This article explores the practices surrounding divisional patent applications and double patenting in Vietnam, based on insights from WINCO LAW FIRM.
Divisional Patent Applications
A divisional application allows an applicant to divide a parent application into multiple, more specific applications. Here’s a breakdown of key points regarding divisional applications in Vietnam:
- Eligibility: A divisional application can be filed before the Intellectual Property Office of Vietnam (IP Vietnam) issues a final decision on the parent application.
- Unity of Invention: No unity of invention rejection is required to file a divisional application. You can file one in response to such a rejection or voluntarily at any time.
- Timing: Divisional applications can be filed anytime during the pendency of the parent application, but ideally before paying the granting fees.
- Subject Matter: The claimed subject matter in a divisional application must be:
- Originally disclosed in the parent application.
- Different from the claimed subject matter remaining in the parent application after the divisional filing.
- Subsequent Divisional Applications: Vietnam currently allows filing subsequent divisional applications based on a parent divisional application. Conditions for subject matter remain the same.
- Benefits:
- Lower filing fees compared to a parent application due to no priority claim fee.
- Potential reduction in translation fees by leveraging the parent application’s translation.
Double Patenting
Double patenting refers to obtaining patents for identical or equivalent inventions. Vietnamese IP law prohibits this practice. Here’s what you need to know:
- Double Patenting Rejection: If applications for identical/equivalent inventions are filed, only the one with the earliest priority/filing date will be granted a patent.
- Double Patenting and Divisional Applications: A divisional application, by definition, shouldn’t be identical to the parent application. Therefore, double patenting rejection shouldn’t affect divisional applications.
- Overlap Between Claims: Claims in a divisional application cannot be identical or equivalent to claims in the parent application to avoid double patenting rejection.
- Remedies for Double Patenting Rejections:
- Arguing against the rejection with evidence and explanations.
- Filing divisional applications.
- Deleting rejected claims.
Important Note:
If unsure about double patenting risks, filing the original application is recommended. You can still amend or file divisional applications later to address potential issues.
Conclusion
Understanding divisional applications and double patenting is crucial for navigating the Vietnamese patent system. This article provides a starting point, but consulting with WINCO LAW FIRM is recommended for specific situations. Should you have any questions, please do not hesitate to contact us at winco@winco.vn; patent@winco.com.vn.
