Logo

Guidance on IPR Protection in Vietnam

23/07/2013
Bellow is a summary of Intellectual Property right environment in Vietnam which focuses on four distinct types of intangible property – namely, patents, trademarks, copyrights, and trade secrets. We hope that the summary is useful for those who want

Current IPR Framework in Vietnam

Vietnam joined the Paris Convention for the Protection of Industrial Property in 1949 and has concluded and acceded to the Berne Convention on copyright; the Geneva Convention on recorded works; the Brussels Convention on satellite transmissions; the Madrid Agreement and Protocol on international registration of marks; the Patent Co-operation Treaty (PCT); the Stockholm Convention Establishing the World Intellectual Property Organization (WIPO) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

With WTO accession in January 2007, Vietnam committed to fulfill IP obligations in the TRIPS Agreement on all bilateral and multilateral commercial and trade relations between Vietnam and its partners.

Vietnam has complied through passage of its Civil Code in 2005 and the Law on Intellectual Property on Intellectual Property (IP Law year 2005), enacted in November 2005, entered into force on July 1, 2006. The latter governs copyright, inventions, industrial designs, trademarks and trade names, geographical indicators, business secrets and such specific areas as integrated circuit designs and plant varieties. Where Vietnam’s legal provisions on IP rights differ from IP provisions in treaties to which Vietnam is a contracting party, those treaties prevail.

A series of Government regulations were issued to provide instructions for the implementation of the IP Law year 2005. This included Decree No. 100/2006/ND-CP dated September 21 2006 on copyrights and related rights, Decree No. 103/2006/ND-CP dated September 22 2006 on industrial property rights, Decree No. 104/2006/ND-CP on new plant variety rights, Decree No. 105/2006/ND-CP on state management and enforcement of IP rights, Decree No. 106/2006/ND-CP on administrative sanctions on IP infringement. The regulations clarified the principles and provisions enshrined in the IP Law and in fact they brought the IP Law into effect.

In May 2009, the Government of Vietnam promulgated Decree No.47/2009/ND-CP Providing Regulations for Penalties for Administrative Violations in Copyright and Related Rights (Decree No. 47), with an effective date of June 30, 2009. Decree No. 47 replaces the provisions on corresponding administrative penalties that were previously provided for under Decree No. 56/2006/ND-CP on Administrative Sanctions in the Fields of Culture and Information (Decree No. 56), dated June 6, 2006.

Most recently, In June 2009 the National Assembly of Vietnam has further passed a new law to amend and supplement a number of articles in the existing IP Law (2005). The amended IP Law(2009), come into force on January 1, 2010, will not only improve the national IP protection system but also bring the country's enforcement framework closer to international standards provided in the TRIPS Agreement.

I.          COPYRIGHT

Registration

In contrast to trademarks and patents, copyrights are manifested once the copyrightable work is created and copyrights that are granted within treaty countries are immediately applicable to all other treaty countries. However, persons may still voluntarily apply for a copyright certificate in Vietnam. Detailed application instructions and application materials may be found at the Copyright Office within the Ministry of Culture and Information.

The term of copyright protection

 The term of copyright protection  is now 75 years (previously 50 years) from the first publication, applies to cinematographic works   photographic works. And anonymous works. For cinematographic works, photographic works and applied art works not published within 25 years from the fixation date protection lasts for 100 years from the fixation date of the work.

(b) What is protected under copyright law?

  • Literary and scientific works, textbooks, teaching materials and other works expressed in forms of letters or other writing characters;
  • Lectures, presentations and other speeches;
  • Journalistic works;
  • Musical works;
  • Dramatic works;
  • Cinematographic works and works created by similar methods;
  • Fine art works and applied art works;
  • Photographic works;
  • Architectural works;
  • Graphics, sketches, maps, drawings relevant to topography and scientific works;
  • Folk artistic and literary works;
  • Computer programs and compilations of data.

