How to Select a Patent Attorney?

Could you use a little help protecting your invention? If so, an attorney skilled in patent law is your best bet.

As you can imagine, conveying your invention to someone who knows nothing about it will be difficult.  Therefore, it is best if you are in direct contact with your patent attorney. You can meet in person and show the patent attorney any prototypes or drawings you may have to help illustrate your invention.  As you can probably guess, the process will go more smoothly if you work with a patent attorney near you.  Although it can be done, a long distance relationship will only strain the process.   

Probably the best way to select a patent attorney in your city is through word of mouth.  To help find referrals (and to associate with others who have interests similar to yours), you may want to join a local inventors club.  You can also search through the USPTO’s list of registered patent attorneys or even just use their database to check your potential patent attorney’s credentials.

When you are seeking out a suitable patent attorney, you need to ask about their experience and background. Ask them what degrees they hold, the number of years they’ve spent writing and prosecuting patents, and the number of patents granted.  Get references from previous clients and call them to ask about their experience with the patent attorney.

When selecting a patent attorney, it’s also important to find someone who specializes in the field your invention is related to.  Patent attorneys are not equal in all areas.  For starters, what is their degree(s) in?  This is very important.  Some patent attorneys will have a degree in engineering.  Other patent attorneys will be skilled in the field of biology, others physics and yet others, computer science.  You don’t want to take your newly invented cell line (yes you can patent such things) to a patent attorney with a background in electrical engineering.  You would want a patent attorney with a background in biology to help you with this type of invention. 

If you have a basic invention, going with a patent attorney with a general mechanical engineering background will probably save you some money.  Specialized professionals usually charge more.

You want their background and your invention type to match as closely as possible.  Writing patent applications is a bit of an art.  Obviously, a patent attorney will come in handy to help you through the legalese, but there is also a great deal of knowledge and specific technical detail that must go along with it.  This is why patent attorneys must have technical backgrounds.

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Author:Lisa Parmley

Source: Articlecitydate

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The Patent Cooperation Treaty (PCT) procedure

The PCT procedure

The PCT procedure includes:

Filing: you file an international application with a national or regional patent Office or WIPO, complying with the PCT formality requirements, in one language, and you pay one set of fees.

International Search: an “International Searching Authority” (ISA) (one of the world’s major patent Offices) identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention’s potential patentability.

International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of your international application is disclosed to the world.

Supplementary International Search (optional): a second ISA identifies, at your request, published documents which may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.

International Preliminary Examination (optional): one of the ISAs at your request, carries out an additional patentability analysis, usually on an amended version of your application.

National Phase: after the end of the PCT procedure, usually at 30 months from the earliest filing date of your initial application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.

FILING

What is the effect of an international patent application?

In general terms, your international patent application, provided that it complies with the minimum requirements for obtaining an international filing date, has the effect of a national patent application (and certain regional patent applications) in or for all PCT Contracting States. Moreover, if you comply with certain formal requirements set out in the Treaty and Regulations, which are binding on all of the PCT Contracting States, subsequent adaptation to varying national (or regional) formal requirements (and the cost associated therewith) will not be necessary.

Who has the right to file an international patent application under the PCT?

You are entitled to file an international patent application if you are a national or resident of a PCT Contracting State. If there are several applicants named in the international application, only one of them needs to comply with this requirement.

Where can I file my international patent application?

You can file an international patent application, in most cases, with your national patent Office, or directly with WIPO if permitted by your State’s national security provisions. Both of those Offices act as PCT “receiving Offices”. If you are a national or resident of a country which is party to the ARIPO Harare Protocol, the OAPI Bangui Agreement, the Eurasian Patent Convention or the European Patent Convention, you may alternatively file your international patent application with the regional patent Office concerned, if permitted by the applicable national law.

Can I file PCT applications electronically?

In the majority of cases, applicants file PCT applications electronically. You can file PCT applications electronically with any competent receiving Offices which accepts such filings. Preparing the PCT application using the WIPO web service (ePCT-filing) or the software provided by WIPO (PCT-SAFE) helps you to prepare your applications by automatically validating the entered data and drawing your attention to incorrectly or inconsistently completed parts. Moreover, it helps you to manage your applications, for example, with monitoring time limits for relevant actions. You are also entitled to certain PCT fee reductions when filing electronically.

What are the costs associated with the filing and processing of an international application under the PCT? What are the costs for entering the national phase?

