THE DEVELOPMENTS IN VIETNAM’S INTELLECTUAL PROPERTY LAW WITH DECREE 65/2023/ND-CP

15/09/2023 - 1009 views

The Government of Vietnam has issued Decree No. 65/2023/ND-CP dated August 23, 2023 (which took effect immediately)guiding the implementation of the Intellectual Property Law, specifically focusing on industrial property, protection of industrial property rights, rights to plant varieties and State management of intellectual property (hereinafter referred to as “Decree 65/2023” or the “new Decree”).

Replacing Decree No. 103/2006/ND-CP dated September 22, 2006, and Decree No. 105/2006/ND-CP dated September 22, 2006 of the Vietnamese Government,  the new Decree comprises 5 Parts and 125 Articles. Within the framework of this article, Ageless will highlights nine (9) important provisions that should be noted.

 

                                            Many positive changes in Intellectual Property Law system

 

1. Scope of Regulation in Decree 65

Decree 65/2023 details and measures to implement  the provisions of the  Intellectual Property Law on:

  • Establishment, subjects, content, and limitations of industrial property rights ; transfer of industrial property rights, industrial property representation, and measures to promote industrial property activities.
  • Determination of the acts, nature, and extent of infringement, damages, the request and settlement of the request for handling the infringement, rights related to plant varieties; control of export-import goods related to industrial property ownership; appraisal of industrial property rights, etc.

 

2. Introduction of New Application Forms and Protection Title Forms

Decree 65/2023 has introduced new application forms and protection title forms (replacing the previous application forms and protection certificate forms in Circular No. 01/2007/TT-BKHCN).

Hence, starting from August 23, 2023, to avoid application rejection, applicants must use the new application forms for procedures such as establishing rights, transferring rights, using industrial property rights, renewing, modifying, extending, maintaining, terminating, canceling protection certificates.

 

3. Issuance of Protection Title in both Electronic and Paper forms

Prior to August 23, 2023, trademark applicants were only granted protection title in paper form by the Intellectual Property Office of Vietnam (IPVN) if their trademarks met the protection conditions.

According to Decree 65, protection titles can now be issued in both electronic and paper forms from August 23, 2023. However, paper form will only be issued upon the applicant’s request in the application. Consequently, if applicants do not request paper form, they will receive electronic form by default and vice versa.

This change aligns with the current digital transformation trend in our country, reducing paper usage and simplifying administrative procedures while allowing applicants the choice of certificate format.

 

4. Simplification of Procedures for Amending and Supplementing Applications for the Establishment of Industrial Property Rights

Decree 65/2023 introduces several changes in the procedures for amending and supplementing applications for the establishment of industrial property rights, specifically:

  • The new Decree allows applicants to request certain amendment before IPVN issues the official decision on formality acceptance or grant/refusal of protection tile, including the applicant’s country code, address of author of inventor, layout design, industrial design, and modifying industrial property representatives.
  • Applicants are required to submit supporting documents in cases where they amend the name and nationality of authors, name and address of organization. In case the applicant wishes to change the representatives, they must submit a declaration of change of representative.
  • Notably, if applicants proactively amend their applications before IPVN issues the notice of formality results, they only need to submit a written request specifying the amendment instead of filing a amendment application as previous.
  • Moreover, applicants are not required to submit detailed explanations of amendmends in cases of amend trademark sample, list of goods or services of trademark, geographical indication product descriptions, corresponding geographical region maps.

Decree 65/2023 provides detailed guidelines on documentation and simplifies administrative procedures to expedite the process of amending industrial property rights registrations.

 

5. Submission of explanatory documents for splitting industrial property applications

According to Decree 65, before the IPVN issues the official decision on formality acceptance or grant/refusal of protection tile , the applicants can divide their applications into one or more new applications (divisional applications). However, the request for the division of an application will only be accepted in cases below:

  • Division involves one or more technical solutions in patent applications,
  • Division concerns one or more industrial designs in design patent applications,
  • Division pertains to one or more product or service categories in trademark applications. Division components of trademark sample is not accepted.

Regarding documentation: Previously, when dividing industrial property applications, applicants were required to submit a request letter for the division. However, starting from August 23, 2023 (the effective date of Decree 65), applicants must submit explanatory documents detailing the subject matter requiring protection and the changes compared to the original application.

 

6. Clarification of procedures for withdrawing industrial property applications

Previously, IPVN would issue a notice to refuse the withdrawal in case the withdrawal request does not satisfy the requirements.

Decree 65/2023 introduces provision requiring IPVN to issue a notice of provisional refusal t if the withdrawal request does not fulfill the conditions and sets a two-month deadline from the date of the notice for the applicant to rectify. If the applicant rectifies the deficiencies successfully within this timeframe, IPVN will then issue a notice to accept  the withdrawal request.

The new provision establish a comprehensive procedure for withdrawing industrial property rights applications and supports the protection of applicants’ rights.

 

7. Clarification of conditions for requesting amendments to a trademark sample

The request to amend the trademark sample existed in previous regulations, specifically: “request for amendments of some minor details but not significantly change the trademark sample”. However, practice shows that this regulation is not sufficiently clear toassessing what constitutes a significant change in a trademark sample, leading to many difficulties for trademark applicants when implementing.

Decree 65/2023 provides clearer conditions for amending trademark sample. Accordingly, requests for amending trademark sample on protection title are accepted if they meet the following conditions:

  • Only remove minor details, which are disclaimers (not separately protected) and
  • Does not change the distinctiveness of the trademark.

These explicit criteria make it easier for trademark owners to determine which requests for amending trademark sample are acceptable. While trademark owners are allowed to request amendments, such changes must fall within the prescribed limits. This balance prevents abuse of the right to request amendments to the trademark sample, while still accomodating legitimate needs for amendments of the trademark owner.

 

8. Supplementing of provisions relating to international industrial design applications

The previous decrees, which was issued before Vietnam’s accession to the Hague Agreement, did not contain provisions related to international industrial design applications.

In the new Decree, procedures related to international industrial design applications under the Hague Agreement (Hague Design Applications) have been defined, including:

  • Procedure for submitting Hague Design Applications originating from Vietnam,
  • Procedure for processing of Hague Design Applications originating fromVietnam through IPVN,
  • Procedures for Hague Design Applications designating Vietnam.

These provisions provide a clear framework for domestic applicants to protect industrial designs abroad or international applicants to designate from abroad into Vietnam.

 

9. Supplementing regulations related to Madrid applications originating from Vietnam that have been issued an international registration number

According to the new Decree, requests related to Madrid applications originating from Vietnam that have been granted an international registration number can now be directly processed with the International Bureau of WIPO or through IPVN.

In case the applicant chooses to submit through the IPVN, the applicant needs to prepare complete set of documents as stipulated in Article 26(3) of Decree 65/2023.

Decree No. 65/2023 marks a significant milestone in enhancing the legal framework for intellectual property in Vietnam, contributing to the integration of intellectual property regulations into daily life. This new decree also fosters the development of science and technology, encourages creativity and innovation among organizations and individuals in the field of industrial property ownership, and enhances Vietnam’s competitiveness in the international market.

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