Please advise how the request to oppose an industrial design application in Vietnam is processed?
According to the Article 6, Circular 01/2007/TT-BKHCN:
- Written opinions of the third part may be sent to The National Office of Intellectual Property of Vietnam (NOIP) from the date of publication to the date prior to the issuance of protection for the industrial design.
- The NOIP shall notify the applicant about the third parties’ opinions within 1 month after receiving opposition request. The applicant now have 1 month to give feedback in writing. The NOIP shall notify the feedback to the third party and then 1 month is given for responding.
On the basis of proofs and arguments, the NOIP shall finalize the opinions of both applicants and third parties.
- When considering opinions of the third party groundless, the NOIP is not required to notify those opinions to the applicant but shall notify the third party of its refusal to consider the opinions, clearly stating the reason for refusal.
- In case the NOIP cannot determine if the opinions of the third party are grounded or not, filing a petition with a court for handling is recommended. Within 1 month after the NOIP’s notice, if the third party:
+ Failing to the notify the NOIP about the filing for a petition with a court is regarded as withdrawing the opposition request.
+ If the notification is sent within the time limit, the application process shall be suspended until the results of dispute settlement by the court are obtained.
- When necessary and upon the request of both parties, the NOIP shall organize face-to-face meetings between the third party and the applicant to further clarify the matter challenged by an opposition.
Please be noted that the time limit for the applicant to respond to the opposition of the third party shall not be counted into the time limit for the NOIP to carry out relevant procedures according to regulations.
What are the requirements for the opposition design application in Vietnam?
- Requirements as to formality:
- Opposition must to be in Vietnamese written form. Any unofficial types of exchange information such as telephone, direct meeting with examiners are not recorded as official opposition.
- If a third party wishes to file an opposition through an IP agent, a Power of Attorney is compulsory.
- The opposition should provide the accurate personal contact information such as name, telephone, email or the similar things so that The National Office of Intellectual Property of Vietnam (NOIP) can conveniently get in contact with at any time.
- The third party is request to pay the regulated fees.
- Requirements as to substance of opposition application:
- Aforesaid legal basis and current basis need to be clearly presented, cohesion and coherence;
- Evaluations as well as inferences should be included to make the opposition more persuasive;
- The third party needs to guarantee and be responsible for the authenticity of the supplied information and filed documents.
Apart from the legal grounds for opposition, are there any documents or supporting evidence that the opponent should provide to oppose a design application in Vietnam ?
A third party needs to give all evidences to prove for the above mentioned legal basis, including images containing design, information resources and the issuing date of the information resources. The resources can be under the form of granted patent for design, published application in any countries or similar things. Data from internet is also considered as an evidence of disclosure of design. In many cases, applicants themselves disclosed design on their websites or marketing/trade channel.
It is noticeable that in case where a design is disclosed without designer’s permission will not be seen as lack of novelty, which regulated at point 4, Article 65, Law on Intellectual Property.
What is the time frame for filing an opposition against an industrial design in Vietnam?
A design application will be published if it meets requirements as to formality. The publication will be an important data resource for all parties follow industrial property to NOIP and carefully prepared documents for opposition.
This diagram shows the timeline for filing opposition:
Who can oppose my design application in Vietnam?
According to Article 112, Law on Intellectual Property 2005, “as from the date an industrial property registration application is published in the Property Office Gazette until prior to the date of decision on the grant of a Protection Title, any third parties shall have the right to present opinions to the States administrative authority of industrial property rights in relation to the grant or refusal of a Protection Title in respect of the application”.
Thus, anyone regardless relates or not to the design application has rights to file an opposition letter. However, if the third party is Vietnamese, they can directly file this opposition to he National Office of Intellectual Property of Vietnam. In the other cases, if the third party is a foreign opponent, they have to authorize a lawful IP representative in Vietnam to proceed with such action.
On what grounds can third parties oppose a design application in Vietnam?
A third party can oppose a design application on the grounds that:
- It believes that the subject matter does not meet the requirements for protection as a patent (which regulated in Article 65, 66, 67 of Law on Intellectual Property 2005, namely novelty, creativity and susceptibility of industrial application);
- The applicant is not a valid applicant.
