Vietnam has revised quite a lot of provisions with respect to establishment and enforcement of intellectual property rights in the Third Amendment to the IP Law 2005 (the “amended IP Law 2022”), passed by the National Assembly on June 16, 2022. The amended IP Law 2022 replaces the First Amendment in 2009 and the Second Amendment in 2019 to the IP Law 2005 to comply with the CPTPP, EVFTA and RCEP. The amended IP Law 2022 will take effect from January 1, 2023.
Below is a summary of the main changes and additions:
I. Third-party’s observation and opposition to industrial property registration applications
Currently, the third party's observation on the grant of a protection title, including an opposition to an industrial property registration application, is specified in Article 112. Third Parties’ opinions on the grant of Protection Titles of the IP Law and Point 6. Handling of Third Parties’ opinions before issuing the decision on the grant of Protection Title of Circular 01/2007/TT-BKHCN (“Circular 01”) of the Ministry of Science and Technology.
The term "opinion" mentioned in Article 112, is explained in more detail at Point 6.1 of Circular 01 as "opinion on the right to register, priority right, requirements to protection and other issues related to the industrial property registration application”.
The amended IP Law 2022 adds a paragraph (underlined) to Article 112, stipulating that the third-party’s opinion is a reference source of information for the handling of industrial property registration applications and supplements Article 112a. Opposition against industrial property registration applications.
Specifically they are as follows
- Article 112. Third parties’ opinions on the grant of Protection Titles
From the date an industrial property registration application is published in the Industrial Property Official Gazette until the date of the decision to grant a protection title, any third person has the right to give opinions to the State management agency in charge of industrial property on granting or not granting a protection title for that application. Opinions must be made in writing, accompanied by documents or cited sources of information for proof.
The written opinion of the Third Party is to be considered as a source of information for the handling of an industrial property registration application.
It’s worth noting that now a third party's opinion is specified as "a source of information" for the handling of an industrial property application. Its consequence is that the responsibility to process and respond to the third party’s opinion received by the competent authority, in particular the NOIP, will not be bound to a strict procedure, even they may not respond to the opinion if it’s is deemed unfounded.
The most important change is that the opposition to the industrial property registration application, which accounts for a very large proportion of the third-party opinions [on the grant of Protection Title, is made into a separate section, by the inclusion of Article 112a as follows:
Article 112a. Opposition to the industrial property registration application
1. Before the date of issuance of the decision to grant the Protection Title, within the following time limits, any third person has the right to oppose the issuance of the Protection Title
a) Nine months from the date the invention registration application is published;
b) Four months from the date the industrial design registration application is published;
c) Five months from the date the trademark registration application is published;
d) Three months from the date the geographical indication registration application is published.
2. Oppositions specified in Clause 1 of this Article must be made in writing, enclosed with documents or cited as sources of information for proof, and must pay fees and charges.
3. The state management agency in charge of industrial property rights shall handle oppositions specified in Clause 2 of this Article according to the order and procedures prescribed by the Minister of Science and Technology”.
II. More legal basis for opposition to the IP registration application
Currently, Article 117. Refusal to grant a Protection Title stipulates that an industrial property registration application (“IP application”) may be opposed on the following grounds:
- the object stated in the IP application does not fully satisfy the protection conditions;
- the application meets the protection conditions but does not meet the first filing principle (for inventions and industrial designs);
- the application fails to get consensus of all applicants.
The amended IP Law 2022 amends Clause 1 and adds Clauses 1a and 3 to Article 117 to supplement the legal basis for opposing an IP application and suspending the examination of an IP application. Specifically, apart from the above provisions, an application for registration of an invention, industrial design, trademark or geographical indication shall be refused to grant a protection title in the following cases:
b) There are grounds to confirm that the applicant does not have the right to register the industrial property object or to register the mark with malicious intent;
đ) The modification or supplementation of the application expands the scope of the subjects disclosed or stated in the application or changes the nature of the objects requested for registration stated in the application.