Infringement and enforcement

Copyright infringement entails using, reproducing, reprinting, importing, exporting, selling, publishing, disseminating, or otherwise exploiting a copyrighted work without prior permission from the author or the copyright owner and/or without appropriate remuneration through royalties or other financial duties to either the author or legal owner of the copyright.

In connection to use of published works, it is regulated that broadcasting organizations using published works for the purpose of carrying out broadcasting programs with sponsorship, advertisements or collection of money in any form will not be liable for obtaining permission from the copyright owner but have to pay royalties or remunerations to them in accordance with the Government regulations.

With regards to copyright and related rights violations, the maximum penalty level can reach VND 500 million (approximately USD 28,000). Previously, under Decree No. 56, the maximum penalty was VND 70 million (approximately USD 3,900). In addition to monetary penalties, infringers may be required to proceed with certain steps to remedy their infringement, such as having the goods destroyed and/or destroying or re-exporting equipment used in violations. Decree No. 47 also clearly grants to various levels and types of authorities the power to impose specific fine levels.

II.         PATENTS

In order to obtain a patent right, the applicant has to file a patent application with the National Office of Intellectual Property of Vietnam (NOIP) and go through examinations to determine whether the invention/utility solution meets the patentability.

Validity Term of Patent

Patents for inventions are valid for 20 years, for utility solutions are valid for 10 years counted from the filing date of patent application and  are non-renewable. Additionally, the existing  IP Law provides for protection of layout-designs of semiconductor integrated circuits until one of the following is achieved: (1) the end of 10 years as from the filing date; (2) the end of 10 years as from the date the layout-designs were first commercially exploited anywhere in the world by the person having the right to registration or his or licensee; or (3) the end of 15 years as from the date of creation of the layout-designs.

Non-patentable Subject Matters

The following shall be exempted from protection under Vietnam patent law:

  1. discoveries, scientific theories, mathematical methods;
  2. schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;
  3. presentations of information;
  4. aesthetic solutions;
  5. plant varieties, animal varieties;
  6. essentially biological processes for the production of plants and animals except microbiological processes; and
  7. preventive, diagnostic and therapeutic method for treatment on the human/animal body.

Priority Rights

The applicant(s) is/are allowed to claim priority from a first patent application earlier filed in a foreign country in accordance with the Paris Convention (usually called Convention priority or from a first patent application earlier filed in Vietnam within 12 months from the date of filing of the first application.

Filling Patent Application

Vietnam has adopted the first-to-file system. Vietnam patent law determines priority based on the date of the first application and shall confer the rights on the party who is the first to file a patent application. That is to say, where two or more parties apply for a patent for the same invention, the first party to file will be granted the patent regardless of the date of actual invention. Under this system, who came up with the idea first does not matter. All that matters is who got their paperwork to Vietnam Patent Office first. Therefore it is advisable to file a patent application as soon as possible after the invention is conceived.

Formality Examination

Vietnamese patent applications shall be checked to see whether it fulfills the necessary procedural and formal requirements within 1 month from the filing date. The applications accepted as to formality shall be published in the 19th month from the priority date. The PCT national phase applications shall be published in the 2nd month from the date of acceptance.

Request for Substantive Examination

The published Vietnam patent applications shall not be examined on their merits without a request from either applicant or a third party. The request for substantive examination must be submitted to within 42 months from the earliest priority date. Late filing within six months computed from the expiration of the 42 month period is available upon payment of late submission fees. Failure to submit the request within the prescribed time limits shall result in the application to be deemed as having been withdrawn. For utility solution, the corresponding time limit is 36 months.

Substantive Examination Process

After the patent application has been filed with the Vietnam Patent Office, a patent examiner shall carefully review and examine the application in order to determine the invention's patentability. To be patentable, an invention must be novel, involve an inventive step, and is susceptible to industrial applicability. 

