Law on Intellectual Property Law (the IP Law) passed by the National Assembly of Vietnam in 2005 (Law No. 50/2005 / QH11) took effect from July 1, 2006, was amended and supplemented in 2009 (Law No. 36/2009 / QH12) and 2019 (Law No. 42/2019/QH14).
The upcoming Law on amending and supplementing the current IP Law aims to solve the shortcomings and limitations that have been revealed in the implementation of the IP law over the past 15 years and at the same time, to internalize international commitments on IP when Vietnam joined WTO/TRIPS (in 2007) and a series of new generation Free Trade Agreements such as CPTPP, EV-FTA, RCEP in recent years.
The Ministry of Science and Technology (MoST) is assigned to lead and coordinate with the Ministry of Culture, Sports and Tourism (MoCST- in charge of copyright) and the Ministry of Agriculture and Rural Development (MARD- in charge of new plant varieties) to draft this Law (“the Draft”) .
The drafting process began in early 2019, ended at the end of 2020 markìng by MoST's publication of the Draft (version 2.0) on its website on November 17, 2020 for public consultation within 60 days. Based on the comments, the MoST will finalize the Draft; submit to the Government for final consideration in Quarter 2, 2021, and after that to the National Assembly for adoption at the 2nd session, the XV National Assembly, October 2021.
This Draft amends and supplements 80 articles of 14 chapters (Chapter II, III, V, VI, VII, VIII, IX, X, XI, XII, XIII, XIV, XVI, XVIII), specifically as follows:
- To amend and supplement 67 articles: namely articles 3, 4, 20, 21, 22, 25, 26, 28, 29, 30, 31, 32, 33, 35, 36, 49, 50, 52, 55, 56, 60, 72, 73, 74, 75, 79, 80, 86, 88, 92, 95, 96, 97, 100, 103, 106, 109, 110, 112, 117, 121, 123, 124, 125, 128, 130, 139, 145, 146, 151, 153, 154, 155, 157, 158, 163, 165, 171, 176, 186, 188, 190, 198, 201, 211, 213, 216;
- To add 01 section: Section 5, Chapter VIII;
- To supplement 13 articles: namely articles 56a, 86a, 89a, 112a, 119a, 120b, 120c, 128a, 131a, 133a, 136a, 198a, 198b
After having amended and supplemented, the amended IP Law will have 18 chapters (remains the same) and 235 articles (increase 13 articles compared to the current Law).
In general, amendments and supplements can be classified into the following 7 groups:
(i) Copyright - related rights:
The Draft provides clearer and more detailed regulations on authors, copyrights owners, performers, and related rights holders, especially in cases of transfer or transfer of copyrights and related rights. Notable amendments are:
- to amend Article 20 (Property Rights), thereby clarifies the right to perform; copy right; the right to distribute or import for distribution to the public; the right to communicate, including the right to communicate the work to the public by means accessible to the public at a place and time of their own choosing; the right to lease and regulations of right exhaustion to meet practical requirements and ensure enforcement in accordance with international commitments;
- to amend Article 21 (Copyrights to cinematographic works and dramatic works), thereby removes some titles entitled to personal rights because it is no longer suitable with the practical situation such as studio art, designing props, at the same time, legalizing the provisions in Decree No. 22/2018 / ND-CP on "Authors and organizations, individuals that invest in finance and material - technical facilities to create cinematographic works. dramatic works can agree on the naming and repair of works" to meet practical needs.
- to amend Article 22 (Copyright to computer programs, data collection), thereby legalizes the the provisions of Decree No.22/2018/ND-CP on “Authors and owners of copyrights to computer programs can agree on repair and upgrade of computer programs" and "Organizations or individuals that are legally authorized to use copies of computer programs can make a backup copy for replacement when the copy is deleted, damaged or unusable, provided that the use of the backup is not inconsistent with the license agreement and is not transferred to others” as suitable for practice and implementation of international commitments.
