Recent Developments in the Vietnam IP Legislations
RECENT DEVELOPMENTS IN THE VIETNAM IP LEGISLATIONS
Vietnam Group of ASEAN IPA
1. Circular No. 16/2016/TT-BKHCN (“Circular 16”) dated 30 June 2016, effective as from 15 January 2018, by the Ministry of Science and Technology (“MOST”), amending and supplementing a number of articles of Circular No. 01/2007/TT-BKHCN guiding the implementation of articles of the IP Law concerning industrial property rights
The following are major changes related to the procedures for the establishment of industrial property rights in Vietnam under the new Circular 16.
1.1. General procedure
i.Power of Attorney (PoA) is allowed to be submitted after filing, but required within 1 month from the filing date in Vietnam (except for PCT-derived application where PoA can be submitted within 34 months from the earliest priority date as before). In case of appeal, PoA is required within 10 days from the date of filling the appeal.
ii.Where the applicant assigns more than one IP agents to proceed with different proceedings for one application, the NOIP will only contact the latest IP agent on record.
iii.Time limits for responding to NOIP’s Notifications in the formality examination stage: extended from 1 month currently to 2 months as of 15 January 2018.
iv.Time limits for responding to NOIP’s Notifications in the substantive examination stage: extended from 2 months currently to 3 months as of 15 January 2018.
v.Time limits for responding to NOIP’s Notifications on Intention to Grant: extended from 1 month currently to 3 months as of 15 January 2018.
vi.The NOIP may consider withdrawing decision on refusal and restoring examination process in case the applicant can find or provide with new factors (which have not been considered during the examination process) that may affect the examination results.
vii.In a third party’s observation proceeding, the third party will also be informed of the substantive examination result of the subject application.
viii.Regarding appeal proceeding, the amended circular provides detailed provisions on the eligibility of the appellants, decisions subject to appeal, the statutory limitation of appeal, appeal settlers, requirements of an appeal, time frame for appeal settlement, etc. The most significant change is that in order to appeal against a decision/notification, the appellant must prove the illegitimacy of the appealed decision/notification. In an appeal proceeding, the NOIP only considers the legitimacy of the appealed decision/notification at the time it is issued. It is explicitly provided that amendments or new facts will not be accepted at the appeal stage. Meanwhile, in practice in the past, an appeal submitting new facts is accepted at the appeal stage.
ix.Regarding cancellation/invalidation proceedings, the NOIP is requested to inform the IP holder of the cancellation/invalidation request within one (01) month from the requesting date.
1.2. Patent
i.All use-related claims, regardless of the claim wordings and of which technical fields, shall not be accepted by the NOIP.
ii.Late entry of PCT application into the Vietnam national phase is no longer available.
iii.Late request for substantive examination is not allowed, except in case the applicant encounters a verifiable force majeure event (natural disasters, enemy sabotages, etc.) or objective obstacle (sickness, business trips, studying far away, etc.).
iv.It is explicitly stipulated that the NOIP will not accept the patent application filed for an invention of a Vietnamese or an invention made in Vietnam if such an invention has been already first filed abroad, even when filed directly with the WIPO.
v.Post-grant narrowing of the scope of protection of a patent includes removing one or more claims from the granted claim set only.
vi.New section “Objective of the invention” is required in the patent description. However, it may be expressed as a separate section before section “Summary of the invention”, or as a sub-section of section “Summary of the invention”.
vii.Section “Examples” is no longer a must-have in the patent description.
viii.Section “Achievable benefits/ efficiency” is no longer a must-have in the patent description. In addition, it may be expressed as a separate section, or as a sub-section of section “Summary of the invention”.
1.3. Design
i.For divisional design application(s), fee for claiming priority under Paris Convention will be charged for the divisional design application which is filed due to failure of meeting the requirement of unity.
ii.The design owner may narrow the scope of design patent by removing one or several industrial design variations, one or several products from the set of products claimed in the design patent. Narrowing the design patent scope by removing one or several non-main design shaping features is not allowed any longer.