Novelty Requirement: An invention must be new on a worldwide basic in order to meet the novelty requirement stipulated by Vietnam patent law. An invention shall be considered to be new if it was not publicly disclosed by means of use, written description or in any other way inside or outside the country, prior to the filing date or the priority date where priority is claimed.

An invention shall not be considered as publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret. Further, an invention shall not be considered to lack novelty if:

  1. the invention was disclosed by another person without permission of the inventor/applicant;
  2. it was disclosed by the inventor/applicant in a scientific report; and
  3. the invention was displayed at a national exhibition of Vietnam or an official or officially recognized international exhibition, provided that the patent application for such an invention is filed within 6 months from the date of disclosure. 

Inventive Step: An invention is regarded to involve an inventive step, if, having regards to all technical solutions already publicly disclosed by means of use, written description or in any other way inside or outside the country prior to the filing date, or where priority is claimed, the priority date of the patent application, it constitutes an inventive progress and cannot be easily created by a person having ordinary skill in the art.

There is no requirement for an inventive step for utility solution. That is, in order to be patentable a utility solution does not have to involve an inventive step. It need to be new only, and susceptible to industrial applicability.

Industrial Application: An invention shall be considered to be capable of industrial applicability if it can be applied to mass production or manufacture of the product or it is possible to repeatedly apply the process that is the subject matter of the invention to get stable results.

If no reasons for refusal have been found, the NOIP will make a decision to grant a patent. The Vietnam Patent Office may accept the examination results carried out in some other countries such as the United States, EPO, Japan, Australia, Canada, Russian Federation, etc. as well as family patent(s) issued in any of said countries.

Patent Opposition/Appeal

According to Vietnam IP Law and Regulations, both opposition and appeal proceedings are available. At any time during the period from the date of publication to the issuance of a patent, any third party can file a written opposition with the NOIP to oppose against the grant or refusal to grant a patent. Post-grant opposition is possible in the form of invalidation of a patent. Applicant or any third party having rights and/or interests relating to the NOIP’s decision with respects to the prosecution of a pending patent application may appeal in an appropriate manner.

Opposition

According to Vietnam IP Law, both pre-grant opposition and post-grant opposition are possible. At any time during the period from the date of publication to the issuance of a patent, any third party can file a written opposition with the NOIP to oppose against the grant or refusal to grant a patent. Post-grant opposition is available in the form of invalidation of a patent.

Pre-grant opposition can be filed on one of the following grounds:

   (i) the invention claimed in the pending patent application does not meet patentability criteria;

   (ii) the applicant(s) are not one who is entitled to file the patent application; and

   (iii) the absence of an agreement to file one application only between persons who are entitled to file such patent application in case that there are more than one person entitled to do so.

Invalidation can be initiated on one of the following grounds:

   (i) the patented invention did not meet patentability criteria upon issuance;

   (ii) the applicant(s) are not one who have been entitled to file the patent application that was granted the patent;

   (iii) the absence of an agreement to file one application only between persons who have been entitled to file such patent application in case that there are more than one person entitled to do so.

Appeal

Applicant(s) or any third party having rights and/or interests in relation to the NOIP’s decision or notification with respects to the prosecution of a pending patent application may appeal the NOIP’s decision or notification either to the Ministry of Science and Technology or or initiate a lawsuit to the court in accordance with the Intellectual Property Law and relevant laws. The appellant must file a first instance appeal to the NOIP as the authority directly issuing the decision/notification. In case that the appellant does not agree with the administrative decision of the NOIP on the first instance appeal, the appellant may choose to further appeal against the first instance appeal’s decision by filing a further appeal (second instance appeal) against the first instance appeal’s decision to the Ministry of Science & Technology (MOST), or bringing a lawsuit to the administrative courts to appeal against the first instance appeal’s decision in accordance with the civil proceedings.

PCT applications

The time limit for entry of a PCT application into Vietnam national phase under both Chapter I and Chapter II is 31 months (not 30 months) from the earliest priority date. However, a late entry within six (06) months counted from the expiration of 31 month period is available upon payment of appropriate fees.

