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VIETNAM: CHANGES TO IP LAWS AND PRACTICES

22nd February, 2018

Vietnam has recently circulated a new circular regarding amendment of IP law, in which the changes took effect on 15 January 2018.

Below are some of the key changes for your information.

  Previous requirements New requirements
GENERAL MATTERS
1) Deadlines to response to office actions in relevance to formalities 1 month 2 months
2) Appeals and appeal settlement New facts/details are generally acceptable New facts/details will not be acceptable unless upon requests by the applicant or appellant.

Opinions from independent advisory experts and councils can be used for the appeal department – depending on the complexity of the appeal case to specify the functions, qualifications, sources and operating principles.

3) Decisions on refusal Normally, decisions on refusal are issued after considering the respective responses to office actions. Once a refusal is issued, the application may submit new details (which have not yet been considered in the examination) in which may affect the examination results, hence the NOIP will consider withdrawing the decision on refusal.
4) Termination and invalidation of a granted protection title No time limit for the NOIP to send notice for termination/validation proceedings The notice now must be sent within one month
5) Withdrawal of application Upon requesting for withdrawal, it is impossible to revive the application later – it is advisable to let the application lapse due to failure to meet a deadline rather than voluntary withdrawal.
6) Font and size All patent specifications must be in 130point or larger and in Times New Roman font type.
7) Nationality of inventor Nationality of inventor is required when filing an application.
8) Excuses for missing deadlines   Excuses such as natural calamity, enemy-inflicted destruction, etc.) and cannot be surmounted despite all necessary and possible measures having been taken and objective obstacles for circumstances such as business trip, learning at a distant place that eventually lead to a late submission can be excused if the applicant submits a petition and proper evidence demonstrating said events and the NOIP approves, after consideration. Such events are not common and it remains to be seen how late submissions will be treated.
9) Settlement of third-party opposition NOIP is required to inform the opposing party the decision/results; however they are not obliged to do so. NOIP is obliged to inform the opposing party of the examination results/decision. However, it is unclear whether the NOIP will inform the opposing party of any later stages (appeal proceedings) of the application

 

  Previous requirements New requirements
PATENTS
1) Time limit for entering the Vietnamese national phase of PCT applications Time limit of entering national phase is 31 months under both PCT Chapter I and Chapter II. A late entry within 37 months was possible with an extra fee. At time of filing:
– Vietnamese translation of the specification is required
– Applicants are advised to submit filing instructions earlier prior to the 31-month deadline.
2) Deadline for requesting examination – 42 months from the priority date (or the filing date if no priority is claimed) for patent applications for invention
– 36 months from the priority date (or the filing date if no priority is claimed) for utility model.
– The deadline can be extended by six months if the applicant submits proper reasons if there is a “force majeure event” or “objective obstacle” – evidence must be provided.
3) Features of function or purpose Only specifies that features of function/utility can be the essential features of an invention. Therefore, use inventions should not be objected to, because they are always based on features of function/utility which, as specified, can be the essential features of an invention (constituting an invention); and thus a use invention is a statutory invention. This is further clarified that the function/utility of a subject-matter is not an essential feature, but may be only the purpose/result of that subject-matter.
4) Amendment to specification Expansion of the protection of coverage beyond the contents disclosed in the description through an amendment is not allowed.

If the applicant wished to amend a claim, for instance, the content of the claim amendment would have to be already disclosed in the description. It was not sufficient for the content to be disclosed in the original claims. This could be considered not to comply with other Vietnamese legal documents.

In the amended circular, the word “description” was amended to “specification,” covering both the description and the original claims, as in international practice.
5) Annuity payment Power of Attorney is required for the annuity payment and payments will be published in the official IP Gazette.

 

  Previous requirements New requirements
DESIGNS
1) Specification in design applications When filing a design application, a specification is required which basically describes the appearance-forming features of the design in words. An amendment must not go beyond the specification and set of figures/photos.
2) Amendment to granted patent A granted patent can be amended to delete one or more embodiments and/or to exclude some non-essential appearing-forming features Limited to amendments to deleting embodiments only.
3) First-to-file principle For the same designs of the same product, naturally, only one patent will be granted. When considering a design of an article that is a part of an integrated product and a design of an integrated product including that same part, a patent will be granted for the application with the earlier priority date (or the filing date if no priority is claimed), but the circular is silent in the case that the priority dates of the two applications are the same.
4) Renewal of design patents If a patent owner renewed a design patent and wished to mark the renewal event on the last page of the patent, the original patent had to be filed together with the request for renewal. If an owner did not wish to mark the renewal, the owner would file a request for renewal without the original patent. The applicant may request for an amendment to mark the renewal event on the last page of the design patent if this is not done during the renewal procedure.

 

  Previous requirements New requirements
TRADEMARKS
1) Rights to object to disclaimers Not available The NOIP may object to the disclaimer(s) of an element of some elements of the mark. If the applicant disagrees, an objection must be filed within three months from the notification date.
2) Response to office action regarding international application If a Madrid application is provisionally refused by the NOIP, the applicant has only 90 days to appeal.

However, if a national application is refused, the applicant will have two months to respond, followed by an additional 90 days to appeal the decision on refusal if the first response is not successful.

Obviously, the applicants of Madrid applications had fewer chances to overcome a refusal than for national marks

If an international application is provisionally refused by the NOIP, the application holder is entitled to respond within three months of the refusal be considered date. (It is noted that this response will by the Geographical Indication Division of the NOIP, while the response for national applications will be handled by the Trademark Divisions.)

If the response is not justified, the NOIP will then issue a decision on refusal and the holder can appeal such decision within 90 days according to regular procedures.

3) Recognition of well-known marks According to a civil procedure, a mark might be recognized as a well-known mark and it would be recorded in the list of well-known marks kept at the NOIP. When a well-known mark is recognized in the course of a decision on settlement of infringement of such well-known mark, or a decision on refusal of another mark, such well-known mark will be recorded in the list of well-known marks kept at the NOIP, for reference for registration/protection of IP rights.
4) Organizations entitled to register certification marks and collective marks The type of organizations that are entitled to register collective marks; namely, organizations composed of two members or more, with each member having independent business activities, including cooperative coalitions, cooperatives, group companies, associations, and other organizations.

Organizations that can register certification marks; namely, organizations with the function of controlling and certifying the characteristics of goods/services which implement the control and certification themselves, or other organization(s) which are empowered by these certification organizations.