Update on IP Law of Vietnam (September 2007)
An update on the latest changes to the IP Law of Vietnam up to September 2007
On February 14, 2007 the Ministry of Science and Technology promulgated Circular 01/2007/TT-BKHCN (Circular 01/2007) guiding in details procedures for the acquisition of industrial property rights at the National Office of Intellectual Property (NOIP) in light of new Intellectual Property Law (effective as of July 1, 2006) and Decree 103/2006/ND-CP (dated September 22, 2006). Circular 01/2007 came into effect on May 9, 2007. Circular 01/2007 has been made on the basis of, and to replace, regulations provided for in Circular 3055/1996, Circular 29/2003 and Circular 30/2003 with relevant amendments and supplementation. The most prominent changes and developments of Circular 01/2007 are outlined below.
The following prominent changes are applicable to all applications for registration of industrial property, including patent, layout design, industrial design, trademark and geographical indications.
1. Certification of Vietnamese translation: Circular 01/2007 now simplifies the certification of Vietnamese translation by allowing the applicant or its legitimate representative just to undertake in writing that the Vietnamese translation is truly and correctly translated from the original. Other ways of certification such as by notary public or recognition of the competent authority are no longer required.
2. Power of Attorney: the Power of Attorney may be now filed within 01 month from the filing date of the application or within 01 month upon receipt of the NOIP’s notice. Previously, a Power of Attorney must be filed at filing (a faxed copy of the Power of Attorney is acceptable provided that the original must be filed within 3 month from the filing date). For PCT applications, however, time limit to submit the original of the duly executed Power of Attorney remains 34 months from the priority date. Notarisation and/or legislation of Powers of Attorney is no longer required.
3. Opposition Procedures: for the first time, more specific opposition procedures are provided for in Circular 01/2007. The period for opposition remains unchanged that is from the publication date of the application to any date prior to the date of decision on granting a Tile of Protection. The opposition will be considered within 01 month from the date of filing and be informed to the applicant by the NOIP. The applicant will have 01 month from the date of notice to give his/her counter arguments. If necessary, or upon request of the concerned parties, the NOIP may hold a hearing. It is possible to appeal against the NOIP’s decision on the opposition to the Administrative Court. However, in the case the opposition relates to the right to file the application, and if the NOIP has no ground to determine, the NOIP may advise the applicant to lodge an appeal to the civil court. Within 01 month form the NOIP’s advice, the applicant must inform the NOIP of his lodging an appeal to court. Failure to do so, the NOIP will considers that the opposition is withdrawn.
4. Examination as to form: the time limit for response to the NOIP’s notice relating to amendment/supplementation of the application is now one month instead of 2 months as before. One time extension for further one month is possible.
5. Time limit for claiming internal priority: the time limit for claiming priority based on the first application filed in Vietnam is similar to the time limit for claiming Convention priority.
6. Appeal procedures: Procedures of Appeal and settlement of appeal by the NOIP are more clearly and specifically provided for in Circular 01/2007. In general, each appeal shall mention one refusal or rejection decision. Now Circular 01/2007 also allows one appeal may mention more than one refusal or rejection if the grounds for appeal are similar. Further, for the first time, Circular provides that the NOIP’s decisions on settlement of appeals will be published in the Gazette of Industrial Property within 2 months from the date of the decision.
7. Others procedures: Circular 01/2007 has provided more specific procedures relating to the transfer, division of applications and grant of Titles of Protection.
1. Minimum Filing Requirements: in order to obtain filing date for national applications or entry date for PCT applications, a patent application must consist of the following minimum documents:
(ii) specifications including claims. The Vietnamese translation of the specifications (if any) must be filed at the time of filing (previously, the Vietnamese translation can be additionally filed within 3 months from the filing date). Clients are advisable to provide us with the English specifications in good time before the deadline for entering the Vietnam national phase or for filing the application in Vietnam in order for the Vietnamese translations thereof be timely prepared; and
(iii) receipt of payment of fees.
