Procedures for converting patent/utility solution applications

Before the Intellectual Property Office issues a Decision to refuse to accept the application, a Decision to refuse to grant a protection certificate or a Decision to grant a protection certificate, the patent applicant may convert the request for a Patent for Invention into a request for a Patent for Utility Solution or vice versa.

1. Application conversion profile includes:

(i) Patent application form, typed according to form No. 01 Appendix I of Decree No. 65/2023/ND-CP [Note: For the original application form, mark (x) in the box "Request for Patent of Invention", then for the converted application form, mark (x) accordingly in the box "Request for Patent of Utility Solution or vice versa" (Attached form);

(ii) Description of invention/utility solution

(iii) Document requesting conversion of patent/utility solution registration application;

(iv) Power of attorney (if the application is submitted through an industrial property representative service organization);

(v) Application fee (150,000 VND), Publication fee (120,000 VND in case the patent/utility solution application has a Decision accepting the valid application).

- Time limit for processing conversion applications: After receiving a valid application conversion request, the Intellectual Property Office continues to carry out the conversion application processing procedures according to the corresponding regulations, but does not re-carry out the procedures that were carried out before the conversion request.

2. Application form:

Applicants can choose to submit a paper application or submit an online application via the Intellectual Property Office's online public service portal, specifically:

(i) Paper application form

Applicants can submit their application for conversion directly or via postal service to one of the application receiving points of the Intellectual Property Office, specifically:

- Head office of the Intellectual Property Office, address: 386 Nguyen Trai, Thanh Xuan district, Hanoi city.

- Representative office of the Department of Intellectual Property in Ho Chi Minh City, address: No. 31 Han Thuyen, Ben Nghe Ward, District 1, Ho Chi Minh City.

- Representative office of the Department of Intellectual Property in Da Nang city, address: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang city.

In case of submitting the application for conversion by post, the applicant needs to transfer money via postal service, then photocopy the Money Transfer Receipt and send it with the application to one of the above application receiving points of the Intellectual Property Office to prove the amount of money paid.

(Note: When transferring fees to one of the above application receiving points of the Intellectual Property Office, the applicant must send the application via post to the corresponding application receiving point).

(ii) Online application form

- Conditions for submitting an application online: Applicants need to have a digital certificate and digital signature, register an account on the Online Application Receiving System and have their account approved by the Intellectual Property Office to carry out IP registration transactions.

- Procedure for submitting online application: The applicant must declare and submit the application conversion dossier on the Online Application Receiving System of the National Office of Intellectual Property. After completing the declaration and submitting the application on the Online Application Receiving System, the System will send the applicant a Confirmation of Online Document Submission. Within 01 month from the date of submitting the online application, the applicant must go to one of the application receiving points of the National Office of Intellectual Property on working days during transaction hours to present the Confirmation of Online Document Submission and accompanying documents (if any) and pay the prescribed fees/charges. If the documents and fees/charges are complete as prescribed, the officer receiving the application will issue an application number to the Declaration on the Online Application Receiving System. If the documents and fees/charges are not complete as prescribed, the application will be rejected. In case the Applicant fails to complete the application procedure as prescribed, the online document will be cancelled and a Notice of Online Document Cancellation will be sent to the Applicant on the Online Application Receiving System.

[Article 115 of the Law on Intellectual Property and Article 17 of Decree 65/2023/ND-CP]

3. Declaration form specified in the Appendix attached to Decree No. 65/2023/ND-CP