Lawyer Do Ba Thich, Senior Partner of ASL LAW
|Sticking origin tracing stamps on “Suu” grapefruit, a specialty grapefruit variety of Chi Dam commune, Doan Hung district, Phu Tho province__Photo: Trung Kien/VNA|
Since its enactment in 2005, the Law on Intellectual Property of Vietnam (the Law) has undergone several amendments, with significant changes in 2009 and 2019. After that, several decrees were issued to guide the implementation of the Law. Most recently, the Government issued Decree 65/2023/ND-CP providing detailed regulations and measures for enforcement of the Law concerning industrial property, protection of industrial property rights and rights related to plant varieties, and state management of intellectual property.
Development of intellectual property in Vietnam
Since 1989, when Vietnam enacted its first legal document regarding intellectual property protection, namely the 1989 Ordinance on Industrial Property Protection, the country has experienced nearly 35 years of implementing and applying intellectual property protection.
During this period, the law on intellectual property played a significant role in Vietnam’s rapid development. Through open policies, extensive international integration, and cooperation with many countries and multinational corporations worldwide, Vietnamese enterprises have established better mechanisms to protect intellectual property rights so as to meet international integration requirements.
Referring to the 1995 Civil Code, the first of its kind in Vietnam, it can be seen that the provisions on intellectual property rights were arranged in Part VI, with those on copyright listed in Articles 745 thru 779, and those on industrial property rights noted in Articles 780 thru 825.
To guide the 1995 Civil Code, the Government issued Decree 63 in 1996. This was the first decree providing in detail industrial property. Since then, the cabinet has issued two major amendments to the Law and many decrees guiding implementation of the Law, e.g., Decrees 99 and 114 of 2013 and Decree 22 of 2018.
Nevertheless, the enforcement of the law on intellectual property in Vietnam has faced various challenges and difficulties, particularly in the ever-changing context of technology development and international economic integration.
One of the crucial tasks in enforcing the Law is to secure effective protection of intellectual property rights. However, law enforcement still faces limitations, especially in controlling online infringement of copyright. When identifying the perpetrators of copyright infringement, authorities often struggle to gather evidence because data can be quickly deleted or disappear from the Internet.
On the legal aspect, many entities operating in the field of industrial property have suggested that current industrial property terms should be supplemented with clear definitions and procedures for establishing industrial property protection to avoid complexity in enforcement, particularly in international agreements on industrial property to which Vietnam has become a signatory in recent years.
Decree 65/2023/ND-CP, which consists of 125 articles arranged in five chapters, is expected to address the abovementioned issues. It comes into force on August 23 and supersedes Decrees 103 and 105 of 2006, Decrees 119 and 122 of 2010 and Decree 154 of 2018.
Notable points of Decree 65/2023/ND-CP
Decree 65 introduces important legal foundations for the enforcement and exercise of intellectual property rights in Vietnam.
Firstly, the Decree tightens security control for patents and defines secret invention.
Decree 65 strengthens security control for patents and introduces a definition of secret invention. The provisions on secret invention are outlined in Articles 48 thru 52. This definition supplements Articles 4.12a and 89a of the 2022 Law Revising a Number of Articles of the Law on Intellectual Property (the 2022 Law).
Article 14 of and Annex VII to Decree 65 provide detailed procedures and the scope of security control for patents in Vietnam, particularly technical patents that are likely to affect national defense and security.
In case patent applicants intend to submit patent applications abroad, they will need confirmation from agencies designated by the Ministry of National Defense and the Ministry of Public Security, stating that the invention in question is not a state secret and does not have a negative impact on national security of Vietnam.
While these stringent patent application review procedures contribute to preventing the inadvertent disclosure of important inventions related to national security, they might also result in significant delays in the patent examination process once the Decree becomes effective. Patent applicants and industrial property representatives will need to find suitable solutions to shorten the examination period and avoid unnecessary delays for patent applicants.
The complexity of the patent examination process, particularly the provision allowing the suspension of examinations “if there is a reason to suspect that the invention relates to technical fields affecting national defense and security,” may pose challenges for businesses, especially in sensitive technical areas related to national security, potentially impacting Vietnam’s development in these fields.
Secondly, the Decree gives provisions on splitting and withdrawal of industrial property registration applications.
Article 17 provides guidelines on splitting and withdrawal of industrial property registration applications, creating flexibility for applicants during the process of establishing industrial property rights.
As stated in the Decree, before the state management agency in charge of industrial property rights, which is the Intellectual Property Office of Vietnam, makes a decision to grant a protection certificate or refuses to grant it, the applicant can split the application.
The split application is assigned a new application number and takes the submission date of the original application, or if the original application has a priority date, that date will be taken.
The split application is assessed in terms of form and continues to be processed according to the procedures that have not been completed for the original application. The split application must be published as required.
With the mechanism of splitting applications, applicants will have more flexible options during the registration process. For example, if an application is partially rejected due to failure to meet the protection conditions, the applicant can strategically split the application, register the part that is qualified, and modify the part that is not qualified for submission later.