PCT applicants generally pay three types of fees when they file their international applications:

(a) an international filing fee of 1,330 Swiss francs2,

(b) a search fee which can vary from approximately 150 to 2,000 Swiss francs2 depending on the ISA chosen, and

(c) a small transmittal fee which varies depending on the receiving Office.

Because an international patent application is effective in all PCT Contracting States, you do not incur, at this stage in the procedure, the costs that would arise if you prepared and filed separate applications at national and regional Offices. Further information about PCT fees can be obtained from the receiving Offices, the Fee Tables, the PCT Applicant’s Guide and the PCT Newsletter.

The fees you will need to pay as you enter the national phase represent the most significant pre-grant costs. They can include fees for translations of your application, national (or regional) Office filing fees and fees for acquiring the services of local patent agents or attorneys. In several Offices however, national filing fees are lower for international patent applications than they are for direct national applications in recognition of the work already done during the international phase. You should also remember that in the case of all granted patents, whether or not the PCT is used to obtain them, you will need to pay maintenance fees in each country in order to keep the patents alive.

Are there any fee reductions available under the PCT?

PCT fee reductions are available to all applicants who file electronically, based on the type of filing and the format of the application submitted.

In addition, to encourage the use of the PCT System by applicants from developing countries fee reductions of 90% for certain fees, including the international filing fee, are available to natural persons.3 This same 90% reduction applies to any person, whether a natural person or not, who is a national of and resides in a State that is classed as a least developed country by the United Nations. If there are several applicants, each must satisfy those criteria.

Some ISAs also provide for a reduction of the international search fee if the applicant or applicants are nationals or residents from certain countries (see Annex D of the PCT Applicant’s Guide).

Some national or regional Offices provide for fee reductions for natural persons, universities, not-for-profit research institutes and small and medium-sized enterprises (SMEs) for the fees you will need to pay as you enter the national phase (see respective National Chapters of the PCT Applicant’s Guide).

How long does the PCT process take?

You have, in most cases, up to an additional 18 months from the time you file your international patent application (or usually 30 months from the filing date of the initial patent application of which you claim priority before you have to begin the national phase procedures with individual patent Offices and to fulfill the national requirements.

This additional time can be useful for evaluating the chances of obtaining patents and exploiting your invention commercially in the countries in which you plan to pursue patent protection, and for assessing both the technical value of your invention and the continued need for protection in those countries.

It is important to note, however, that you do not have to wait for the expiration of 30 months from the earliest filing date of your patent application (“priority date”) before you enter the national phase – you can always request an early entry into the national phase.

Since, in the national phase, each patent Office is responsible for examining your application in accordance with national or regional patent laws, regulations and practices, the time required for the examination and grant of a patent varies across patent Offices.

What does it mean to “claim priority” of an earlier patent application?

Generally, patent applicants who wish to protect their invention in more than one country usually first file a national or regional patent application with their national or regional patent Office, and within 12 months from the filing date of that first application (a time limit set in the Paris Convention, they file their international application under the PCT.

The effect of claiming the priority of an earlier patent application is that a patent shall not be invalidated by reasons of any acts accomplished in the interval, such as another filing, the publication or sale of the invention.

In what languages can an international patent application be filed?

You can file an international patent application in any language which the receiving Office accepts. If you file your application in a language which is not accepted by the ISA that is to carry out the international search, you will be required to furnish a translation of the application for the purposes of international search. Receiving Offices are, however, obliged to accept filings in at least one language which is both a language accepted by the competent ISA that is to carry out the international search and a “publication language”, that is, one of the languages in which international patent applications are published (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish). You therefore always have the option of filing your international patent application in at least one language from which no translation is required for either PCT international search or publication purposes.

INTERNATIONAL SEARCH

Which Office will carry out the international search of my PCT application?

The following have been appointed by the PCT Contracting States as International Searching Authorities (ISAs): the national Offices of Australia, Austria, Brazil, Canada, China, Chile, Egypt, Finland, India, Israel, Japan, the Republic of Korea, the Russian Federation, Spain, Sweden, Ukraine4 and the United States of America, and the following regional Offices, the European Patent Office and the Nordic Patent Institute. The availability of a particular ISA to the nationals or residents of a country is determined by the receiving Office where the international application was filed. Some receiving Offices provide a choice of more than one competent ISA. If your receiving Office is one of those, you can choose any one of them, taking into account differing requirements relating to language, fees, etc..

What is a PCT international search?