Other documents such as the Power of attorney and priority documents may be additionally filed later within 01 month from the filing date or within 01 month from the date of receipt of the NOIP’s notice. For PCT application, the Power of Attorney can be filed within 34 months from the priority date.
2. Response to Office Action: the applicant has one time to respond to the NOIP’s notice of substantive examination. Previously there was no such specific provision.
3. Possible late entry of PCT applications: In rare occasions with legitimate excutes such as extremely financial difficulties, war, change of patent agents, misplacement in post office, etc., a petition for late entry of a PCT application may be granted within 6 months from the 31-month deadline if such petition was timely submitted.
4. Specific provisions o¬n patenting inventions in some particular fields:
While Circular 30 did not specify procedure for acquisition of patent rights in drug-related inventions, nor inventions relating to genetic resources or traditional knowledge, Circular 01/2007 provides for the first time for complementary requirements for obtaining patents in such fields. According to it, the specification of a drug-related patent application must not o¬nly meet general requirements applied to all technical fields, but must also include clinical test results and pharmacological effects of the drug. It must contain at least the following information: (i) active ingredient/combination of active ingredients; (ii) test method; (iii) test results; (iv) correlation between the results of pharmacological effects obtained in experiments and practical use in disease prevention, prognostic and treatment.
Application for patents relating to genetic resources and/or traditional knowledge should include documents illustrating the orgin of the concerned genetic resources and/or traditional knowledge. In case where the inventor or applicant is unable to determine the origin, he/she should make a declaration about that.
Requirements for biotechnology patent application under Circular 01/2007 remain essentielly the same as under Circular 30. There is o¬nly a small change relating to biological material deposit for patent purpose. To date, Circular 30 requires merely that the biological material be deposited in a Vietnamese or foreign depository institution recognised by the MOST. According to Circular 01/2007, the NOIP may request that a biological material be deposited in Vietnam even though it has already been deposited abroad, if that is necessary to clarify the nature of the claimed subject matter or to meet a resquest by a third party seeking access to the material.
5. Patentable subject-matters: According to Circular 01/2007, the subject matter contained in a patent application shall be considered as ineligible for protection if it is not a technical solution (which under the Code of Intellectual Property can only be either product or process). An invention is not a technical solution if: (i) it is an idea, i.e. it merely raises a problem rather than proposes a solution; or it does not give an answer to such questions as «how»/ «by which means»; (ii) the problem to be resolved is not a technical problem and can not be resolved by technical means; (iii) the product is a natural product rather than a thing created by men.
An important consequence of this regulation is the NOIP’s practice to reject again all inventions relating to uses, including those relating to medical uses. This means Swiss-style claims are no longer allowed under the new patent law. Accordingly, use claims in general, and medical use claims in particular, should be redrafted, e.g. in process format, in order to avoid potential rejection by the NOIP.
6. Avoidance of double patenting: Under the new IP law, the inventiveness claimed in the later applications is also no longer attacked by unpublished applications having an earlier priority date or date of filing. In order to avoid double patenting, Circular 01/2007 requires that before issue a decision on granting a patent, the NOIP must apply the “first to file principle” to check against patent applications which have passed the substantive examination.
1. Minimum Filing Requirements: in general, in order to obtain filing date, a design application must consist of the following minimum documents:
(ii) descriptions of design including photos/drawings. The Vietnamese translation of the descriptions (if any) must be filed at the time of filing (previously, the Vietnamese translation can be additionally filed within 3 months from the filing date). Clients are advisable to provide us with the English specifications in good time before the deadline for for filing the application in Vietnam in order for the Vietnamese translations thereof be timely prepared; and
(iii) receipt of payment of fees.
Other documents such as the Power of Attorney and priority documents, where applicable, should be additionally filed later within 01 month from the filing date or within 01 month from the date of receipt of the NOIP’s notice.
2. Patentability Examination: Circular 01/2007 has supplemented provisions on assessment of novelty and creativeness of an industrial design.
