New significant changes on patent and trademark in Vietnam from 2018

To catch up with the trend of economic integration and bring Vietnam legal system of Intellectual Property (IP) closer to International regulations and practices, Ministry of Science & Technology issued the Circular No. 16/2016/TT-BKHCN amending and supplementing Circular No. 01/2007/TT-BKHCN. This Circular shall come into effect since January 15, 2018 providing amendments and supplements of some provisions generally creating certain favorable conditions but more stringent requirements in some cases for the applicants in relation to the establishment of IP rights (IPRs) for patent and trademark in Vietnam, particularly:

1. The revision of time limits for filing response to Office Action

Under the provisions of this new Circular, a period of one (01) month will be added to the pre-existing time limits (previously, one (01) month for Formality Examination Notice and two (02) months for Substantive Examination Notice). The new deadlines can also be extended once upon the applicant’s request and relevant extension fee paid. Apparently, this move facilitates the consideration and preparation of the applicant in response to Office Action.

2. The objection to disclaimers of trademark elements

The applicants are entitled with right to object to disclaimers of trademark elements in the Notice of intention to grant Certificate within three (03) months from the notification date if they do not agree with the scope of protection given by the National Office of Intellectual Property (NOIP).

3. New procedure for filing response to Office Action for International Trademark Registration

Before the ratification of this new Circular, there was a discrepancy between the time to file response to a refusal of an application that filed via Madrid System and a national application. Previously, there was only a period of 90 days given to appeal provisional refusals for Madrid applications. Under this new Circular, initially, the applicant will have a period of three (03) months to respond to the provisional refusal, then 90 days to appeal the Decision on Refusal with procedure as of national applications.

4. The revision of time limit for submitting Power of Attorney (POA)

POA may be submitted after the filing date but no later than one (01) month from the filing date. Particularly, this period is 10 working days for appeal process. This term cannot be extended any longer, thus, the applicants need to pay attention to the submission due date for the patent and trademark in Vietnam to avoid the unnecessary refusal.

5. Stringent amendments of the provisions on complaints

This new Circular amended the provisions on complaints mentioned at Point 22 of old Circular, specifically aims at clarifying:

– The principles of limiting the change of the complaint dossier, of amendments or supplements relating to the application which is the object of the complained decision.

– The subject of the complaint, particularly the types of decisions and notices that may be appealed or not considered as a complaint or unlawful.

The above amendments require high attention of the applicants from the initial step of IPRs establishment.

6. Removal of the grace period of six (6) months for late PCT national phase entry

The time limit for entering national phase of a PCT application, however, it was possible for late entry under the old Circular within a grace period of six (6) months with required extra fee following. Unfortunately, the new Circular has removed the existing provisions that allowing late entry of PCT applications after January 15, 2018.

According to this change, applicants are highly recommended to provide filing instructions in appropriate time before the 31-month deadline to allow time for Vietnamese translation for the PCT applications to enter national phase.

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