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31 July 2019
The Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), an agreement designed to replace the Trans-Pacific Partnership following the withdrawal of the United States from that agreement, introduces a number of significant changes to laws in Vietnam from an intellectual property perspective. In order to bring the country’s existing IP laws in line with the terms of the CPTPP, the National Assembly of Vietnam has ratified several amendments and supplements to the IP law. Some of the key changes will be set forth below.
Electronic filing system. The method of filing an application for registration of industrial property rights is supplemented in Paragraph 3 of Article 89, whereby the application can be filed electronically under the National Office’s online filing system addition to the existing paper filing system.
Patents. Regarding novelty of patents (Article 60), the National Assembly has extended the grace period (the exception period of novelty loss) for patents from six months to 12 months. In particular, the current IP law provides, in Article 60, for a grace period of six months to preserve the novelty of an invention against its disclosure by the applicant in certain circumstances (such as disclosure in the form of a scientific presentation or at a national exhibition of Vietnam or at an official or officially international exhibition), or its disclosure by a third party without permission of the applicant. Accordingly, all the above disclosed information shall not be taken into consideration for the examination of the novelty of an invention to be patented.
To comply with Article 18.38 of the CPTPP, Article 60 of the current IP law (providing for determination of novelty) is proposed to be amended for the grace period to be extended to 12 months (instead of six months) against disclosure by the applicant or by a third party having obtained the information directly or indirectly from the applicant, for examination of both novelty and inventive step of the invention to be patented.
Regarding inventive step of patents (Article 61): the grace period above is applied for assessing the inventive step of such patents. Therefore, additional provisions on exceptions of disclosures under Article 60 shall not be used as a basis for assessing the inventive step of such patents.
Trademarks. Regarding the obligation to use trademarks (Article 136): Under the amended IP law, the use of a trademark by a licensee constitutes use of mark by the trademark holder (for defense against non-use cancellation, for example). This was not clearly stated in the previous law. Regarding the validity of a trademark use contract (Article 148): a license agreement is valid even without recordal at the NOIP, as previously required.
Geographical indications. Recognizing and protecting geographical indications according to international treaties: The publication, processing of opinions of third parties, assessment of the ability to protect and determine the scope of protection for geographical indications is required to recognize and protect according to international treaties. Vietnam shall comply with the relevant provisions of this law for geographical indications in the application submitted to the state management authority of industrial property rights.
Clause 1 of Article 80 on how to evaluate a term as the general name of goods in Vietnam has been amended, stipulating that the assessment must be based on perceptions of relevant consumers in the Vietnamese territory.
The National Assembly has also amended and supplemented cases of non-protection for geographical indications identical or similar to a trademark filed under an application with an earlier filing date or priority date, if that the use of a geographical indication is likely to cause confusion about the commercial origin of the goods.
Protection of intellectual property rights. Regarding self-defense rights (Article 198): The National Assembly has added two new provisions on:
1. The right to ask the court to force the plaintiff to pay attorneys’ fees or other expenses in an intellectual property infringement lawsuit if the defendant is concluded by the court not to commit infringement of rights; and
2. The right to claim compensation for the abuse of procedures to protect intellectual property rights of other organizations and individuals.
Regarding the basis for determining the compensation for damage caused by infringement of intellectual property rights (Article 205): Changes have been made to supplement grounds for determination according to other calculation methods given by intellectual property right holders.
Regarding procedures for applying the suspension of customs procedures (Article 218): Changes have been made to supplement the provisions on customs authorities’ obligation to provide information to intellectual property right holders within 30 days from the date of the decision to apply administrative measures to deal with counterfeited and pirated goods.
This law takes effect from November 1, 2019. Intellectual property regulations in this Law apply to:
a) An application for registration of an invention, utility solution, industrial design, trademark, layout design or geographical indication submitted to the state management agency on industrial property rights from January 14 2019.
b) Procedures for canceling the validity of patents, utility solutions and certificates of registration of geographical indications filed from January 14, 2019;
c) Procedures for invalidation of trademark registration certificates carried out from January 14, 2019; and
d) Procedures for protection of intellectual property rights requested from January 14, 2019.
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