This allows the applicant to proceed with industrial property registration according to the planned schedule and timeline while retaining the submission date or priority date of the original application for the split application.
In case the applicant changes their registration strategy and finds that the registration application no longer fits their future plans, they can request for withdrawal of the application under Article 17.2 of Decree 65.
The Decree also adds a mandatory provision that the Intellectual Property Office of Vietnam must issue a notice of the intended rejection of the request for withdrawal of the application in case the request does not meet the conditions for the applicant to rectify. The specified time limit for this process is two months.
Specifying the procedures for withdrawal of industrial property registration applications helps applicants better control their registration strategy, enabling them to promptly abandon applications that are no longer suitable and save time and management costs, and facilitating the tracking of applications.
In addition, Article 16 also revises detailed regulations on modification/supplementation of industrial property applications, providing applicants with a specific legal avenue to carry out the process of establishing their rights.
Expediting the process of modifying/supplementing applications provides applicants with additional motivation and confidence in Vietnam’s industrial property registration system, promoting their active participation in future plans.
Thirdly, the Decree adds provisions on international design registration.
Articles 22 to 24 provide detailed procedures related to international design registrations originating in Vietnam and designating Vietnam under The Hague Agreement. This allows applicants of designs in Vietnam to be entitled to better protection for their works, thus encouraging further creativity and innovation.
The translation of international regulations into Vietnam’s legislation helps Vietnam’s design registration system conform to international standards, making it easier for domestic designers and businesses to seek protection for their designs in foreign markets, as well as attract foreign businesses into Vietnam.
Meanwhile, Articles 25 to 28 outline procedures for international trademark registration through the Madrid System, both those originating in Vietnam and those designating Vietnam.
In addition to the provisions regarding the Madrid System examination process, Article 26.3 adds further options after an international registration originating in Vietnam under the Madrid System has been granted, such as territorial expansion of protection, modification of the owner’s name or address, limitation of goods and services, extension of the international registration’s validity, appointment of a representative, replacement of a representative, and recording of the transfer of the international registration.
These actions can be taken directly with the World Intellectual Property Organization (WIPO)’s International Bureau or through the Intellectual Property Office of Vietnam.
Regarding international registrations designating Vietnam through the Madrid System, Article 27.10 introduces a noteworthy provision regarding the receipt of “third-party observations on international registrations designating Vietnam.” Accordingly, related parties will no longer be able to file oppositions against international registrations designating Vietnam but can only submit observations to be used as references during the processing of the registrations.
This regulation complies with Vietnam’s commitment to adhering to a 12-month examination period from the date when the WIPO’s International Bureau notifies the registration’s designation of Vietnam.
Fourthly, the Decree changes the form of protection title, and adds provisions on narrowing, reducing or eliminating the scope of protection of protection titles.
According to Article 29, protection titles will record the information specified in Article 92.1 of the 2022 Law and will be issued in electronic form by default, unless the applicant specifically requests a paper protection title.
As a result, from the effective date of the Decree, the Intellectual Property Office of Vietnam will issue electronic protection titles for applicants or their industrial property representatives.
This regulation manifests Vietnam’s digitalization efforts, aiming to minimize the use of physical resources. Digitizing legal documents also helps reduce the risk of damage due to prolonged physical storage by rights holders.
During their business operations, for various reasons, protection title holders may wish to narrow the scope of protection on their protection titles. Previously, this process was relatively complex due to the lack of guidance, causing difficulties to protection title holders and their industrial property representatives when dealing with such requests.
As stated in Article 29.3, protection title holders have the right to request the Intellectual Property National of Vietnam to narrow the scope of protection of their protection titles under Article 97.3 of the Law.
For trademarks, protection title holders may only request narrowing in case they intend to reduce one or several good(s), service(s) or group(s) of goods and services listed in their protection titles or remove minor elements that are excluded (not separately protected). However, the request must not alter the distinctive capacity of the trademark as indicated in the trademark registration certificate.
Finally, it provides new forms for industrial property registration.
The Decree modifies the current forms for registration of industrial property rights. Annexes I, II and IV list the registration forms for trademarks, patents, geographical indications, industrial designs, and layout designs, along with some new forms.
Notably, the forms include the “Application for confirmation of delay in registration procedures for initial circulation of pharmaceutical products” and the “Declaration requesting compensation due to delay in licensing the initial circulation of pharmaceutical products manufactured under patents.”
A noteworthy change in industrial property representatives and entities practicing intellectual property law services in Vietnam is that trademark registration, starting from the effective date of the Decree, will include the option to register sound trademarks, in addition to the previously available options of collective trademarks, certification trademarks, and three-dimensional trademarks.
Sound trademarks are a non-traditional form of trademark protection, first introduced and regulated in Vietnam by the 2022 Law. The addition of sound trademarks is conformable with Vietnam’s international commitments under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership.
These new application forms will be applicable for establishing intellectual property rights in the field of industrial property in Vietnam starting from August 23, the effective date of the Decree.-