1a. Apart from the cases specified in Clause 1 of this Article, an invention registration application shall be refused to grant a protection title in the following cases:
a) the claimed invention exceeds the extent of disclosure in the original description of the patent application;
b) the invention is not disclosed sufficiently and clearly in the invention description to the extent that it is possible for a person with average knowledge of the relevant technical field to make the invention;
c) For inventions which are directly created based on genetic resources or traditional knowledge about genetic resources, the patent application does not disclose or incorrectly discloses the origin of genetic resources or traditional knowledge about genetic resources;
d) An invention registration application is filed contrary to the regulations on security control of inventions specified in Article 89a of this Law.”;
3. When an industrial property registration application falls into the cases specified in Clauses 1, 1a and 2 of this Article, the state management agency in charge of industrial property rights shall carry out the following procedures:
a) Notify the results of substantive examination, clearly stating the intended refusal to grant the protection title, the reasons and setting a time limit for the applicant to oppose the intended refusal;
b) Suspend the application examination process in case the applicant submits a request to suspend the examination of the application and requests the cancellation or invalidation of the trademark registration certificate according to the exclusion cases specified at Points e and h, Clause 2, Article 74 of this Law. Based on the results of settlement of a request for cancellation or invalidation of a trademark registration certificate, the state management agency in charge of industrial property rights shall continue the application examination process;
c) Suspend the application examination process in case of receiving a copy of the notice of acceptance of the case by the competent court about the lawsuit filed by a third party related to the right to register an industrial property object or trademark registered with malicious intent. Based on the court's settlement results, the state management agency in charge of industrial property rights shall continue the application examination process;
d) Decide to refuse to grant a protection title if the applicant has no objections or unwarranted objections about the intended refusal specified at Point a of this Clause.”.
III. Using results of substantive examination of foreign patent registration offices
The amended IP Law 2022 legislates the use of the results of examination by foreign patent offices of the respective patent applications filed abroad as an important basis for consideration for grant/rejection to grant a Protection Title to an invention filed in Vietnam by adding Clause 3 to Article 114, specifically as follows:
“3. The state management agency in charge of industrial property rights may use the results of substantive examination of an invention registration application that is identical with the claimed invention conducted by a foreign patent office during the process of assessing patentability.
IV. Expert’s Opinion
Currently, Clause 4, Article 201 of the IP Law stipulates that “the state agencies competent to handle acts of infringement of intellectual property rights have the right to request expertise related to intellectual property while handling cases they have accepted”
Due to limited knowledge and experience, the competent agencies assigned to handle IP infringements and resolve IP disputes tend to rely on the conclusions of the expertise performing agency (which currently has only one in Vietnam, i.e., the Vietnam Intellectual Property Research Institute, VIPRI, under the Ministry of Science and Technology) to make decisions. To avoid this situation, the amended IP Law 2022 clarifies the role and nature of the experstise conclusions, by amending Clause 5, Article 201 to clarify it as follows:
“5. The expertise conclusion is one of the sources of evidence for the competent agency to handle and settle the case. The expertise conclusion does not conclude on the acts of infringement of intellectual property rights or concludes on the dispute case”.
V. Security control of inventions before filing applications abroad
The revised IP Law 2022 introduces for the first time separate provisions governing confidential inventions. Clause 12a, Article 4 defines confidental invention as "invention which is determined by a competent agency or organization as a state secret in accordance with the law on protection of state secrets".
“Article 89a. Security control for inventions before filing applications abroad stipulates that “Inventions in technical fields that have an impact on national defense and security, are created in Vietnam and are subject to registration of an individual who is a Vietnamese citizen and permanently resides in Vietnam or of an organization established under Vietnamese law may only file an invention registration application abroad if the invention registration application has been filed in Vietnam for carrying out security control procedures”.
Patent applications filed contrary to this provision will be considered invalid as to formality./.