- to amend Article 25 (Use of published works without obtaining permission and paying royalties, remuneration), accordingly amends and supplements a number of provisions on the use of the works for the purposes of scientific research, individual teaching and learning; used for having information or as documents for internal use in the State agencies and not for commercial purposes; used in library operations; used for the visual-impaired and other disabled people etc. to ensure the implementation of international commitments, while balancing benefits between copyright holders and beneficiary public access to works to continue research, study, creation, etc.
- to amend Article 26 (Use of published works without obtaining permission but paying royalties,remuneration), accordingly, the content of use of the works fixed on a phonogram or video recording that have already been announced in business or commercial activities at Clause 2, Article 33 to be moved to Clause 1b of Article 26 in accordance with Article 13 of the Berne Convention; to supplement the price-negotiation mechanism according to the Government's regulations in case the parties cannot reach an agreement and provisions on Vietnamese organizations, individuals enjoying preferences for developing countries for the right to translate works from foreign languages into Vietnamese and the right to copy for non-profit teaching and research in accordance with the Government's regulations.
(ii) Industrial Property
The Draft provides clearer and more detailed regulations on patentability/registability, the ownership and exploitation rights of inventions, industrial designs and layout designs that are the results of scientific researches which are financed by the State, creating favorable conditions for commercialization of IP assets. Notably are the followings
- to amend Clause 1, Article 60 (invention novelty), thereby makes it clear that an invention in the application with a later filing date or priority date is also considered as loss of novelty if disclosed in the another person's patent application that has an earlier filing date or priority date but is published on or after the filing date or priority date of the patent application.
- Amending Clause 1 Article 72 (General requirements for marks eligible for protection) – adding the protection of sound marks in order to fulfill the obligations in Article 18.18 of the CPTPP Agreement regarding the type of possible sign that can be registered as a trademark;
- to amend Clause 2 Article 74 (Distinctiveness of marks), specifically:
a) To amend and supplement the title of Clause 2 in order to clearly define the principle that the protection conditions of an application are assessed at the time of filing the application.
b) To amend Point e) on the assessment of the distinctiveness of an associated mark to fit with the deletion of the concept of an associated mark in Clause 19, Article 4.
- For point h) to add 2 additional regulations:
- Shorten the time period for consumers to forget the existence of a trademark from 5 years to 3 years on the basis of: (i) the rapid development of the market economy and different types of advertisement make a number of trademarks increasing; the public's retention time for a mark becomes shorter and shorter in the event that a certain trademark has withdrawn from the market; (ii) the increase of trademarks leads to increasingly limited trademark resources, so it is necessary to create a mechanism to remove trademarks that are no longer interested (due to no renewal, protection abandon, etc.) and give an opportunity to be registered for later-filed identical/similar marks.
- In the event that a mark registration has ceased to be effective but less than 3 years is taken as a cited mark to deny the mark later filed, if the applicant succeeds in proving that the cited mark has not been used even for five consecutive years, may request that the cited mark must not be used to prevent his/her mark registration.
- To add Article 86a, whereby the right to register an invention, industrial design or layout design which are the results of science and technology tasks financed by the State budget belongs to the institution/organization in charge of such tasks and this institution/organization will become the owner of the rights, except those objects belong to the defense and national security sectors, which will be registered by a representative of the State.
- to add Article 133.a (Rights to use inventions on behalf of the state) in cases where the State assigns the right to register to OTHER organizations or individuals, or makes a public announcement so that the whole society can access and exploit in case there is no organizations or individuals that wish to receive the right to register the above-mentioned objects.
(iii) Registration procedures in general
The Draft makes a number of amendments and supplements to make the registration procedure simpler, more transparent and convenient for the applicant; supplement the online filing mode to match the Government's roadmap for providing online public services. Some notable points: Some notable points are:
- To amend Article 109 (Formal examination of industrial property registration applications), thereby supplements the provisions of Clause 2 on the case where an invention application is filed in contravention of regulations on security control before registration abroad will be considered invalid.