A PCT international search is a high quality search of the relevant patent documents and other technical literature in those languages in which most patent applications are filed (Chinese, English, German and Japanese, and in certain cases, French, Korean, Russian and Spanish). The high quality of the search is assured by the standards prescribed in the PCT for the documentation to be consulted, and by the qualified staff and uniform search methods of the ISAs, which are all experienced patent Offices. The results are published in an international search report and a written opinion of the ISA on the potential patentability of your invention.

What is an international search report?

The international search report consists mainly of a listing of references to published patent documents and technical journal articles which might affect the patentability of the invention disclosed in the international application. The report contains indications for each of the documents listed as to their possible relevance to the critical patentability questions of novelty and inventive step (non-obviousness). Together with the search report, the ISA prepares a written opinion on patentability, which will give you a detailed analysis of the potential patentability of your invention. The international search report and the written opinion are sent to you by the ISA.

What is the value of the international search report?

The report enables you to evaluate your chances of obtaining patents in PCT Contracting States. An international search report which is favorable, that is, in which the documents (prior art) cited would appear not to prevent the grant of a patent, assists you in the further processing of your application in those countries in which you wish to obtain protection. If a search report is unfavorable (for example, if it lists documents which challenge the novelty and/or inventive step of your invention), you have the opportunity to amend the claims in your international patent application (to better distinguish your invention from those documents), and have them published, or to withdraw the application before it is published.

Will an international search be carried out for all international applications?

As a rule, an international search is carried out for all international applications. There are instances, however, where the ISA will not be able to carry out a search. For example, where the international application relates to subject matter which the ISA is not required to search or if the description, claims or drawings are not sufficiently clear for it to carry out a meaningful search. In such cases, the ISA will issue a declaration that no international search report will be issued.

There are also circumstances where the ISA will issue a partial search report. This can occur when, in the view of the ISA, the international application contains multiple inventions but the applicant has not paid additional search fees to cover the work required to search those additional invention(s).

What is the written opinion of the International Searching Authority?

For every international application, the ISA will establish, at the same time that it establishes the international search report, a preliminary and non-binding opinion on whether the invention appears to meet the patentability criteria in light of the search report results. The written opinion, which is sent to you together with the international search report, helps you understand and interpret the results of the search report with specific reference to the text of your international application, being of special help to you in evaluating your chances of obtaining a patent. The written opinion is made available to the public at the same time as the application.

SUPPLEMENTARY INTERNATIONAL SEARCH

What is the PCT supplementary international search?

Supplementary international search permits the applicant to request, in addition to the international search (the “main international search”), one or more supplementary international searches each to be carried out by an ISA other than the ISA which carried out the main international search. The additional search has the potential of reducing the risk of new patent documents and other technical literature being discovered in the national phase since, by requesting supplementary search the applicant can enlarge the linguistic and/or technical scope of the documentation searched.

What is the supplementary international search report?

The supplementary international search report is generally similar in content and appearance to the main international search report; it contains a listing of references to patent documents and other technical literature which may affect the patentability of the invention claimed in the international application. However, it does not repeat documents which have already been cited in the international search report, unless this is necessary because of new relevance when read in conjunction with other documents discovered during the supplementary international search. On occasion, the supplementary international search report may contain more detailed explanations than those in the main international search report. This is due to the fact that, unlike the main international search, no written opinion is established with the supplementary international search report, and these additional details are helpful for a full understanding of the references listed.

INTERNATIONAL PUBLICATION

What does international publication under the PCT consist of?

WIPO publishes the international application shortly after the expiration of 18 months from the priority date (if it has not been withdrawn earlier), together with the international search report. PCT international applications are published online on PATENTSCOPE, a powerful, fully searchable database with flexible, multilingual interfaces and translation tools to assist users and the public in understanding the content of published applications..

Can third parties access documents contained in the file of the international application? If so, when?

Until international publication (18 months after the priority date), no third party is allowed access to your international application unless you as applicant request or authorize it. If you wish to withdraw your application (and you do so before international publication), international publication does not take place and, as a consequence, no access by third parties is permitted. However, when international publication occurs, certain documents in the international application file are made available on PATENTSCOPE together with the published international application, for example, the written opinion of the ISA and any informal comments on the written opinion.

INTERNATIONAL PRELIMINARY EXAMINATION

What is international preliminary examination?