1.4. Trademark
i.The eligibility of organizations which are entitled to register certification marks and collective marks in Vietnam is specified.
ii.In case of disclaimer, the NOIP must explicitly state the intention and reason for such disclaimer and the applicant is entitled to state its opinion regarding such disclaimer within three (03) months from the notification date.
iii.If an International Registration is provisionally refused by the NOIP, the applicant will be entitled to respond against such provisional refusal within three (03) months from the NOIP’s notification date under the same proceeding with that of national applications, i.e., lodging a response with the NOIP. If the response is not accepted, the NOIP will then issue a decision of refusal and the applicant can then appeal against such decision following the appeal proceedings.
iv.In case the NOIP decides to partially refuse a trademark under an international registration, it will issue a decision on protection of the mark only for the part that meets protection requirement.
v.When a well-known trademark is recognized in the course of a decision on settlement of infringement of such well-known mark, or a decision on refusal of another mark based on the well-known trademark, such well-known mark will be recorded in the list of well-known marks which is kept at the NOIP for reference. With this provision, it can be understood that there is no independent procedure for recognizing well-known trademarks in Vietnam but a mark can only be recognized as well-known through other proceedings such as enforcement or examination of a trademark that is identical/confusingly similar to such well-known mark.
2. Decree No. 22/2018/ND-CP (“Decree 22”) dated 23 February 2018, effective as from 10 April 2018, by the Government of Vietnam, replacing Decree No. 100/2006/ND-CP (“Decree 100”) and its 2011 revision guiding the implementation of articles of the IP Law concerning copyrights and related rights
The following are major changes under the new Decree 22 as compared to Decree 100 and its 2011 revision.
2.1. More clear explanation and new definition of certain terms
Decree 22 gives clarification and new definition for certain terms such as “copies of works” and “joint authors” as follows:
-Copies of works means directly or indirectly reproduced versions of the entire or part of works by any mean or form.
-Joint authors means persons who jointly create part of or the entire literary, artistic or scientific works. Any person who renders supports, give comments or supply documents to others to create works shall not be recognized as author or joint author.
2.2. New regulation on transfer of rights to anonymous works
Under the new Degree 22, entities managing anonymous works may transfer rights to such works to others and are entitled to remuneration from such transfer. The entities that are transferred rights are entitled to rights of owners until work authors are identified. Such provisions are not stipulated in the old Degree 100 and its 2011 revision.
2.3. Obligation to pay when exploiting and using phonograms and video recordings for commercial purposes
The new Degree 22 stipulates that direct or indirect users of phonograms and video recordings must pay royalties, remunerations, material benefits to copyright owners or related right owners. The new degree also specifies that use of published phonograms or video recordings in business or commercial activities means the direct or indirect use by organizations or individuals of published phonograms or video recordings in restaurants, hotels, shops and department stores; in establishments providing karaoke, post, telecommunications or digital environment services; in tourist, aviation, and mass transit activities.
2.4. More specific regulations concerning the collection and distribution of royalties, remunerations and material benefits by collective representatives of copyrights
As one of the most important changes, Decree 22 provides for more specific regulations concerning the collective representatives of copyrights.
Accordingly, the designated collective representative could make a schedule of royalties, remunerations and material benefits. Users of works, phonogram and video recordings, broadcasts are obliged to contact copyright owner or related right owner or designated collective representative directly in terms of the use thereof.
Designated collective representatives may reach an agreement, authorize the negotiation, collect royalties, remunerations, material benefits as per the law. Proportion of royalties, remunerations, material benefits shall be agreed by the above-mentioned bodies.
Regarding the collection and distribution of royalties, remunerations, material benefits, the following are specified under the new degree:
-The collection and distribution of royalties, remunerations, material benefits shall be carried out in accordance with the charter of designated collective representative and authorization document of copyright owner or related right owner with agreement on the sum or percentage, methods and time for distribution of royalties, remunerations, material benefits.
-In case a work, phonogram, video recording or broadcast is related to the rights and interests of many designated collective representatives of specific rights or groups of rights, the involved parties may agree to designate one of them to negotiate on their behalf on the grant of use licenses, collect and distribute money according to the charter and authorization document.
