Amendments to Intellectual Property Law to be passed in May 2019
Recently, in April 2019, the National Assembly Standing Committee (NASC) of Vietnam has issued Resolution 684 to add the draft law revising the insurance and intellectual property laws into the 2019 law- and ordinance-making program.
Accordingly, the draft, which is designed by the Ministry of Industry and Trade (MOIT) and Ministry of Science and Technology (MOST) in preparation for implementation of Vietnam’s commitments under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), will be tabled to the National Assembly for comment and passage at its upcoming 7th session scheduled for May this year.
The proposed amendments and supplements
Regarding inventions, drafts an amendment to Article 60 of the IP Law in the direction of giving applications to Vietnam to enjoy a wider exception (not limited to disclosure locations and a grace period of 12 months from the date of information disclosed), specifically as follows:
"3. The invention is not considered to be a loss of novelty if it is directly or indirectly disclosed by the person entitled to registration as stipulated in Article 86 of this Law or by the person who obtained the information about the invention from such person provided that the patent applications are filed within twelve months from the date of disclosure.
4. The provisions of paragraph 3 of this Article shall not apply to cases where inventions are disclosed in applications for intellectual property rights or intellectual property protection titles already granted by the intellectual property agency for the public to access unless this is done due to an error of the intellectual property agency or the information obtained by a third party directly or indirectly from the person who has the right to register in Article 86 of this Law is filed without the consent of the person who has the right to register it. ”
Regarding trademark: to supplement the electronic filing of trademark applications to Article 89 of the IP Law. This supplement is to meet the obligations of Article 18.24 of the CPTPP Agreement. However, in fact, within the framework of implementing the Government's Resolution 36A on administrative reform, the NOIP has built a system of online electronic filing for IP objects, including trademarks and system has been operating since 2017.
To amend clause 2, Article 136 of the IP Law on the obligation to use trademarks and amend clause 2, Article 148 of the IP Law providing for contracts on licensing of trademarks to meet the provisions of the CPTPP Agreement on not being required to register to determine the validity of a transfer of trademark use and must consider the use of the trademark of the transferee considered to be the owner's use of the trademark in connection with the procedures for establishing, maintaining and protecting trademark rights.
Regarding intellectual property protection: to amend clause 1, Article 205 of the IP Law in the direction of supplementing the provisions on how to calculate value in deciding compensation; amending and supplementing Article 198 of the IP Law in the direction that the Court has the right to request the losing party to pay the prevailing party; and additional provisions on compensation for damages caused by abuse of intellectual property protection procedures./.
The MOIT also said that the IP Law has no legal provisions as required by the CPTPP Agreement. Specifically: if a Party provides protection or recognition of a geographical indication through the procedures referred to in Article 18.31 (Administrative Procedures for the Protection or Recognition of Geographical Indications) to the translation or transliteration of that geographical indication, that Party shall make available procedures that are equivalent to, and grounds that are the same as, those referred (Article 18.32.5); if a Party establishes or assesses, in connection with the procedures described in this Article [Special Requirements related to Border Measures], an application fee, storage fee or destruction fee, that fee shall not be set at an amount that unreasonably deters recourse to these (Article 18.76.8); Each Party shall ensure that its judicial authorities have the authority to order a party at whose request measures were taken and that has abused enforcement procedures with regard to intellectual property rights, including trademarks, geographical indications, patents, copyright and related rights and industrial designs, to provide to a party wrongfully enjoined or restrained adequate compensation for the injury suffered because of that abuse. The judicial authorities shall also have the authority to order the applicant to pay the defendant expenses, which may include appropriate attorney’s fees (Article 18.74.15).
In addition, there are difficulties and shortcomings in resources and conditions to ensure the enforcement of the Law: The obligation to permit the registration and maintenance of trademark effectiveness by electronic means; and there is a publicly accessible electronic information system, including an online database (including registered trademark and trademark applications) requiring the NOIP to upgrade, operating the online filing system in a synchronous and stable manner. Meanwhile, the facilities and technical conditions as well as the current resources of the NOIP cannot fully meet the commitments. Therefore, the state needs to invest adequate resources (build and maintain infrastructure, information technology, databases, search tools ...).