International preliminary examination is a second evaluation of the potential patentability of the invention, using the same standards on which the written opinion of the ISA was based. If you wish to make amendments to your international application in order to overcome documents identified in the international search report and conclusions made in the written opinion of the ISA, international preliminary examination provides the only possibility to actively participate in the examination process and potentially influence the findings of the examiner before entering the national phase – you can submit amendments and arguments and are entitled to an interview with the examiner. At the end of the procedure, an international preliminary report on patentability will be issued.

The International Preliminary Examining Authorities (IPEAs) which carry out the international preliminary examination are the ISAs mentioned above. For a given PCT application, there may be one or more competent IPEAs; your receiving Office can supply details or you may consult the PCT Applicant’s Guide and the PCT Newsletter.

What is the value of the international preliminary report on patentability?

The IPRP (Chapter II) which is provided to you, to WIPO and to the national (or regional) patent Offices, consists of an opinion on the compliance with the international patentability criteria of each of the claims which have been searched. It provides you with an even stronger basis on which to evaluate your chances of obtaining patents, in most cases on an amended application, and, if the report is favorable, a stronger basis on which to continue with your application before the national and regional patent Offices. The decision on the granting of a patent remains the responsibility of each of the national or regional Offices in which you enter the national phase; the IPRP (Chapter II) should be considered by the Offices but is not binding on them.

NATIONAL PHASE

It is only after you have decided

How do I enter the national phase?

whether, and in respect of which States, you wish to proceed further with your international application that you must fulfill the requirements for entry into the national phase. These requirements include paying national fees and, in some cases, filing translations of the application. These steps must be taken, in relation to the majority of PCT Contracting States’ patent Offices, before the end of the 30th month from the priority date. There may also be other requirements in connection with the entry into the national phase – for example, the appointment of local agents. More general information on national phase entry can be found in the PCT Applicant’s Guide, National Phase, and specific information concerning fees and national requirements can be found in the national chapters for each PCT Contracting State in the same Guide.

What happens to my application in the national phase?

Once you have entered the national phase, the national or regional patent Offices concerned begin the process of determining whether they will grant you a patent. Any examination which these Offices may undertake should be made easier by the PCT international search report and the written opinion and even more by an international preliminary examination report.

How ANT Lawyers Could Help Your Business?

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How Foreign Investors Could Handle Intellectual Property Dispute in Vietnam?

Intellectual property disputes in Vietnam

Foreign investor could handle intellectual property disputes in Vietnam through negotiation and mediation, arbitration or litigation depending on various factors.

Intellectual property rights is the rights of organizations, individuals to the intellectual property, including copyrights and related rights, industrial property rights, including trademark, patent, and industrial design and rights to the plant varieties. Under Vietnam intellectual property law, owners are granted certain exclusive right to the intangible assets. Intellectual property infringement occurs whenever the rights of any type of intellectual property are violated. The intellectual property disputes arise directly from all types of intellectual property as mentioned or commercial transactions and extraction process regarding to types of intellectual property such as license agreement, intellectual property transferring agreement.  Disputes could be settled by different methods, depending on the subjective wills of parties. The parties have right to choose any methods that they deem ideal to protect their interests.

Nowadays, international practice allows parties to choose one of two ways to settle their disputes, including dispute settlement mechanism without litigation (negotiation and mediation) and dispute settlement mechanism with litigation (civil litigation and arbitration). Typically, when disputes occur, parties often choose simplest methods before using other ones. The simplest methods are negotiation and mediation.

Negotiation is a procedure whereby parties work together and reach the solution by expressing their own point of views to the dispute. This method is used for small, non-complex disputes so that parties could be easy to reach a consensus about dispute settlement. Though this method is simple, it is hard for parties to shake their hands together and come to consensus. It is simply because each party always need advantages come to them. Besides, for example, if parties reach the consensus in settling dispute, there is no mechanism to ensure enforcement of dispute solution.

Mediation, different from negotiation, the participation of third party is requested by parties. However, the same thing between negotiation and mediation is that parties are sole those holding right to decide what solutions are applied to settle dispute. Despite the third party only act as intermediary, the mission of third party is really important. The third party helps to connect dispute parties and avoid stronger conflict between them. With experience and skills, they make opportunity for parties exchange information, help them express their standpoints, promote flexible solutions and suggest solution suitable for both of them. Of course, a methodswhich the third party proposes is solely recognized as a reference. In mediation, the information security is highly ensured. Parties are not forced to reveal any information that they want to keep as a secret. Besides, mediation helps parties minimize fees due to simple procedure. Moreover, mediation allows opportunity for parties to work together and reach settlement and typically, parties still keep their business relationship. Last but not least, parties can mediate in any period of dispute settling process. Mediation can be chosen as the first step to come to dispute settling process after each side’s endeavor.