An industrial design shall be deemed to be new if: (i) a confronting industrial design is not identified during the course of reference to information; or (ii) a confronting industrial design is identified but the industrial design stated in the application has at least one basic special shaping feature which does not appear in the confronting industrial design; or (iii) the confronting industrial design has been published or disclosed as stipulated in clauses 3 and 4 of article 65 of the Law on Intellectual Property.
To assess the creativeness of the design applied for, the examiner shall compare the main forming features of the design in the application with that of the cited designs. The design applied for is considered not having creativeness if:
- It is a pure combination, rearrange or changes of positions of the known forming features;
- It is a reproduction/imitation of a part or the entire of the inherent natural forms of trees, flowers, animals, or of geometric shapes (circle, ellipse, rectangular, triangle, etc...);
- It is a pure imitation of industrial designs of a widely known product, or building in Vietnam or other countries in the world; or
- It is a reproduction of designs of a product in a particular field and such reproduction has become popular in practice (e.g. car or motorcycle toys, etc.).
1. Minimum Filing Requirements: in general, in order to obtain filing date, a trademark application must consist of the following minimum documents:
(ii) samples of mark and the list of goods/services; and
(iii) receipt of payment of fees.
Where the applied mark is a collective mark or certification mark, in addition to the above-mentioned documents, the minimum filing requirements also include the rules for use of the collective mark or certification mark.
Other documents such as the Power of attorney and priority documents may be additionally filed later within 01 month from the filing date or within 01 month from the date of receipt of the NOIP’s notice.
2. Early termination of the substantive examination: According to Circular 01/2007, the substantive examination of a trademark application may be now terminated prior to the time limit set therefor, if for example there is ground to absolutely confirm that the mark applied for does not meet the registration requirements and therefore no need to be further examined, and/or the applicant fails to duly correct certain defects of the application as requested by the NOIP, or the applicant has requested to withdraw, abandon, or suspend the examination of the application. Appeal against early termination of the examination and restoration of substantive examination are available.
3. Registrability Examination: The way the NOIP determines the distinctiveness of a mark is now specifically provided for in Circular 01/2007, which before was not provided for in Circular 3055. In particular, Circular 01/2007 clearly indicates principles where word or figure elements or the combination of word and figure elements are considered as non-distinctive. According to it, a trademark may acquire or loose distinctiveness through use in Vietnam. A latin word may be considered non-distinctive if its meaning becomes a generic description of products/services to which it is applied. An inherently non-distinctive or feebly distinctive sign may be considered distinctive if it becomes widely well-known among customers through use. In case of «combined trademark» (i.e. a sign made up of words and a device), the distinctiveness should be assessed based o¬n an examination of the sign as a whole. A trademark containing non-distinctive or feebly distinctive elements may still be considered distinctive if: (i) its strong element is distinctive; or (ii) the combination of its elements is original giving a special impression; or (iii) the «combined trademark» has acquired distinctiveness through use.
To assess an applied mark on the basis of relative grounds, Circular 01/2007 transparently points out minimum sources of information for the NOIP to conduct searches, which include prior applications, prior registered trademarks, trademarks of which the registration has expired or was cancelled less than five years ago (except where the mark is invalid for non-use), protected geographical indications, indications of geographical origin of goods/services, geographical names, quality seals, control marks, national flags and armorial bearings, names of State agencies, political organizations, socio-political organizations, socio-political professional organizations, social organizations or socio-professional organizations of Vietnam or international organizations. Where it is necessary, the search may also be extended to other sources such as pending industrial design applications, trade names, etc.
Circular 1/2007 also provides for assessment of likelyhood of confusion. To assess the likelyhood of confusion, the subject trademark should be compared with its cited marks in structure, content, pronounciation (if word mark), meaning and mode of representation (word and device). A comparison of products/services to which they are applied must be carried out simultaneously.
