Patent registration dossier: Necessary documents & important notes

Patent registration dossier is an indispensable element in the process of establishing intellectual property rights for technical solutions. In order for your invention to be legally protected and to avoid unwanted disputes, it is very important to prepare complete and accurate documents according to legal regulations. Let’s learn about the requirements and process of patent registration in Vietnam, helping customers grasp the necessary procedures.

Conditions for an invention to be protected

For an invention to be protected in the form of a patent, it must meet the conditions specified in Article 58 of the Law on Intellectual Property 2005, amended and supplemented in 2022. Specifically, the invention must have the following elements:

• Novelty: The invention has not been publicly disclosed before, whether in the form of use, written description or any other form domestically or internationally.
• Inventive level: The invention must be a significant advance, not easily created by a person with average knowledge in the relevant technical field.
• Industrial Applicability: The invention must be capable of mass-producing a product or performing a repeatable industrial process.

According to Article 59 of the Law on Intellectual Property, there are subjects that are not protected as inventions, including scientific theoretical inventions, mathematical methods, plant and animal varieties, or medical methods.

Patent registration dossiers and some notes

List of records

Patent registration dossiers must comply with the provisions of Articles 100 and 102 of the Law on Intellectual Property 2005, amended and supplemented in 2022. The dossier includes the following documents:

• 02 Registration declaration according to Form No. 01 at Appendix I Decree 65/2023/ND-CP;
• Invention description (02 copies); Invention summary (02 copies);
• Copy of fee and charge payment voucher (in case of payment of fees and charges via postal service or direct payment to the Intellectual Property Department’s account);
• Power of attorney, if application is submitted through a representative;
• Documents confirming the right to register, if the applicant is the beneficiary of another person’s right to register (inheritance certificate; certificate or agreement to transfer the right to apply, including transfer of submitted application; job assignment contract or labor contract…);
• Documents proving the basis for enjoying priority rights: Copy of the first patent registration dossier; The confirmation of the application receiving agency for the first copy of the application; list of goods and services included in the first patent application; Certificate of transfer of priority rights, if that right is inherited from another person.
• Documents proving genetic resources or traditional knowledge: For inventions related to genetic resources or traditional knowledge.
• Other documents to support the application.

The invention description must clearly clarify the nature of the invention and the scope of protection, and also explain the accompanying drawings, if any. The scope of protection needs to be sufficient to determine the rights to the invention.

Requirements for invention description

The invention description must include a Description of the invention and Scope of patent protection, and may include drawings if needed to illustrate the invention. Specifically:

1. Invention description:

• Must fully disclose the nature of the technical solution;
• There must be enough information that, based on it, any person with average knowledge of the relevant technical field can implement that solution;
• Must clarify the novelty, level of creativity, and industrial applicability of the technical solution (if a patent is requested), and the novelty and industrial applicability of the technical solution (if a utility solution patent is requested).

The required content requirements of the invention description include:

• Invention name: briefly represents the technical solution in concise, precise terms and must not be promotional or advertising;
• Technical field covered: the field in which the technical solution is used or related;
• Technical status of the invention: clearly state the technical status of the technical field mentioned at the time of filing the application (known similar technical solutions (if any); or clearly state there is no information about the technical status of the invention; indicate remaining issues that need to be resolved.
• Technical nature of the invention: State the purpose that the invention needs to achieve or the problem that the invention needs to solve; Full description of basic technical signs. Basic technical signs are all technical signs that affect the nature of the technical solution, that is, signs without which they will not be enough to form a technical solution and will not achieve the proposed purpose.
• Brief description of accompanying drawings (if any);
• Detailed description of invention implementation options: Describe in detail so that people with average knowledge of the respective technical field can implement the invention; The description is based on the accompanying drawings using indexes to represent the components.
• Examples of implementing the invention (if any): State one or several examples of implementing the specific invention; Indicates the specific value of quantitative signs and the definite state of qualitative signs; Specific results related to the functions and purposes that the solution allows to achieve;
• The benefits (effects) that can be achieved by the invention: for example improved productivity, quality, accuracy or efficiency; save energy consumption and raw materials; simplify or create convenience in handling, operation, management or use; overcoming environmental pollution…and specifying the necessary experimental conditions and methods in case the benefit invokes experimental data.

2. Scope of patent protection:

• The scope of protection (Claim) is used to determine the scope of industrial property rights for an invention, which must be presented briefly, clearly, in accordance with the description and drawings, which must clearly clarify the new signs of the technical solution;
• The scope of protection (Claim) must be fully illustrated by the description, including basic technical signs necessary and sufficient to identify the object, to achieve the proposed purpose and to distinguish the object requested for protection from the known object;
• Technical signs within the scope of protection (claims) must be clear, accurate and accepted in the corresponding technical field; The terms used in the Claims must be clear and consistent with the terms used in the description;
• The scope of protection (Claims) must not refer to descriptions and drawings, except for parts that cannot be accurately described in words, such as nucleotide sequences and amino acid sequences, diffraction patterns, state diagrams…;
• If there is a drawing illustrating the scope (claim) of protection, the sign stated in the scope (claim) of protection may be accompanied by instruction numbers placed in parentheses;
• Signs constituting a technical solution within the scope of protection (claim) should be presented in two parts: “Limited part”, including the name of the technical solution and signs identical to the signs of the closest known technical solution; and “Differences”, including features that differ from those of the nearest prior art; two parts connected by the phrase “different in that” or “characteristic in that”…
• The scope of protection (Claim) may include one or more points. For each technical solution, the scope (claim) of protection always has a point (called an independent point) and may have the next point (points) used to concretize the independent point (called a dependent point);
• Scope of protection (Claims) for a group of technical solutions: Each independent point represents a separate technical solution, and must not be referenced to other points of the scope of protection (Claims), unless such citation allows to avoid completely repeating the content of another point; Dependent points must be shown immediately after the independent point on which they depend; Each claim must only refer to one object sought to be protected and must be expressed in a single sentence;
• The points of the scope of protection (claims) must be numbered consecutively with Arabic numerals, ending with a period.

Requirements for invention summary table

The patent abstract briefly describes (should not exceed 150 words) the technical solution, must reveal the main contents of the nature of the technical solution and is for informational purposes only. The summary may have drawings and typical formulas, and must be clearly presented in half of an A4 page.

Consulting on preparing comprehensive patent registration dossiers at Long Phan

Long Phan provides comprehensive consulting and support services in preparing patent registration dossiers. With many years of experience in the field of intellectual property, our services include:

• Consulting on regulations on intellectual property registration procedures.
• Consulting and support in preparing documents related to priority rights, including copies of the first application and transfer of priority rights.
• Assist customers in preparing necessary documents and records.
• Consulting on fees, charges and support with fee payment procedures to ensure patent registration is completed.
• Representing customers to submit documents to competent agencies.
• Consulting and support in solving arising problems.

Preparing a patent registration dossier is the first and important step in protecting the rights of an invention. To avoid any difficulties during this process, customers can immediately contact Long Phan for advice and full support. Don’t hesitate to contact us via the hotline 0906735386 to have all your questions answered.