After no result of both side’s endeavor, parties can choose one of the dispute settlement mechanism with litigation to settle dispute. Generally, the proceeding of civil litigation is more complex than the arbitration proceeding. In case one side needs a decision from court so as to end infringement, civil litigation is top priority. In the remaining case, arbitration is a choice with advantages. Arbitration is solely conducted when parties reach consensus that arbitration is a form of dispute resolution. Arbitration agreement must be a term of the core contract or an independent agreement.

Firstly, cost for arbitration is typically cheaper than traditional litigation. Attorney’s fees and expense are minimized in arbitration because arbitration is generally concluded in far less time than cases at court. Secondly, length of dispute settling time in arbitration is shorter than litigation in court because of simple procedure. Court cases generally require more counsel time and, thus, more expenses for preparation and trial than is needed in arbitration. Thirdly, settling dispute by arbitration is effective because of its flexibility. In arbitration, parties have right to choose form of arbitration (Ad hoc or permanent). Moreover, parties can schedule hearings and deadlines to meet their objectives and convenience. This flexibility allows parties save money, time and partially promote dispute settling process to be faster. Fourthly, arbitration is a secret proceeding. The decision is public, but the trial is close. This feature of arbitration is a big advantage for dispute involving trade secret or patent. Lastly, arbitration council’s decision is final. It means that contrary to decision of court, most of arbitration council’s decisions cannot be appealed. Chance for canceling arbitration’s decisions is not much, primarily because of basic mistakes about procedures.

Dispute settling method in arbitration is suitable for most of intellectual property disputes because this method meets the featured requirements of intellectual property dispute (multinational, information security, complexity). Mediation and arbitration can combine together in settling dispute. Firstly, dispute is settled by mediation. Then, in case if parties do not reach settlement in mediation, dispute will be settled by arbitration council. The advantage of this combination is that it promotes parties propose goodwill engagement in mediation and after that, will create more advantages for dispute resolution in arbitration.

To summarize, when facing a dispute relating to intellectual property right, foreign investor can handle out dispute through judging exactly about scale of dispute, financial capability, dispute settling time, level of information security because intellectual property is worthy assets that can impact development as well as existence of enterprises.

With highly professional staff and great experience in IP aspect in Vietnam, ANT Lawyers would like to support you in extending your intellectual property in Vietnam.

How ANT Lawyers Could Help Your Business?

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Registering Copyright Services in Vietnam

How to register a copyright or related rights in Vietnam?

Under Law on Intellectual Property of Vietnam, copyright means rights of an organization or individual to Work which such organization or individual created or owns. In addition, the subject matter of copyright shall comprise literary, artistic and scientific works; the subject matter of copyright related rights shall comprise performances, audio and visual fixation, broadcasts and satellite signals carrying coded programs.

However, in fact, it is challenging to prove the owner’s copyright if there is no prior prepared evidence. A registration of copyright is the most important proof if violation or dispute happens. The copyright registration shall deter infringement, when owner can prove that the Work is protected under copyright law.

With highly professional staff and great experience in intellectual property aspect in Vietnam, ANT Lawyers would like to support you in registering and protecting your copyright and related rights in Vietnam as following:

Our services in copyright registration

• Provision of professional opinions and advice in relation to registration of copyright and related copyright;
• Advising, preparation, drafting, filing and prosecution of registration of copyright and related copyright;
• Provision of professional opinions and advice in relation to license and assignment of copyright and related copyright;
• Appeal and cancellation;
• Proceedings before the judicial authorities.

How to register a copyright or related rights in Vietnam?

Condition of copyright registration

A Work shall be registered its owner’s copyright if it does meet the following conditions:

• The ideas of the Work shall be presented particularly in a visible material
• The Work shall be original (Be made directly by the author without copying from any other works or people).

Required information and document

• Original Power of Attorney (POA) from the Applicant;
• Information of the author such as: Full name, Identify Card Number, Current address, permanent address; …
• Information of the Works such as: Name, the date of publication (if any), the place of Publication (if any); …

• Business registration certificate or establishment certificate (if applicant is association or organization);
• Written promise of being ownership of the work of the applicant;
• Some other specialized document with each specified aspect.

Note: The POA must be signed by the applicant or a duly authorized representative on behalf of the Applicant and no further notarization or legalization is required.

