Vietnam: Third party observation on the grant of Protection Titles under Vietnam’s  Law on Intellectual Property

Third party observation on the grant of Protection Titles was stipulated in Article 112 of the IP Law 2005 (passed by the Vietnam's National Assembly on November 29, 2005 and effective from July 1, 2006). This article was written as follows:

Article 112. Third parties’ observation on the grant of Protection Titles

From the date the industrial property registration application is published in the Industrial Property Gazette until before the date of the decision to grant a protection certificate, any third party has the right to give observations to the state management agency of industrial property rights on the granting or non-granting of a protection certificate for that application. The opinions must be made in writing, accompanied by documents or citing sources of information for proof.

In the process of examining an application for industrial property rights “third party observations” are one of the most common procedural actions, and the content of most third party observations are related to the opposition to a part or the whole of the published applications. From that fact, many industrial property representatives believe that the third-party observation is also the opposition procedure. This misunderstanding is partly due to the fact that Article 112 has not been written as clearly as it should be, and then there was a lack of detailed explanation and implementation guidance in sub-law documents, namely Government Decrees and Circulars of relevant Ministries, as is customary for all Laws when they are promulgated.

The most obvious shortcomings in Article 112 are: (i) the content scope of “third-party opinion” is unclearly determined, (ii) the time limit for submission, i.e. from the time the registration application is published until before the date the [IP Vietnam] issues a decision to grant a protection title – is so lenient that it can be deliberately exploited to delay and prolong the examination of applications and the granting of protection titles, and (iii) the responsibilities and obligations of the parties in the procedure are not clarified.

Therefore, when the IP Law 2005 is amended and supplemented for the third time in 2022 (referred to as the Amended IP Law 2022), effective from January 1, 2023, Article 112 is not only amended but also added to it Article 112.a. to clearly define its content for enhancing its legal effect and feasibility, as follows:

Article 112. Third parties’ observation on the grant of Protection Titles

From the date the application for industrial property registration is published in the Industrial Property Gazette until before the date of the decision to grant a Protection Title, any third party has the right to give observations to the state management agency of industrial property rights on the granting or non-granting of a Protection Title for that application. Observation must be made in writing with accompanying documents or citing information sources for proof.

The written observation of a third party is considered a source of reference information for the processing of an industrial property registration application.

Article 112a. Opposition to an industrial property registration application

1. Before the date of the decision to grant a protection title, within the following time limits, any third party has the right to oppose to the granting of a protection title:

a) Nine months from the date of publication of the patent application;

b) Four months from the date of publication of the industrial design application;

c) Five months from the date of publication of the trademark application;

d) Three months from the date of publication of the geographical indication application.

2. The opposition specified in Clause 1 of this Article must be made in writing with supporting documents or citations of information sources and must be subject to payment of fees.

3. The State management agency for industrial property rights shall be responsible for handling the opposition specified in Clause 2 of this Article in accordance with the procedures prescribed by the Minister of Science and Technology.

With the above amendments and supplements, the following issues are clarified: 

• In relation to Article 112. Third parties’ observation on the grant of protection title:

The addition of the paragraph “The written observation of a third party is considered a source of reference information for the processing of industrial property registration applications” affirms that this is only considered a source of reference documents. Thus, the following is clarified:

- The IP Vietnam accepts, uses the third party observations and accompanying documents at its discretion and is not obliged to respond; and

- “third party observations” can be submitted at any time between the time the application is published and before the time when the IP Vietnam issues a decision to grant a protection title ;

- There is no fee for submitting third party observations

Reality showed that since the amended Article 112 is applied the number of third party observation submitted to the NOIP has been much less than before, significantly reducing the workload for examiners at the IP Vietnam. 

•  In relation to Article 112a. Opposition to an industrial property registration application

The Article 112.a clarifies that opposition is a procedure to help the IP Vietnam have additional information, documents, and evidence to serve as a basis for conducting the examination of the application fairly and transparently , preventing disputes arising after the grant of protection title. Normally, this procedure will be carried out by a third party when they have a solid legal basis to prove that the granting of a protection title violates the provisions of the IP Law or may conflict with their rights and interests. The IP Vietnam will consider the opposition, on that basis it may refuse to grant a protection title.

Main features of the opposition procedures  can be summerised as follows:

- Time limit for submitting an opposition : it’s tight, namely for Trademarks: 5 months; for patents: 9 months; for industrial designs: 4 months and for geographical indications: 3 months, acounting from the application is published;

- Handling of opposition : the IP Vietnam receives, records and consider the opposition  on the basis of evidence and arguments provided by the parties;

- Notification: The IP Vienam may notify the applicant and the third party, then set a deadline for them to respond in writing;

In case the opposition is unfounded, the IP Vietnam is not obliged to notify the applicant, but must notify the third party of the refusal to consider the opposition and state the reasons; and

- The submission of opposition must pay the prescribed fees and charges.

Finally, it should be noted that Articles 112 and 112a above apply only to national trademark applications. The processing of Madrid Applications designating Vietnam is regulated in Article 27 of Government Decree No. 65/2023/ND-CP[1]. Accordingly, after receiving the Notification from the International Bureau of the Madrid Application designating Vietnam, the IP Vietnam shall conduct substantive examination of the application. From the date the Madrid Application is published by the International Bureau in the Official Gazette until before the date the IP Vietnam issues a decision to accept registration, or the end of 12 months from the date the International Bureau announces the application designating Vietnam, whichever is earlier, if a third party has an observation on the Madrid Application designating Vietnam, this observation shall be considered as a source of reference information during the processing of the application./.
 

[1] Government Decree No. 65/2023/ND-CP dated August 23, 2023 detailing a number of articles and measures to implement the Law on Intellectual Property regarding industrial property, protection of industrial property rights, rights to plant varieties and state management of intellectual property