Request for substantive examination of a third-party patent application

Appraisal of the content of a third party’s patent application is an important step in the process of protecting intellectual property rights. This is a procedure to evaluate the novelty, creativity and industrial applicability of an invention, while ensuring legal rights for inventors. The due diligence process not only helps protect intellectual property rights but also contributes to maintaining transparency and fairness in this field. The following article by Long Phan will help you better understand the procedure for examining the content of a patent application.

When does a third party request to examine the content of a patent application?

Pursuant to Clause 1, Article 113 of the Law on Intellectual Property 2005, amended and supplemented in 2022, a third party has the right to request substantive examination of a patent application within forty-two months from the filing date or from the priority date in case the application enjoys priority.

However, in order for the request to be approved, the requesting entity must pay a fee for appraising the content of the application.

If an invention registration application requires a utility solution patent, the time limit for a third person to request an examination of the content of the invention registration application is thirty-six months from the filing date or the priority date in case the application enjoys priority.

What does a third party’s request for substantive examination of a patent application include?

The dossier requesting appraisal of the content of a third party’s invention registration application is based on subsection 1, Section 1 of the Administrative Procedures issued with Decision 2060/QD-BKHCN in 2023, Point a, Clause 4, Article 17 of the Decree. Decision 65/2023/ND-CP, including:

• Declaration requesting content appraisal of patent application according to Form No. 05 in Appendix I of Decree 65/2023/ND-CP;
• Power of attorney (if applying through a representative);
• Copy of fee payment voucher (in case of payment of fees and charges via postal service or direct payment to the Intellectual Property Department’s account).

Number of documents: 01 (set).

Procedures for requesting substantive examination of a third party’s patent application

Pursuant to Clause 4, Article 17 of Decree 65/2023/ND-CP, subsection 1, Section 1 of Administrative procedures issued with Decision 2060/QD-BKHCN in 2023, steps to request appraisal of application content The third party’s patent registration is:

Step 1: Receiving applications

Organizations and individuals submit 01 set of documents requesting appraisal of the content of the patent application to the National Office of Intellectual Property.

Step 2: Application processing

In case the request is invalid:

• Within 01 month from the date of receiving the request, the Department notifies and sets a period of 02 months for the requester to correct the errors.
• If no repairs are made or the repairs do not meet the requirements, the Department will notify the refusal to appraise the content of the application.

In case the request is valid:

• The Department conducts an appraisal of the content of the application according to regulations and notifies the appraisal results to the requester.

The time limit for request resolution:

• No more than 18 months from the date of publication of the application (if the request for substantive examination is submitted before the date of publication).
• Or from the date of receipt of the appraisal request (if submitted after the date of publication).
• Within 03 months from receipt of the request, the National Office of Intellectual Property shall notify the applicant of the request for appraisal of the content of the patent application.

Consulting and support services for requesting content appraisal of patent applications

At Long Phan, we provide comprehensive patent application substantive examination support services to assist you, including:

• Consulting on the application content appraisal process from submission to receipt of results.
• Support in drafting and preparing documents requesting content appraisal according to legal regulations.
• Representative submits an application and requests appraisal at the National Office of Intellectual Property.
• Review and evaluate the validity of appraisal requests before submission.
• Consulting and support in correcting shortcomings when requested by the Intellectual Property Office.
• Representatives work with the Department to ensure timely and satisfactory repair requests.
• Monitor the content appraisal process and update information for customers.
• Answer questions related to the appraisal process.
• Consulting and support in handling if there are disputes or difficulties related to appraisal requests.
• The representative receives the appraisal results from the Intellectual Property Office and notifies the customer.

Consulting services and support for content appraisal of patent applications play an important role in ensuring the registration process is effective, in compliance with legal regulations, and help customers quickly achieve the goal of protecting their invention. To protect your rights related to the content of your patent application and optimize your chances of success, choose services at Long Phan for comprehensive support. If you need advice or support, please contact Hotline: 0906735386.