 Duration of copyright protection

• The following rights are protected forever:
• Right to give titles to their works.
• Right to attach their real names or pseudonyms to their works; to have their real names or pseudonyms acknowledged when their works are published or used.
• Right to protect the integrity of their works; and to forbid other persons to modify, edit or distort their works in whatever form, causing harm to the honor and reputation of the author.

The following rights are protected within the stipulated duration in law

• Right to make derivative works;
• Right to display their works to the public;
• Right to reproduce their works;

• Right to distribute or import the original or copies of their works;
• Right to communicate their works to the public by wireless or landline means, electronic information networks or other technical means;
• Right to lease the original or copies of cinematographic works and computer programs;
• Right to reproduce their works.

The protection duration of each type of Work with the above rights shall be different. In particularly, cinematographic works, photographic works, stage works, applied art works and anonymous works shall have a term of protection of fifty (50) years as from the date of first publication. Other work shall be protected for the whole life of the author and for fifty (50) years after his or her death.

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Opposition Procedures of Trademark in Vietnam

How to Oppose Trademark Registration in Vietnam?

Trademark is the priceless asset of a company because of being used to distinguish goods or services of different organizations or individuals. Many international companies have found that others have registered trademark protection in Vietnam at National Offices of Intellectual Property (NOIP).

Because trademark is protected independently in each nation, it is easy for violators to abuse trademarks of other well known companies for their interests in Vietnam. This could potentially put the real trademark owner’s under challenges when the clients or customers realize the product bearing the trademark they trust do not meet the standard they expected.

In Vietnam, after detecting their infringement registration process, you should submit an opposition notice to NOIP in Vietnam to prevent the violating trademark registration. To ensure your opposition shall be effective, you should enclose evidences and related documents.

With highly professional staff and great experience in IP aspect in Vietnam, ANT Lawyers, a qualified attorney and registered IP agent, could support you in opposition procedure of trademark in Vietnam.

Deadline for filing an opposition to a trademark application in Vietnam

The deadline for filing an opposition to a trademark application in Vietnam is stipulated particularly in the IP Law.

According to IP Law of Vietnam, during examination of trademark applications as from the date when a trademark application is published on the Industrial Property Official Gazette until prior to the date of decision on granting Certificate of trademark registration, an opposition request should be filed to the NOIP. Such request will not be accepted by the NOIP for handling if it is filed after the date of decision on granting trademark registration. However, under our current practice, the applicant could request for an acceleration examination, shorter than provided period of 09 months. Therefore please be noted that possible opposition should be filed as soon as possible.

Requirements

Pursuant to the IP Law, foreign opponents are not allowed to file opposition request directly at the NOIP but must authorize a lawful IP representative in Vietnam to proceed with such action based on a required original Power of Attorney (POA). Under current practice in Vietnam, a copy of POA may be acceptable for filing opposition and the original one could be filed later. However, the NOIP will not consider the opposition until the original POA is filed and all formality requirements are satisfied.

Trademark opposition Procedure in Vietnam

The opposition request must be in written form and the source of its accompanied supporting materials (if any) must be specified.

A possible opposition will be considered at the time of the trademark application’s examination as to substance.

As a general procedures, within 01 month (in fact, the time can extend to 02-04 months) as from the receiving date of our opposition, the NOIP will consider and then may convey its contents to the Applicant and fix about 01 month for them to present opinions. After receiving response of the Applicant (if they submit), the NOIP will inform and give the Opponent 01 month for filing response, submission of opinions.

In some cases, the NOIP may give conclusion upon consideration of opposition without conveying its contents to the Applicant if they think that it is clear enough to conclude. It is possible for the NOIP to organize conversation between the Opponent and the Applicant, upon request of the two parties, to clarify the matter (if necessary).

Upon considering the evidences submitted by the two parties, the NOIP will make a decision to accept opposition or not.

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How To Protect Trademark in Vietnam?

Trademark registration services in Vietnam

Trademark protection in Vietnam is initially obtained through trademark registration.

Trademark opposition could be filed to prevent a pending application for a mark from being granted application.  Litigation is the final measure to handle dispute during trademark protection in Vietnam.

Trademark is a sign that help distinguish the goods or services of one enterprise from those of others. Together with industrial design and patent, trademark of goods and services plays an extremely important role for the growth of the enterprise. Trademark establishes a link between enterprise and customer.  A strong trademark will attract customers to use goods or services. When trademark is popular and economic benefits achieved through sale of goods or provision of services coupled with trademark is large, the violation of trademark is inevitable.

