The Intellectual Property Law 2022 (amended Vietnam IP Law 2022) which was ratified by the National Assembly of Vietnam on June 16, 2022, will officially enter into force as from January 01, 2023. Among the amended and supplemented contents, there are eight notable industrial design-related aspects that we would like to share our point of views in the framework of this Article.
1. Supplementing contents to the concept of an industrial design
This supplement is considered as one of the most notable highlights in the Vietnam amended IP Law 2022 on industrial design protection. Specifically:
- The IP Law 2005 stipulates that “Industrial design is the external appearance of a product represented by shapes, lines, dimensions, colors or any combination thereof”.
- While, the amended IP Law 2022 has adjusted as follows: “Industrial design is the external appearance of a product or part thereof to be assembled into a complex product, represented by shapes, lines, dimensions, colors or any combination thereof and visible in the process of exploiting the use of a product or a complex product” (Article 1.13).
Under this new concept, two more features are supplemented to bring industrial design practice in Vietnam in line with international standards and Vietnam’s commitments under the the European Union–Vietnam Free Trade Agreement (EVFTA).
2. Amending to simplify requirements for industrial design applications
According to the IP Law 2005, one of the mandatory documents accompanied with an industrial design application is awording industrial design description. In which, the industrial design description must satisfy complicated conditions. Specifically:
The amendment emphasizes on the requirements of the application, which includes a set of photos and/or drawings featuring the industrial design, rather than what writing in the description by the applicant under the current regulations. Accordingly, the application will show the nature of industrial design, the design characteristics in the application are presented by photos and/or drawings rather than by the wording description of the applicant in order to determine the scope of protection.
3. Deferment of publication date of industrial design application
According to the IP Law 2005, an industrial design application shall be published within 2 months as from the date of formality acceptance.
The Vietnam’s amended IP Law 2022, for the first time, allow applicants to delay publication of industrial design applications up to 7 months with condition the applicant must file a deferral request at the time of filing application, specifically:
“Industrial design registration applications, shall be published within 2 months as from the date of formality acceptance. Industrial design registration applications may be published later date upon requested by the applicant at the time of filing application but not later than seven months from the filing date of application
This is one of the new points on industrial design registration that cannot be ignored in the IP Law 2022. The addition of this provision makes a lot of sense for applicants in:
– Keeping up with general trend of the world on allowing the applicant not to disclose the design too early (avoid being imitated) to have sufficient time to prepare before officially launching the product (up to 7 months);
– The capacity to increase revenues by keeping the product under wraps before releasing it onto the market.
4. New mechanism for industrial design opposition in Vietnam
The IP Law 2005 provides one more new mechanism for a third party to give written opinion to the IP Office of Vietnam (IPVN) on granting or not granting a protection title to an industrial design registration application.
- The time limit is from the date the industrial design registration application is published in the Industrial Property Official Gazette to the date of the decision to grant the protection title;
- The written opinion of a third party is considered as a reference source for the processing of industrial design applications.
The amended IP Law 2022 introduces, for the first time, one more mechanism for industrial design opposition, specifically:
- The time limit is 04 months from the publication date of industrial design registration application and prior to the date of decision on grant of protection title;
- The opposition opinion must be presented in writing, enclosed with evidences or cited sources of information to prove objections, and must pay fees and charges;
- Order and procedures of processing opposition will be guided in detailed by the Minister Science and Technology.
5. Amending the regulations on industrial design owners (Article 121)
6. Supplementing legal grounds for refusal of an industrial design registration application
The IP Law 2005 provides 03 legal grounds for refusal of an industrial design application in Vietnam, which are:
- The application does not fully satisfy the conditions for industrial design protection;
- The application does not meet the “first to file” principle;
- In case there is more than one identical or insignificantly different design application being filed on the same day by more than one applicant and those applicants have not yet come to an agreement to withdraw one of those filed applications
IP Law amended 2022 introduces 02 more cases of refusal to grant protection titles, which are:
- The applicant neither has right to register the industrial design nor being assigned such right;
- Amendments and supplements to an industrial design application widen the scope of the object disclosed or stated in the application or change the nature of the object requested for registration stated in the application.
Under the circumtance, we are of the opinion that for opposition proceedings, a third party may use one of the five grounds above to oppose the grant of an industrial design registration application.
7. Amending and supplementing a number of regulations on invalidation of industrial design patents
Compared with the IP Law 2005, the amended IP Law 2022 has adjusted and supplemented a number of regulations on invalidation of industrial design patents.
Accordingly, an industrial design patent may be considered for partial or full invalidation if it falls into one of the following three cases:
- The applicant neither has right to register the industrial design nor being assigned such right;
- The object stated in the registration application fails to satisfy the conditions for protection of the industrial design or industrial design that contrary to social ethics and publicorder, harmful to national defense and security;
- Amendments and supplements to an industrial design application widen the scope of the object disclosed or stated in the application or change the nature of the object requested for registration stated in the application.
8. Supplementing regulations on the validity of the International Registration of Industrial designs designating Vietnam
The IP Law 2005 has no provisions on this content.
The amended IP Law amended 2022, for the first time, introduces regulations on the validity of international registration of industrial design designating Vietnam under The Hague System (Article 93) as follows:
– An international registration of industrial design designating Vietnam takes effect from the date the IPVN issues a decision to accept protection for an industrial design or from the day following the end of a period of 06 months from the date of the International Bureau within WIPO announced, whichever is earlier.
– The validity period of an international degisn registration is calculated according to the provisions of the Hague System.
The above are 8 notable changes on industrial design in the amended Vietnam IP Law 2022. We hope this article will bring value to you when practicing industrial design in Vietnam.
Should you need more information or require advice on IP matters in Vietnam, Laos, Cambodia and Myanmar, please do not hesitate to contact us via email: info@ageless.vn
