trading partners.

These initiatives include the establishment of the Intellectual Property Division under the supervision of the Ministry of Commerce,
- setting up an Inter-Ministerial Committee to oversee the three areas of intellectual property (Patents, Trademarks, and Copyrights), drafting of the three intellectual property laws, and
- sending key operational staff members for overseas training in Japan, Europe (ECAP) and Singapore.

 As a member of the ASEAN, Intellectual Property Rights has become one of the hot topics of national interest after the accession of Cambodia to the World Trade Organization (WTO) in 2004. Strictly implementing intellectual property laws/ regulations, including the implementation of International Treaties and Conventions such as the Paris Convention, the TRIPs Agreement ...etc., would lead to a temporary negative impact for Cambodia. These constraints need both a devoted timeframe for adjustment as well as technical cooperation and assistance of developed countries as mentioned in article 67 of the TRIPs Agreement

Administrative Structure


The responsibility of the three key areas of intellectual property is divided among three ministries:
- Trademark  (sub decree) is under the Ministry of Commerce,
-
Patent  (Procedure grant) is under the Ministry of Industry, Mines and Energy, and
- Copyright  (Moral Right) is under the Ministry of Culture and Fine Arts.

Trademark filing in Cambodia:

To apply for registration of trademarks or service marks in the Kingdom of Cambodia, each applicant shall submit to the IP department of the Ministry of Commerce the following documents:
- 1 copy of the application for registration
- 1 copy of the power of attorney certified by a lawyer of a notary public
- 15 specimens of mark.

After a substance examination fo the complete and authentic documents, an official acknowledgement and registration certificate of the trademarks or service marks are issued to the applicants.

The IP department of the Ministry of Commerche can dismiss an application which is not legitimate. It can also remove any trademarks or service marks that have already been registered.

Examples of non-legitimate applications:
- trademarks or service marks that are likely to mislead the public
- trademarks or service marks that are used in the public domain
- trademarks or service marks that are descriptive by showing the characteristics of goods or services to which they relate, such as the kind, quality or quantity etc...
- trademarks or service marks that consist of shape of goods or forms of goods
- trademarks or service marks that are contrary to morality, public order, customs or laws
- trademarks or service marks that are submitted for registration without the consent of the owners
- trademarks or service marks that are substantially identical to trademarks or service marks already registered
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                                                               Law on Investments in CAMBODIA 
 

The investment law was adopted by the National Assembly in Phnom Penh, on August 4, 1994.
 


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                                                                Intellectual Property in INDONESIA

Indonesia is a member of:
- World Intellectual Property Organization (WIPO) since December 1979
- Paris Convention since December 1950
- Hague Agreement (International Deposit of Industrial Designs) since December 1950
- Berne Convention (Literary and Artistic Works) since September 1997
- Patent Convention Treaty (PCT) since September 1997
- WCT (WIPO Copyright Treaty) since March 2002
- WPPT (WIPO Performances and Phonograms Treaty) since February 2005
- World Trade Organization (WTO) since January 1995 and signatory to TRIPS agreement
- Association of SouthEast Asia Nations (ASEAN) since August 1967
- Asia Pacific Economic Community (APEC) since November 1989


IP Administrative Structure of Indonesia:

The responsibility of intellectual property is under the Ministry of Law and Human Rights :
Industrial Property is handled by the Directorate General of Intellectual Property Rights, under the Ministry of Law and Human Rights, and
- Copyright is also handled by the Directorate General of Intellectual Property Rights, under the Ministry of Law and Human Rights.


Patent filing in Indonesia:

Patents are granted for inventions which are new, inventive and have industrial application. The term of protection is 20 years from the filing date.
Inventions which are not inventive can be protected by a simple Patents for new products that have practical use capable of industrial application. They are granted for 10 years. 

To apply for patent & petty patent, each applicant shall submit the followings documents:
- applicant's name, address, nationality, occupation etc..
- translation in Indonesian of the specification
- certified priority documents  
- notarized Power of Attorney
- deed of assignment (if the applicant and inventor are not the same entity)
- statement of the applicant's rights (if the applicant and inventor are the same entity)

After formalities examination, the application is published. Afterwards, during 6 months an opposition may be filed by any interested party.

Sustantive examination of invention patents must be requested within 36 months but may not commence until the six months publication opposition period has expired.

Simple patents are automatically examined without examination request.

Design filing in Indonesia:

To apply for Design, each applicant shall submit the followings documents:
- applicant's name, address, nationality, occupation etc..
- translation in Indonesian of all documents
- certified priority documents  
- notarized Power of Attorney
- deed of assignment (if the applicant and inventor are not the same entity)
- statement of the applicant's rights (if the applicant and inventor are the same entity)

Three months after the filing date, the application is published in the Designs Gazette.
A novelty examination is performed against existing registered designs.

An opposition period starts from the publication date for three months.

A registration certificate is issued 6-9 months after the filing date.


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                                                Intellectual Property in LAO People's Democratic Republic


Lao is a member of:
- World Intellectual Property Organization (WIPO) since January 1995
- Paris Convention since October 1998
- Patent Convention Treaty (PCT) since June 2006

Lao has the status of WTO Observer.

IP Administrative Structure of Lao:

The responsibility of the two key areas of intellectual property is divided among two ministries:
- Trademark and Patent are under the Science Technology and Environment Agency Prime Minister's office,
and
- Copyright  is under the Ministry of Information and Culture.