The annual reports of the Vietnam National Office of Intellectual Property (NOIP) prove that trademark violation in Vietnam is the most popular, among other industrial property rights.  According to the preliminary annual report in 2011, and 2012, there has been more than 1,000 cases of trademark violations each year.  Report of 2013 and after shows more than 2,000 trademark infringements were handled with the total fines of trademark violators of around USD 1 million per year.  Having said that, it is important for trademark owner to register trademarks in Vietnam for better protection.  This is also suggested for even well-known trademarks.

For registration, trademark owner has two options: either directly register trademark in Vietnam by filling an application for registration with the Vietnam NOIP, or seek the protection in Vietnam through Madrid’s system.  For the first option, the trademark owner needs to prepare, file for registration, and pay fee as the requirement of Vietnam Intellectual Property law.  In case trademark needs to be protected in a number of nations, including Vietnam, trademark owner may register trademark through Madrid’s system.

Where the violation of trademark occurs, trademark owner needs to judge the level of infringement, level of damage to choose suitable resolutions.  Initially, the trademark owner may protect by requiring to the trademark violator to terminate the infringing acts, apologize, and rectify. In case of being damaged, trademark owners have rights to claim compensation.  If failing to reach result, trademark owner may use settlement mechanism through negotiation or mediation or could request the competent state agencies to handle acts of infringement through i.e. filling a denunciation application and submitting to the Vietnam NOIP.  Litigation might be required to handle acts of infringement.  Generally, the proceeding of civil litigation is more complex than the arbitration proceeding. In cases the trademark owner needs a decision from court in order to end trademark infringement, civil litigation is top priority. In the remaining cases, arbitration is a better choice with advantages of cheaper cost, shorter settling time, and more flexible.

Learn more about our ANT Lawyers Intellectual Property practice, its experience, and team members here.

Please contact our trademark attorneys in Vietnam for advice via email ant@antlawyers.vn or call us at +84 912 817 823.

Let ANT Lawyers help your business in Vietnam.

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Patents: So You Have An Idea - So What?

Okay, you have come up with a fantastic idea that will solve all the woes of the universe - or at least make you $millions$ - what do you do? How do you start?

Well, the first thing to do is get all your ducks in a row. Start a hard-bound journal and put everything in writing. Draw pictures or diagrams of how your invention works. Date and sign each page, and get someone you trust to look at it and date and sign too.

Then, get ready to spend some money. Sorry, but it takes money to get things going. If your idea is worth anything - which you can find out through the process - you should file for a patent.

A patent gives you 20 years from the filing date the right to keep others from making or selling your invention without your permission. That gives you time to develop and sell your invention in the marketplace. Believe me or not, getting the patent may be the easiest part. About 99% is in the development and marketing of the idea.

To get a patent it is best to find a registered patent attorney or agent. I know, attorneys are sharks. But in this case, their knowledge will get through the government bureaucracy a lot faster and easier than you can by yourself.

To give you an idea of what you are going to face when getting into the patentprocess, here are some FAQ’s to help you understand better - maybe.

PATENT FAQ’s

Q: What do the terms “patent pending” and “patent applied for” mean?

A: They are used by the inventor - or his manufacturer or seller of his product - to inform the public that a patent application has been filed with the Patent and Trademark Office (“USPTO”). You can be fined if you use these terms falsely and deceive the public.

Q: Is there any danger that the USPTO will give others information contained in my patent application while it is pending?

A: No. All patent applications are kept in strictest secrecy until the patent is issued. After the patent is issued your file is made available in the USPTO Files Information Room for inspection by anyone and copies of the files may be purchased from the USPTO. (The Files Information Room is where searchers go to prepare their patent searches - which are needed to complete a patent application)

Q: May I write directly to the USPTO about my application after it is filed?

A: The USPTO will answer questions regarding the status of the application, whether it has been rejected, allowed, or pending action. BUT, if you have an attorney representing you, the Office will not correspond with both of you. The best practice is for all comments be forwarded through your attorney. Another thing - it can take some time before your application will be assigned to an examiner, and what is called an “office action” will happen. Patience is needed.

Q: Do you actually have to go to the USPTO to do business with them?

No. Most business with the USPTO is done in writing and through correspondence. Interviews with Examiners are sometimes necessary (and sometimes helpful) but a lot of them are done by phone by your attorney. The expense of a trip to D. C. is seldom necessary.

