NGUYEN TRAN TUYEN
Vision & Associates
The 2005 Law on Intellectual Property (IP Law), which includes 222 articles and took effect on July 1, 2006, has opened a new chapter for protection of intellectual property rights (IPR) in Vietnam. This law together with its guiding regulations also has actively contributed to Vietnam’s accession to the World Trade Organization (WTO).
After more than two years of implementation, however, some limitations of the Law should be addressed to enhance its applicability and contribution to Vietnam’s development. This article introduces some major contents of the fifth and latest draft of the Law which revises some articles of the IP Law (“the Draft”), which will be presented for approval by the National Assembly in 2009.
Under the Draft, 36 articles of the IP Law would be amended and one article, Article 220a, would be added. Following are some notable proposed changes.
Copyright terms extended
The term of copyright protection for cinematographic works, photographic works, dramatic works, applied art works, and anonymous works as well as the term of protection for related rights (Article 27.2.a and Article 34) would be extended to 75 years, from 50 years as currently provided. The extension should be made for a number of reasons. First, it aims to provide equal treatment for Vietnamese individuals and legal entities and those of the United States of America, in which said works are protected for 75 years under the US Copyright Law. In addition, as a WTO member, Vietnam should apply the national treatment principle. As a matter of fact, since the average life expectancy in Vietnam has reached 73 years, it is reasonable to extend the term of protection for some works to create equality with works which are protected for whole life of the author and 50 years after the author’s death.
Patent applications
The specific term of examination for industrial property applications stipulated in Article 119 would be removed and stipulated in a separate legal document issued by the Ministry of Science and Technology. This amendment is considered as a measure for the National Office of Intellectual Property of Vietnam (NOIP) to deal with its current overload by having opportunities to extend the time of examination of IP applications.
Enforcement of IP rights
According to an amendment to Article 201.1, state authorities in charge of IP management have been added as organizations having authority to assess IPR infringements. This amendment would pave the way for the NOIP or Copyright Office of Vietnam (COV) to continue to assess IPR infringements as before the IP Law was enacted. Under the current IP Law, the NOIP or COV has no right to assess IPR infringements because they are registries of IPRs. They therefore should not conduct IPR infringement assessment to ensure the objectivity of assessments. Rather, IPR assessment should be conducted by other individuals or organizations with good knowledge of IP. Ironically, after two-year implementation, contrary to the expectation of lawmakers, this change seems to be the main obstacle to enforcement of IPRs due to lack of assessment organizations or assessment specialists. Therefore, IPR owners as well as IPR enforcement lawyers hope that this proposed change would enhance the effectiveness of IPR enforcement in the near future.
According to a proposed amendment to Article 211.1, under administrative procedures, there is no need to send a warning letter to suspected infringers, as currently required. However, the drafters of the law clearly understand that IPR infringements as infringements of private ownership rights are considered civil infringements but not infringements of public order (administrative affairs). Thus, they opined that this is a temporary solution only while handling IPR infringements under civil remedies (by civil courts) is not of interest to IPR owners and IP lawyers due to the limitations of civil remedies.
Unfair competition
Under the proposed amendment to Article 211.1.b, acts of unfair competition would be handled under the IP Law, not the Competition Law as currently prescribed. The drafters argue that acts of unfair competition are considered civil infringements and would be protected more effectively if handled under the IP Law.
Under the proposed amendment to Article 214.4, the Government would apply fine levels in compliance with the newly amended Ordinance on Handling of Administrative Violations (amended in 2008). Accordingly, a fine imposed for IPR infringements must not exceed VND 500 million under administrative procedures since VND 500 million is the maximum fine level provided under the Ordinance.
A maximum fine of VND 500 million provided by in the 2008 Ordinance on Handling of Administrative Violations is strict enough to punish and deter IPR infringers from infringing acts, while the current fine of from one to five times the total value of IPR-infringing goods seized, as currently provided, is considered too much and infeasible.
Under the current IP Law and Ordinance on Handling of Administrative Violations, only the chief inspector in charge of IP has the right to issue administrative decisions imposing a fine of over VND 500 million. This could cause overload for the IP Chief Inspector, making this existing provision infeasible.
Under Article 220A on settlement of appeals and disputes involving IP, the Government will provide detailed regulations on the settlement of appeals related to establishment, transfer and protection of IPRs. The People’s Supreme Court will prepare and submit to the Standing Committee of the National Assembly a plan for setting up specialized IP courts located in Hanoi, Ho Chi Minh City and Da Nang in order to deal with IP cases nationwide. The drafters argued that since IP is a very specific and complicated field, the settlement of IP disputes requires specialized judges and courts. Moreover, the establishment of IP courts would pave the way for education and training of good judges specializing in IP cases.
Furthermore, provisions concerning rights for plant varieties such as distinctiveness of the plant variety (Article 160), extension of the rights of protection of certificate holders (Article 187) and limitation of the rights of certificate holders (Article 190), are considered non-compliant with the UPOV, the International Convention for the Protection of New Varieties of Plants. These provisions are proposed to be amended in the Draft.