An opposition can be submitted after the application is published, but before a granting decision is issued.
What are the required documents for an applied art work in Vietnam?
In order to register for an applied art work in Vietnam, the following information and documents is required:
- Full name, address, nationality of author(s);
- Full name, address, nationality of Owner;
- Date on which the applied art work was completed;
- Date and place of the first-made-public of applied art work (if any).
02 Executed and Notarized Power of Attorney (signed by person in charge of owner then affix a corporation seal of the Owner );
02 Certified true copy by a Notary Public of Identity Card or Passport of the Author(s);
02 Notarized Statement of honesty of the author (s) on creating the applied art work signed by the author(s);
Soft copy of the applied art work in .JPEG file;
02 certified true copy by a Notary Public of the Certificates of Business Registration of the owner;
02 Notarized Task Assignment Document from the owner (s) to the author(s) signed by person in charge of owner.
These documents must be in Vietnamese or translated into Vietnamese if they are made in foreign languages.
What can be protected using copyright in Vietnam?
Protection of copyright in Vietnam is given to literary, artistic or scientific works, which fall into any of the following categories:
(i) Literary and scientific works, textbooks, teaching materials, and other works expressed written letters or other characters;
(ii) Lectures, addresses, and other speeches;
(iii) Press works;
(iv) Musical works;
(v) Dramatic works;
(vi) Cinematographic works and works created by similar methods;
(vii) Fine art works and applied art works;
(viii) Photographic works;
(ix) Architectural works;
(x) Sketches, plans, maps, and drawings relevant to topography or scientific works;
(xi) Folklore and folk art works;
(xii) Computer programs and data collections;
(xiii) Derivative works;
To qualify for protection, a work must be original. The current copyright rules expressly state that copyright protection for a work is granted upon creation of the work in a given work, without subject to publication or registration. The protection is also given to the work irrespective of its form of embodiment and quality.
Derivative works shall only be protected if such protection is not prejudicial to the copyright in the works used to create such derivative works.
What are designer's rights in Vietnam?
The author(s) of an industrial design in Vietnam shall have the moral and material rights, namely:
(a) To have his or her or its name stated in the certificate of protection and in the National Registration Book of designs, as the author(s) and in other documents published in relation to such objects;
(b) To receive remuneration from the design owner;
(c) To request measures be taken, or to take legal action, against infringement of his or her or their rights above.
The material rights and the rights to request measures to be taken or to take legal action of the author of an industrial design as above stated may be transferred to another person and/or bequeathed in accordance with law.
What are the Rights and Obligations of Design Owners under Vietnam regulation?
Accordance with the Vietnam IP Law, a Design owner shall be entitled to:
(i) Exclusive use of the patented design, including the right to license,
(ii) Request any person infringing his design rights to cease from the infringement and ask for any damage suffered.
The design owner has certain obligations including:
- To pay remuneration to the designer(s),
- To pay the renewal fee for maintenance or renewal of the design patent, and
- To use or license the patented design to a third party in the form of compulsory license according to the decision of the competent State authority.
How does the Trademark Office respond to the filed industrial design in Vietnam?
In Vietnam, on the date of expiration of the time limit for substantive examination of a design application at the latest, The National Office of Intellectual Property of Vietnam (NOIP) shall send to the applicant one of the following notices:
• A notice on its intended refusal to grant an industrial design patent, clearly stating the reason(s) for refusal and setting a time limit of two (2) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements(the applicant may request prolongation of the above time limit),if the object claimed in the application fails to satisfy the protection conditions;
• A notice on its intended grant of an industrial design patent and request the applicant to pay the fee , if the signs claimed in the application satisfy the protection conditions or the applicant satisfactorily corrects errors or makes reasonable justifications within the time limit;
How does the substantive examination for a design application in Vietnam take place?
The purpose of substantive examination of design applications is to assess the eligibility of objects claimed in the application under the requirements and corresponding protection scope. An examination will be carried out by examiners of The National Office of Intellectual Property of Vietnam (NOIP), within 6 months from the date of publication.
If the applicant, in the course of substantive examination, corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the NOIP, the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.