Patents

Applicants of Vietnamese patent applications may have noticed the former practice of the Vietnamese National Office of Intellectual Property to publish  patent applications which have been accepted as to form within the second month from the Decision of the acceptance (as provided in a general Decision of Acceptance as to Form). This practice is now changing.

Under Article 110.2 of the Code of Intellectual Property 2005 (hereafter IP Code) of Vietnam, the Vietnamese patent applications will be published in the 19th month from the filing date or the priority date, where Convention priority is claimed. In rare cases, the applications may be published earlier upon a due request by the Applicant. In providing guidance for implementation of the IP Code, the Article 14.2 (a) (i) of Circular 01/2007/TT-BKHCN stipulates that the Vietnamese patent applications will be published in the 19th month from the filing date or the priority date (where priority right is claimed) or in the 2nd month from the date of the Decision of acceptance as to form, whichever comes later. As far as PCT applications entering Vietnamese national phase are concerned, those which have accepted as to form will be published in the 2nd month from the date of the Decision of acceptance as to form as provided under Article 14.2 (a) (ii) of Circular 01/2007/TT-BKHCN. It is worth making a note that the examination as to form should be carried out, as required by law, within one month from the filing date (Article 13.8 (a) of Circular 01/2007/TT-BKHCN) unless the applicants make any amendment or addition to the applications either voluntarily or upon a request of the Vietnamese National Office of Intellectual Property (NOIP) and in such cases this stage may be prolonged with time needed for such amendment and/or addition. In practice, the stage of examination as to form takes an average from about one to two months to complete.

All of these stipulations are almost consistent with the equivalent provisions under the previous law (Civil Code 1995 and Circular 30/TT-BKHCN, which had no longer been in force as of July 1, 2006), except for the fact that Article 18 of Circular 30/TT-BKHCN made a difference to those applications for which examination as to substance had already been requested prior to the acceptance as to form or subsequent to the acceptance as to form but earlier than 18th month from the priority date. Namely in these cases, patent applications would be published in the second month from the date of acceptance as to form.

In construing the provisions relating to time limit for publication of patent applications under the prevailing law, it should be clear that in usual cases only the PCT patent applications, which have entered the Vietnamese national phase by the 31st month deadline as permitted by the local law and have been accepted as to form, will be published in the second month from the date of acceptance. Other Vietnamese national patent applications must wait until the 19th month from the filing date/the priority date in order to be published. The time point where examination as to substance is requested is now making no difference to the time limit for publication.

As the average time period for a Vietnamese national patent application to be examined as to form and accepted will range from one to two months from the filing date, those Vietnamese applications claiming no Convention priority should wait for another 17 months and those national applications claiming Convention priority, and hence are supposed to have been filed with the Vietnamese NOIP in the 12th month from their priority date, should wait for another 5 months to be published, as stipulated by law.

The Applicants of Vietnamese national patent applications (i.e. non-PCT applications) will now notice a prolonged time until their applications be published in Vietnam. The last but not least important impact of this new practice as a result of construing the IP Code 2005 is also a belated start of the temporary patent rights conferred by the relevant applications.

Powers of Attorney

Notice No. 1637/TB-SHTT dated October 11, 2007 of the Vietnamese NOIP makes special remarks relating to the validity of Powers of Attorney for the purpose of various IP applications submitted to the NOIP. Among other things, it should be especially noted the fact that a Power of Attorney is made (executed, signed, and sealed if necessary) after the filing date of relevant applications does not render the Power of Attorney invalid, provided that the Power of Attorney must be submitted within one month from the filing date, except for the Opposition Requests where the Power of Attorney must be submitted within 10 days. In this relation, it should be highlighted that the time limit provided in this Notice is the time limit for submission of the original Powers of Attorney and no further extension could be expected. In applying this practice, Powers of Attorney for all kinds of applications, except Opposition Requests, can be submitted to the NOIP as late as one month from the filing, rather than immediately upon filing as before for most of the IP applications at the NOIP. This extension is a noticeable flexibility that would be welcomed by all Applicants.

However, applicants of PCT applications entering Vietnamese national phase should note that time limit for submission of Powers of Attorney for their applications remain 34 months from the earliest priority date, as provided under Article 27.7 (a) of Circular 01/2007TT-BKHCN.

Enforcement

On February 25, 2008, the Ministry of Science and Technology had promulgated Circular 01/2008/TT-BKHCN providing guidance in issuing and revoking certificates for individuals and organizations involved in the examining activities for the purpose of administrative procedure against industrial property infringement. This is a long expected legal document, paving the way for private industrial property examining activities in the country. It should be emphasized, however, that this circular merely provides detailed guidance for the qualification procedures, and the examining activities of the qualified individuals/organisations are those involved in the administrative procedure against industrial property infringement.
 
Previously, under the Civil Law 1995, which is no longer in effect, the National Office of Intellectual Property (NOIP) (which then was National Office of Industrial Property) was the first competent authority in the administrative procedures to make the judging opinion in IPR infringement cases. When the IP Code came in force, such authority was no longer removed. In the interval, there had been no particular guidance on the individuals/organizations authorized to examine infringement cases and to make whether or not there is indeed infringement. For almost 2 years since the IP Code came in force (July 1, 2006), there has been in fact no individual or organization with competence in making authoritative opinions in infringement cases by administrative procedures. It has been observed, however, that the Vietnamese NOIP has still been asked for its official opinion in certain infringement cases where the involved authorities (the market management bureau or the economic police) cannot proceed with administrative measures against infringement in the absence of such an opinion. Thus, the NOIP has still been resuming this responsibility though their opinion is no longer made in an affirmative form.
 
Now, with the advent of the new circular, the authorities involved in dealing with infringement cases in the administrative procedure would find it easier to resolve the matter where the alleged infringers insist the cases be officially confirmed before any measures be taken. It still needs, however, to wait until the first individuals and/or the first organizations are granted the license, which will be probably later this year.

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.