Q: If two or more persons work together to make an invention, who gets the patent?

A: If each person had a share in the ideas forming the invention, they are considered joint inventors and a patent will be issued jointly if they make it through the application process. BUT, if one person provided all the ideas for the invention - and the other person(s) has only followed instructions in making the invention, the person with the ideas would be considered the sole inventor - meaning the patent application and the patent itself shall be in his/her name alone.

Q: What if one person supplies all the ideas to make an invention - and another person either employs him and/or comes up with the money to build and test the invention - should the patent application be filed jointly?

A: NO. The application MUST be signed by the TRUE INVENTOR - and filed with the USPTO in the true inventor’s name. This is one time money doesn’t count. It is the person with the ideas - not the employer - not the money man - that gets the patent. If the greedy, blood-sucking, viperous, money-grubbing, creatively non-contributing money man or boss wants any part of the invention, he would have to get his hold through a contract or license on the invention - not the patent itself.

Q: Does the USPTO control the fees charged by patent attorneys and agents for their services?

A: No. This is strictly a matter between you and the attorney or agent. Fees vary - as do attorneys and agents. You should feel comfortable with your choice. It would be best to ask up front for estimates on charges for: (a) a patent search; (b) The preparation of a patent application; (c) drawings to accompany the application; and, (d) the prosecution of the application before the USPTO. (NOTE: an attorney can only give you estimates. The cost of a search, and the application with drawings is pretty well determinable up front. But the prosecution step depends on the Examiner and what he does and doesn’t like about your application. There may be amendments that have to be made (expect at least one), and negotiations to transpire, which all take time and effort from the attorney)

Q: Will the USPTO help me pick an attorney or agent to do my search or prepare my application?

A: No. The USPTO cannot make this choice for you. The Office does maintain a list of registered attorneys and agents. Also some bar associations have lawyer referral services that may help you. If you have a general attorney, although he can’t help you directly if he isn’t a registered attorney with the USPTO, he may help you with a referral.

Q: Will the USPTO advise me about whether or not a certain promotion firm is reliable and trustworthy?

A: No. The USPTO has no direct control over such organizations. While the USPTO does not investigate complaints about invention promoters or promotion firms - or get involved in any legal proceedings relating to such firms - there is a public forum to publish complaints against such firms. The protections you have from patent promotion firms is spelled out in laws passed in 1999. These promotion firms have specific duties of disclosure under this act. [See http://www.gadgets-gizmos-inventions.com for more info]

Q: Are there any organizations that can tell me how and where I may be able to get some assistance in developing and marketing my invention?

A: Yes. Organizations in your community - such as Chambers of Commerce and banks - may be able to help. Many communities have locally financed “business incubators” or industrial development organizations that can help you locate manufacturers and vulture (I mean Venture) capitalists that might be interested in helping you. Do your homework - check, check, check - and be careful.

Q: Are there any state government agencies that can help in developing and marketing my invention?

A: Yes. Nearly all states have state planning and development agencies or departments of commerce and industry that seek new products and articles to manufacture, or processes to assist existing manufacturers and communities in the state. A lot of these agencies are online - or at least have listings in telephone books. If all else fails - write your state governor’s office.

Q: Can the USPTO help me in developing and marketing my invention?

A: No. the USPTO cannot act or advise concerning any business transactions or arrangements that are involved in the development and marketing of an invention. They will publish the fact that your patent is available for licensing or sale in the Official Gazette - at your request and for a fee.

Q: How do I start?

A: First, of course, you have to have an idea. Then that idea has to be put down in a form so that it can be understood at least by a person that is experienced in the field of endeavor that concerns the invention. This usually is a written description and a drawing. Whatever it takes to explain the invention.

The next step is a patent search - to see if someone else has come up with a similar idea. A lot of times this is the case. And, a lot of times your idea may be enough of an improvement to be unique enough for a new patent. There are search firms available - and most patent attorneys have access to their own favorites. It is best to commit only to the patent search at first. Do not sign a contract for anything else just in case the search finds your invention with no way to find “novelty” and “non-obviousness.”

If the search report looks good (watch out for the hype artists), it is time for commitment. Choose your attorney and let it fly.

It is possible to file a patent application by yourself - but really - it is like you going into a restaurant in Paris, France that is, and trying to order from the menu. unless you know and speak the language, you won’t get what you want. In the case of a patent, the USPTO will throw you out - even if your invention is great - because the application does not speak their language.

Author:Gary Cogley

Source: Articlecity

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