Right to request narrowing the scope of protection for an invention

Narrowing the scope of protection for an invention gives proactive rights to protection title holders, helping to adjust the scope of protection to suit actual needs. Through this process, the patent owner can flexibly reduce independent or dependent points within the granted scope of protection, facilitating the effective management and exploitation of intellectual property rights. Please follow Long Phan’s article to help you update more useful information about this process.

In what cases is the scope of protection for an invention narrowed?

Pursuant to Point b, Clause 3, Article 97 of the Law on Intellectual Property 2005 and Article 29 of Decree 65/2023/ND-CP, the protection title owner has the right to request the National Office of Intellectual Property to narrow the scope of patent protection. Specifically request to reduce one or several independent or dependent points within the scope (claim) of protection stated in the Patent.

The request procedure narrows the scope of protection for an invention

Prepared documents

Persons requesting to narrow the scope of protection need to prepare complete documents according to regulations. The documents in the application must be prepared according to the form and submitted in the correct quantity. Document preparation needs to strictly comply with format requirements. Profile includes:

1. Declaration requesting narrowing the scope of protection of the patent (Form No. 06 in Appendix II of Decree 65/2023/ND-CP) and in the declaration clearly stating the request to narrow the scope of patent protection.
2. Original patent protection certificate in case the patent protection certificate is issued in paper form.
3. Document detailing the revised content.
4. Authorization document (in case the request is submitted through a representative).
5. 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).

CSPL: Clause 4, Article 29, Decree 65/2023/ND-CP.

Implementation steps

The process of narrowing the scope of protection is carried out in strict order. The Intellectual Property Office will receive and process the application within the prescribed time limit. The review process is carried out carefully to ensure the rights of the owner. The order includes:

Step 1: Submit application

The protection title owner submits 01 set of documents requesting narrowing the scope of protection in one of the following forms:

• Online through the Information System for handling administrative procedures of the Ministry of Science and Technology;
• Directly or via postal service to the headquarters of the National Office of Intellectual Property in Hanoi or 2 representative offices of the Department in the city. Ho Chi Minh and Da Nang.

Step 2: Receive documents and process them

Within 02 months from the date of receipt of the request, the state management agency in charge of industrial property rights must consider the request to amend the protection title:

• If the request is deemed valid, the state management agency in charge of industrial property rights shall issue a decision to narrow the scope of protection, record it in the protection certificate, register and announce the decision to amend the protection certificate. household in the Industrial Property Official Gazette within 60 days from the date of decision.
• In case the request to amend the protection title is flawed or invalid, the state management agency in charge of industrial property rights shall issue a notice of intention to refuse the request to narrow the scope of protection, clearly stating the reason. and set a time limit of 02 months from the date of notification for the requester to correct errors or make objections.
• If at the end of the set time limit, the enterprise or business household does not correct the errors or the errors are not corrected satisfactorily, there is no objection or there is an objection that is not valid, the management agency shall The state authority on industrial property rights issued a decision to refuse the request to narrow the scope of protection.

CSPL: Clause 5, Article 29, Decree 65/2023/ND-CP.

Fees and charges when requesting to narrow the scope of protection for an invention

Costs for implementing procedures for narrowing the scope of protection are specifically regulated in Circular 263/2016/TT-BTC. The requester needs to pay all fees as prescribed. Fees are calculated for each separate item. Fees include:

• Evaluation fee for request to narrow the scope of protection for a patent: 900,000 VND.
• Fee for publishing the Decision recording amendments to the Certificate of Protection: 120,000 VND.
• Registration fee for Decision to record amendments to Certificate of Protection: 120,000 VND.

Consulting services on procedures for narrowing the scope of protection for professional inventions at Long Phan

Long Phan provides consulting services on narrowing the scope of patent protection, with a team of experienced experts, providing optimal and comprehensive solutions. Long Phan’s services include:

• Consulting on cases of adjusting and narrowing the scope of protection for inventions.
• Consulting on conditions to be accepted to adjust the scope of patent protection.
• Prepare detailed and accurate narrowing request documents.
• Instructions on the order and procedures for adjusting and narrowing the scope of patent protection.
• Representing customers to submit documents and monitor the processing process at the authorities to ensure progress.
• Support for registration and protection of inventions.
• Consulting and building intellectual property protection strategies suitable to customers’ needs and business goals.
• Consulting on other issues related to inventions.

Narrowing the scope of protection for inventions is an important step to help businesses optimize intellectual property rights, minimize risks and enhance product protection. Long Phan is committed to providing effective and comprehensive solutions, helping to protect the legal rights and interests of businesses in the best way. If you need assistance with procedures for narrowing the scope of patent protection, please contact the hotline 0906735386 for detailed advice.