What if the Trademark Office refuses to accept the filed industrial design application in Vietnam?
If the applicant to whom The National Office of Intellectual Property of Vietnam (NOIP), has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application.
Applicants and all organizations and individuals having rights and interests directly related to the decision may lodge a complaint with the Director General of NOIP or initiate a lawsuit at court if they disagree with this decision within 90 days from the date the person having the right to complaint receives the notice of this decision.
Within 10 days from the date of receipt of a complaint about the decision of refusal, NOIP shall issue a notice of acceptance or rejection of such complaint, clearly stating the reason(s) for rejection.
Upon the expiration of the time limit for settlement of the complaint about decisions or notices concerning the application for an industrial design patent (the 1st complaints) by the NOIP such decisions or notices, if the complaint is not settled or the complainant disagree with complaint-settling decisions of the NOIP, the complainant or person having rights and interests directly related to the decision may further lodge their complaints (the 2nd complaints) to the Minister of Science and Technology or initiate a lawsuit at court within 30 days from the date of expiration of the time limit for settlement of the 1st complaint if by that date the 1st complaint is not settled, or from the date the person having the right to complaint receives or knows about the decision on settlement of the 1st complaint. Upon the expiration of the time limit for settlement of the 2nd complaint above or if the complainant disagree with complaint-settling decisions of the Minister of Science and Technology, such complainant or person may initiate a lawsuit at court.
How does the formality examination for a design application in Vietnam take place?
Filing an industrial design in Vietnam requires a formality examination for evaluating its validity.
The time limit for formality examination of an application in Vietnam is one (1) month from the filing date. In the course of formality examination, if the applicant corrects or supplements documents on his/her own initiative or upon the request of The National Office of Intellectual Property of Vietnam (NOIP), the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.
Before the expiration of the time limit above, the NOIP shall complete the formality examination of applications and send notices on examination results to applicants.
• For a valid application, the NOIP shall send to the applicant a notice on acceptance of valid application.
• For an application failing to meet formal requirements, the NOIP shall send to the applicant:
A notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal and set a time limit of one month from the date of notification for the applicant to give opinions or correct errors.
What are the required documents for filing an industrial design application in Vietnam?
The design application shall consist of the following documents:
a) A request made in prescribed form (as prescribed in the Circular No. 01/2007/TT-BKHCN);
b) Documents, samples, information identifying the design as provided for in Articles 103 of the IP Law 2005 of Viet Nam (e.g. a set of photos or a set of drawings and a description of the industrial design);
c) Power of attorneys, if the application is filed through a representative;
d) Documents evidencing the right to registration, if acquired by the applicant from another person (e.g.: Deed of Assignment);
e) Documents evidencing the priority right, if claimed (e.g. certified true copy of priority document and Deed of Assignment);
f) Receipt of fees and charges.
All documents of the application shall be in Vietnamese, except for the documents mentioned at point c, d, e and other documents supporting the applications, which can be made in another language but must be translated into Vietnamese at the request of National Office of Intellectual Property of Vietnam (NOIP).
What are the protection conditions for an industrial design in Vietnam ?
An industrial design shall be protected in Vietnam when it satisfies the following conditions:
• Being new: An industrial design shall be considered new if it significantly differs from other industrial designs that are already publicly disclosed through use or by means of written descriptions or in any other form, inside or outside the country, prior to the filing date or the priority date, as applicable, of the industrial design registration application.
• Being creative: An industrial design shall be considered creative if, based on industrial designs already publicly disclosed through use or by means of written descriptions or in any other form, inside or outside the country, before the filing date or the priority date, as applicable, of the industrial design registration application, it cannot be easily created by a person with average knowledge in the art.
• Being susceptible of industrial application: An industrial design shall be considered susceptible of industrial application if it can be used as a model for mass manufacture of products with appearance embodying such industrial design by industrial or handicraft methods.
What is an industrial design in Vietnam ?
Under Vietnam regulation, an industrial design means a specific appearance of a product embodied by three-dimensional configurations, lines, colors, or a combination of these elements.
Are there Limitations to Patent Rights in Vietnam?
Patent rights as mentioned above are subject to certain limitations as mentioned below:
Prior Users' Rights
An individual or entity that, prior to the publication date of the patent application, had used the invention, utility solution independently of the patentee, shall have the right to continue the use after the patent is granted. However, the prior user can not extend the scope or increase the volume of use compared with the use prior to the publication date of the application. Prior user's right can not be transferred.
