SOME UPDATES ON THE INTELLECTUAL PROPERTY SYSTEM IN VIETNAM DURING THE PERIOD from 2020-2021

Phạm Thu Nga – Vision & Associates

 1. Recent changes in relation to signatories on behalf of corporate applicants/owners before the IP Vietnam

Concerning the issue of signatories on behalf of corporate applicants/owners before the IP Vietnam, on 23 November 2020, the IP Vietnam did issue Notification No. 13822/TB-SHTT regulating that documents issued by corporate applicants/owners must be signed by their Chairman of Board of Members, Chairman of Board of Management, President, Director, General Director. If the signatories do not bear those titles, evidence of authorization granted to such signatories must be submitted.   

However, on 14 July 2021, the IP Vietnam issued Notification No. 6959/TB-SHTT (“Notification 6959”) loosening the above strict requirements in the Covid-19 situation. Briefly, according to Notification 6959, the signatories on behalf of the applicants/owners before the IP Vietnam are certified by their own signatures and the company seals (if any). The signatories shall take full responsibility before the applicants/owners and under the laws. 

Notification 6959 takes effect as from 14 July 2021 and applies to all procedures before the IP Vietnam, including those commenced before 14 July 2021. 

As such, it can be interpreted that almost all requirements set forth under Notification 13822 are now lifted. As a result, the applicants/owners no longer need to provide any documents proving authorization granted to the signatories to sign on behalf of the applicants/owners in any documents submitted to the IP Vietnam.

2. Transactions between the IP Vietnam and applicants during this Covid-19 pandemic time

In response to the complicated developments of the Covid-19 pandemic, at present, all transactions between the IP Vietnam (including Headquarter in Hanoi, Representative Offices in Da Nang and Ho Chi Minh City) and applicants will be conducted only via the postal service or the e-filing system until further notice. 

3. Extension of time limits for IP applicants affected by Covid-19 in carrying out procedures with the IP Vietnam

The IP Vietnam, taking into consideration of the recent Covid-19 pandemic in Vietnam, issued Notification No. 7581/TB-SHTT on 02 August 2021 in relation to the extension of deadlines in respect of procedures for establishing IP rights for all IP matters as follows:

i)Deadlines falling on the period from 30 June 2021 to 31 August 2021 in respect of procedures for establishing IP rights for all IP matters (i.e., claiming priority, supplementing documents, responding to decisions/notifications of the IP Vietnam, paying maintenance, renewal and other fees, filing appeals) shall be automatically extended to 30 September 2021 (inclusive).

ii)In other cases, if the applicants are still affected by the Covid-19 pandemic so that they could not exercise their rights and obligations on establishing IP rights at the IP Vietnam, they can request for applying provisions on objective obstacles and force majeure events as stipulated in the amended Circular 01/2007/TT-BKHCN (Rules 9.4 & 9.5) as amended and supplemented by Circular No. 16/2016/TT-BKHCN.

4. Two-year renewal for the Patent Prosecution Highway (PPH) program between the IP Vietnam and the Korean Intellectual Property Office (KIPO) 

On 28 May 2021, the IP Vietnam informed that the PPH program between the IP Vietnam and KIPO have been renewed for another 02 years (Phase 2, beginning from 01 June 2021 to 31 May 2023) right after the end of Phase 1 (starting from 01 June 2019 to 31 May 2021).

During Phase 2, the IP Vietnam will receive 100 PPH requests at maximum per year for applications meeting the prescribed requirements. The documents, procedures and requirements for filing a PPH request in Phase 2 are identical to those in Phase 1.

5. Vietnam’s official accession to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedures

On 1 March 2021, Vietnam submitted its instrument of accession to the Budapest Treaty. The Treaty has come into force in Vietnam as from 1 June 2021.

This accession is based on the recognition of the necessity and benefits of joining the Budapest Treaty, and at the same time complying with the commitments under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTTP”) that Vietnam is a member state. 

According to Vietnam IP Law and Regulations, for a biotechnology invention to be considered having been fully disclosed, not only the patent description must fully disclose the nature of the invention, but also sample(s) of the stated biological material have to be deposited at the recognized authority competent to store the biological material. 

The Budapest Treaty simplifies the procedure for depositing microorganisms which are subject matters of the patent applications. Accordingly, patent applicants, including Vietnamese applicants and foreign applicants, only need to submit the microbiological samples once at any international depositary authority located in the territory of the contracting states, and such deposition shall be accepted by all member states, including the IP Vietnam.