- To amends Clause 3 Article 109 supplements the provision allowing an industrial design registration application to be published at the time later than the specified time at the request of the applicant but not more than seven months from the filing date to match the general trend of the world to allow the applicant not to reveal the design too early (due to easy to be imitated) to have time for preparation before bringing the industrial design product to market.
- To add Article 119a on appeals and settling appeals related to industrial property procedures, thereby defines a number of particularities in appeals related to industrial property that can be specifically handled instead of following general provisions of the Law on Appeal.
(iv Ensuring adequate level of protection and balance of interests between rights holders and society.
- to amend Article 95 (Termination of validity of Protection Titles), specifically adding points h, i, k, clause 1 on cases where the protection title is terminated (for instance, the use of the trademark causes misinterpretation to the public about the nature, quality or geographical origin of goods or services; trademark becomes common names of goods or services registered for that mark; foreign geographical indications no longer protected in the country of origin).
- Amends and supplements Clause 2 Article 190 (Limitations to the right of a plant variety protection certificate holder) with the addition of seed keeping limit (assigned to the Government to issue limits) for the next season in order to match the current economicsocial conditions of Vietnam and concurrently compatible with the UPOV Convention.
(v) Strengthening efficiency and quality of industrial property representation and assessment services
- to amend Article 155 (Conditions for practicing as an industrial property agent) – a person, in order to be granted a certificate for practising industrial property representation service need to have (i) bachelor's degree in law (in the case of practicing in the field of trademarks, geographical indications, trade names, anti-unfair competition, trade secrets) or (ii) bachelor's degree in law and university degree in technical field (for the case of practice in the field of invention, industrial design, layout design).
(vi) Improve efficiency of enforcement of intellectual property rights
- to amend Article 211 (Acts of IPR infringements liable for administrative remedies) to clarify which cases to be sanctioned by administrative measures or civil remedies. Regarding the application of administrative measures, two options are considered, namely (i) is applied to infringement of copyright, related rights, trademarks, geographical indications, plant varieties, or (ii) is applied only to the infringement of copyright or related rights to conform to Vietnam's practical conditions, international commitments and new generation free trade agreements which Vietnam joins.
- To amend Point b, Clause 5, Article 124 (Use of industrial property objects) in the direction of replacing the act of "circulating" into the acts of "selling, displaying for sale or transport" (as prescribed in Article 21. Decree 103/2006) to fulfill the obligations in Article 18.77.2 of the CPTPP Agreement, stipulates that there must be criminal penalties for importing or exporting goods of counterfeiting trademarks.
(vii) Ensure the full implementation of Vietnam's international commitments on IP protection:
- Adds Article 131.a on provisions to compensate patent owners for delay in the licensing of circulation of pharmaceuticals to fulfill obligations under the EVFTA Agreement.
- Adds point d, Clause 1 of Article 145 (Bases of compulsory licensing of inventions), whereby a compulsory licensing of the right to use for inventions may be required to meet the needs of the importing country eligible under the provisions of the TRIPS Agreement.
- Amends and supplements Article 157 (Organization or Individual entitled to protection of the rights for plant variety), according to which paragraph 2 clarifies "national treatment" (Article 4 of Law 1991 of the UPOV Convention) when it only means that the protection for citizens and residents of UPOV member states is treated like citizens of Vietnam.
- Removes the regulation on the conditions for protected varieties in Article 158 (General conditions for protected plant varieties) that are “on the List of species able to be protected by the State issued by the Ministry of Agriculture and Rural Development. " because paragraph 2 of Article 3 of the 1991 Law of the UPOV Convention provides that " Each Contracting Party shall apply the provisions of this Convention at the latest by the expiration of a period of 10 years from the said date, to all plant genera and species". Vietnam acceded to the UPOV Convention on December 24, 2006, as of December 25, 2016, has the right and obligation to protect all plant genera and species./.
(Pham Vu Khanh Toan is a Managing Partner, IP Attorney and Attorney at Law; Tran Dzung Tien is a senior IP Consultant, at the Hanoi Head Office of Pham & Associates)