The Ministry of Science and Technology (MOST) may grant a compulsory license in the following circumstances:
The patentee fails to use the patented invention, utility solution, or used but not compatible with the socio-economic development of Vietnam, without any justifiable reasons;
The person willing to use the invention, utility solution has tried by every means to negotiate with the patentee with a reasonable price to enter a license but failed;
The use of the patented invention, utility solution is to serve the demands of national defense and security, prevention and treatment of human disease or other urgent needs of the society.
The licensee of a compulsory license shall have to pay the patentee a certain amount of royalties as specified in the decision of granting compulsory license from the MOST.
The following cases are also not covered by the patent rights:
The use is not for commercial purposes;
The circulation and use of the products that are sold or marketed by the patentee, his assignee or licensee or a prior user;
The use of the patented invention or utility solution on foreign means of transportation which are in transit or temporarily located in the territory of Vietnam and such use is only for the purpose of maintaining the operation of such means.
What is the act of patent infringement in Vietnam ?
The following acts, committed without the consent from a patent holder, shall constitute a patent infringement:
(i) Manufacturing products using a patented invention or utility solution;
(ii) Using, importing, advertising or circulating products that have been manufactured using a patented invention or utility solution; and
(iii) Applying patented process in Vietnam.
What are the Rights and Obligations of Patent Owners under Vietnam regulation?
A patent owner shall be entitled to:
(i) Exclusive use of the patented invention or utility solution, including the right to license,
(ii) Request any person infringing his patent rights to cease from the infringement and ask for any damage suffered.
The patent owner has certain obligations including:
(i) To pay remuneration to the inventor(s),
(ii) Pay the annuity of the patent, and
(iii) Use or license the patented invention or utility solution to a third party in the form of compulsory license according to the decision of the competent State authority.
When a patent application in Vietnam will be published? What is the content of publication?
In general, patent applications in Vietnam will be published in the 19th month from the earliest priority date or the filing date in case the application has no date of priority or within two (2) months after being accepted as a valid application, which ever is later for opposition and comments of third parties. Applicants shall pay a fee for such publication.
Patent applications under the Patent Cooperation Treaty (PCT) shall be published within two (2) months from the date it is accepted as a valid application and enters the national phase.
Detailed information including full specification can be accessible at the NOIP under request and subject to prescribed fee.
How does the substantive examination for a patent application in Vietnam take place ?
The substantive examination is to assess the patentability and will be carried out by the examiners within 18 months from the date of the request or the date of publication (depends on which comes later).
The NOIP shall send the applicant one of the following notices:
- A notice of intended refusal, clearly stating the reasons and setting a time limit of 2 months for the applicant to give the opinions and fulfill the requirements.
- A notice of intended grant and request the applicant to pay the fees (including granting fee, publication and the fee for maintenance of the first year’s validity of the patent).
Within 10 days after applicants pay the fees, the NOIP shall carry out the process for granting the patent in Vietnam.
A patent for invention is granted if the technical solution meets the protection criteria of novel, inventiveness, and capability of industrial application. A patent of utility solution could be granted if a technical solution does not meet the required level of inventiveness but is not common knowledge.
How does the formality examination for a patent application in Vietnam take place ?
A patent application shall be subject to formal examination. The time limit for formality examination is within 1 month from the filing date with national applications, and within 32 months from the earliest priority date or 1 moth form the date of the request to the national phase early with PCT application.
- In case the patent application is filed sufficiently, the Vietnam Trademark Office shall send to the applicant a notice on formality acceptance.
- For an application that fail to meet the formal requirements, The NOIP shall issue a notice of intended refusal, clearly stating the reasons and setting a time limit to correct and set a time limit of one month from the date of notification to give opinions.
How to maintain the validity in order to protect a patent in Vietnam ?
- A patent for invention shall each have a validity starting from the grant date and expiring at the end of 20 years after the filing date.
- A patent for utility solution shall each have a validity starting from the grant date and expiring at the end of 20 years after the filing date.
Annuity needs to be paid in order to keep the patent valid. To have the validity of his/her invention protection title maintained, a protection title holder shall pay a validity maintenance fee within six months before the expiration of the validity term. The payment of the validity maintenance fee may be delayed for no more than six months after the expiration of the current validity term but patentee shall pay the maintenance fee plus 10% for each month of delayed payment.