Trademark filing in Lao:

To apply for registration of trademarks or service marks in Lao, each applicant shall submit to the IP department of the Agency the following documents:
- 1 copy of the application for registration including the list of goods or services with a description of the characteristics and qualities
- 1 copy of the power of attorney certified by a lawyer of a notary public
- 10 specimens of mark

" Collective mark " means a trademark used with goods or services of different enterprises who are using the same mark under the control of the registered owner of the collective mark. The application for registration of a collective mark shall contain documents pursuant to the requirements defined in article 7 with, in addition, the rules governing the use of the collective mark.


After a substance examination fo the complete and authentic documents, an official acknowledgement and registration certificate of the trademarks or service marks are issued to the applicant by the Science, Technology and Environment Organization. The certificate of registration is then published.

The certificate of registration of trademarks shall be valid for a period of ten years from the filing date of the application for registration and may be renewed every ten years.


The IP department of the Agency can dismiss an application which is not legitimate. It can also remove any trademarks or service marks that have already been registered.

Examples of non-legitimate applications:
-
An unclear trademark which is incapable of distinguishing the goods or services of one enterprise from those of other enterprises is submitted;
- A mark
is contrary to the national cultural morality and the public order;
-
A mark is likely to mislead the public or trade circles, in particular as regards the geographical origin, nature or characteristics of the goods or services;
-
A mark is identical with, or is an imitation of, or contains as an element, an armorial bearing, flag or emblem, national typical culture or historical site, a name or abbreviation of any state, intergovernmental organisation or organisation created by an international convention, a mark possess official sign or hallmark relating to the control and certification of any state or international organisation, unless authorised by state or organisation concerned;
-
A mark is identical with, or confusingly similar to a trademark or trade name of goods or services which are widely well known.



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                                                                          Intellectual Property in THAILAND


Thailand is a member of:
- World Intellectual Property Organization (WIPO) since December 1989
- Berne Convention (Literary and Artistic Works) since July 1995
- World Trade Organization (WTO) since January 1995 and signatory to TRIPS agreement
- Association of SouthEast Asia Nations (ASEAN) since August 1967
- Asia Pacific Economic Community (APEC) since November 1989

Thailand is not a member of:
- Paris Convention
- Patent Convention Treaty (PCT)
However, priority claims can be made within 12 months from first filing date in other countries on a reciprocal basis (if the first filing country allow Thai companies or individuals to claim priority, and priority claims based on applications filed in WTO member countries, will be accepted automatically.

IP Administrative Structure of Thailand:

The responsibility of intellectual property is under the Ministry of Commerce :
Industrial Property is handled by the Department of Intellectual Property under the Ministry of Commerce,
and
- Copyright is also handled by the Department of Intellectual Property under the Ministry of Commerce.

Patent filing in Thailand:

Patents are granted for inventions which are new, inventive and have industrial application. The term of protection is 20 years from the filing date.
Inventions which are not inventive can be protected by Design Patents for new product designs and Petty Patents (Utility Model) for new inventions capable of industrial application. They are granted for 10 years. 

To apply for patent & petty patent, each applicant shall submit the followings documents:
- applicant's name, address, nationality, occupation etc..
- translation in Thai of the specification
- certified priority documents  
- notarized Power of Attorney
- deed of assignment (if the applicant and inventor are not the same entity)
- statement of the applicant's rights (if the applicant and inventor are the same entity)

After publication, there is 90 days opposition period.

Sustantive examination of invention patents must be requested within five years of publication. No substantive examination of petty patents unless requested by a third party.

Design filing in Thailand:

To apply for Design, each applicant shall submit the followings documents:
- applicant's name, address, nationality, occupation etc..
- translation in Thai of all documents
- certified priority documents  
- notarized Power of Attorney
- deed of assignment (if the applicant and inventor are not the same entity)
- statement of the applicant's rights (if the applicant and inventor are the same entity)

After publication, there is 90 days opposition period.



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                                                                          Intellectual Property in VIETNAM   

Vietnam is a member of:
- Paris Convention since March 1949
- World Intellectual Property Organization (WIPO) since July 1976
- Patent Convention Treaty (PCT) since March 1993
- Berne Convention (Literary and Artistic Works) since October 2004
- Madrid Agreement (International Registration of Marks) since March 1949
- Madrid Protocol (International Registration of Marks) since July 2006
- Geneva Convention (Unauthorized Duplication of Phonograms) since July 2005

Vietnam is also member of:
- APEC since November 1998
- ASEAN since July 1995
- UPOV since December 2006

Vietnam has the status of WTO Observer.

As a member of the PCT, the time limit for entereing the national phase in Vietnam is 31 months for both applications designating Vietnam under PCT chapter I and applications electing Vietnam under PCT chapter II.

IP Administrative Structure of Vietnam:

The responsibility of the two key areas of intellectual property is divided among two ministries:
Industrial Property is handled by the National Office of Intellectual Property (NOIP) of the Ministy of Science, Technology and Environment,
and
- Copyright is handled by the Copyright office of Vietnam.

Patent filing in Vietnam:

Patents are granted for inventions which are new, inventive and have industrial application. The term of protection is 20 years from the filing date.
Inventions which are not inventive can protected by Utility Model for new product designs or new inventions capable of industrial application. They are granted for 10 years from the filing date. 

To apply for patent & utility model, each applicant shall submit the followings documents:
- applicant's name, address, nationality, occupation etc..
- translation in Vietnamese of the specification
- certified priority documents and its translation if requested by the Patent office. 
- notarized Power of Attorney
- deed of assignment (if the applicant and inventor are not the same entity)

Sustantive examination of invention patents must be requested within a time limit unless a deferred examination is filed in due course. 


Disclaimer: This is a general summary and should not be relied upon. For more details, please contact us.

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