A trademark is considered identical to a cited mark if they are identical in structure, content, meaning and mode of representation. A trademark is considered confusingly similar to a cited mark if (i) they are so similar in structure, content, pronounciation, meaning or/and mode of representation that the customers might think that they are the same, or that o¬ne is derived from the other, or that they share the same origin; (ii) the subject trademark is merely a translation or transliteration of a well-known cited mark.
Circular 01/2007 also indicates principles to determine the similarity of goods or services. Two products/services are considered identical if they are of the same/similar nature and have the same function and destination. Two products/services are considered similar if they (i) are of similar nature; or (ii) have similar functions, destination and are put o¬n the market through the same distribution chanels. A product and a service are considered similar if they are connected by nature or function, or mode of implementation.
4. Types of marks: Circular 3055 did not provide for registration of tridimensional trademarks. Provisions o¬n procedure for filing and examination of associated marks, collective and certification marks under Circular 3055 were also inadequate. Circular 1/2007 has contributed to improving regulations o¬n registration of such marks.
a) Associated marks: When applying for registration of associated trademarks, the applicant should indicate which of those signs is the «principal» trademark, in case they are associated by «signs». If they are assocated by products/services, the applicant should indicated which of those products/services is «principal». Otherwise, they shall be considered independent, and not associated.
b) Collective marks: Article 105 of the IP Law provides for the substantive rules of use which must accompany the application for registration of a collective or certification mark. Under Circular 1/2007, itmust additionally include the following: (a) summary information o¬n the mark, its owner and products/services to which it is applied; (b) conditions for the grant of a license to use the mark and license termination; (c) obligations of the mark users; (d) rights of the mark holder; (e) mechanism of grant of license and control of the mark use aimed at guaranteering the quality and the reputation of products/services bearing the mark; (f) mechanism of settlement of disputes.
c) Certification marks: When applying for registration of a certification mark, the applicant should indicate in detail the content of certification, the mode of certification as well as procedure for grant of certification, the mode of controlling and maintaining the certification objective and content. Of note, Circular 1/2007 provides for registration and use of geographical certification marks. Accordingly, a geographical name may be registered as a certification mark if the applicant is authorised by the relevent local authority. In case the region or locality can not be determined based o¬n administrative demarcations and local authority’s certificate, the applicant may supply a map indicating clearly the region or locality bearing the geographical indication of the products/services certified by the relevent authority.
d) Tridimensional marks: This type of marks has been accepted by the NOIP since long time even in absence of legal texts. Circular 1/2007 merely adopts the Office examination practice. It provides that specimens of a tridimensional mark should be accompanied by photos or drawings showing the 3D form in perspective and may be accompanied by a description of the 3D form.
5. International Registration of Mark: As Vietnam had recently joined the Madrid Protocol, in addition to the procedures for filing and process of trademark applications under the Madrid Agreement as preciously, Circular 01/2007 also provides for procedures for filing and process of applications under the Madrid Protocol, and procedures and application form for transformation of an International Registration into national application in accordance with Article 9quinquies of the Protocol.
Previously geographical indications of goods, rather than geographical indications (GIs) are protected in Vietnam. Now under the new IP Law, GIs are protected upon registration with the NOIP. Accordingly, Circular 01/2007 for the first time provides in details procedures and form for registration of GIs.
1. Minimum Filing Requirements: in order to obtain filing date, a GI application must consist of the following minimum documents:
(ii) description of characteristics of the product bearing the geographical indication (GI), and a map of the geographical area indicated by the GI; and
(iii) receipt of payment of fees.
Other documents such as the Power of Attorney may be additionally filed later within 01 month from the filing date or within 01 month from the date of receipt of the NOIP’s notice.
2. Registration Procedure: GI applications shall be examined as to compliance with formal requirements within 01 month from the filing date. The accepted applications will be published in the NOIP’s official Gazette of Industrial Property for opposition. The applications are then passed for substantive examination. The substantive examination will be taken within 6 months from the date of publication of the application.
The above information is provided for your general reference. Should you need legal advice about any specific circumstances, please do not hesitate to contact us.