Information required

Full Name, Address, and Nationality of the Applicant(s)/Inventor(s).

Priority data (if any) including application number, priority date and priority country.

Documents required

A copy of both original and amended specification (if any) in English for purpose of translation into Vietnamese. It is advisable to provide us with such documents as early as possible, e.g. two weeks before the due date of filing for the purpose of translation.

A Power of Attorney signed by the Applicant to appoint Pham & Associates as his/her patent agent in Vietnam. Notarization is not necessary.

An originally signed Deed of Assignment of the right to file application where the Applicant of Vietnamese patent application has been assigned the right from other legally entitled party(s). Notarization is not necessary.

Certified copy(s) of priority application(s) in case the Vietnamese patent application is not national phase of a PCT application.

Note:

The time limit for entry of a PCT application into Vietnam national phase under both Chapter I and Chapter II is 31 months (not 30 months) from the earliest priority date. However, a late entry within six (06) months counted from the expiration of 31 month period is available upon payment of appropriate fees;

Power of Attorney and Deed of Assignment documents are not required at filing. However said originally signed documents must be submitted to the National Office of Intellectual Property of Vietnam (NOIP) within 34 months from the priority date for PCT national phase applications or within one (01) month from the date of the NOIP’s Notice for non-PCT applications.

In case that certified copy(s) of priority application(s) are required, these certified document(s) need to be submitted to the NOIP within three (03) months from the filing date.

Vietnam National Phase of PCT application

The time limit for entry into Vietnam national phase of a PCT application under both PCT Chapter I and PCT Chapter II is 31 months computed from the priority date. A late entry within six months after the 31 month period expires is available provided that the applicant shall pay a late entry fee.

For entering Vietnam national phase, a copy of the PCT international application is not required, but the applicant needs to submit the Vietnamese translation thereof to the Vietnam Patent Office (NOIP) at the filing. Also, a Vietnamese translation of the International Preliminary Examination Report (so-called International Preliminary Report on Patentability) is necessary to be submitted to the NOIP at the time of the request for substantive examination. Although no copy of priority application is needed, the applicant must furnish the NOIP with an original Power of Attorney within 34 months from the priority date. Neither notarization nor legalization is necessary for the Power of Attorney.

 III.        TRADEMARKS

A trademark is a sign used to distinguish the goods or services of different entities or individuals. A registrable mark must be a visible sign in the form of letters, words, pictures, figures, including three-dimensional figures or a combination thereof, represented in one or more colours, and capable of distinguishing goods or services of the trademark owner from goods or services of others.

Collective mark is a mark used to distinguish goods or services of members of an organization that is the owner of such a mark from goods or services of non-member entities or individuals.

Certification mark is a mark that is authorized by the owner to other organizations or individuals for use on their goods or services in order to certify characteristics with respect to origin, materials, method or mode of goods manufacture, or service provision, quality, accuracy, safety or other definable characteristics of the goods or services bearing that mark.

Associated marks are the marks registered by the same owner, identical with or similar to each other and are used for identical or similar or related goods and services.

Well-known mark is a mark that has become widely known by the consumers throughout the territory of Vietnam.

Well‑Known Trademarks

The recent development with respect to the Vietnam trademark regulations provides a new approach to the concept of well-known trademark and new regime of protection therefor in Vietnam. Specifically, the rights over a well-known trademark are no longer subject to any registration for recognition with the competent authority as previously required.  Instead, the rights over a well-known trademark are automatically established through the use of the mark in commerce that makes the mark become widely known by the consumers throughout the territory of Vietnam.

Criteria for consideration the well-known status of a mark:

  • Number of the relevant consumers who are aware of the mark through purchase or use of the goods or services bearing the mark or through advertising;
  • Territorial extent of circulation of the goods or services bearing the mark;
  • Turnover of the sale or supply of the goods or services bearing the mark or the volume of the goods sold or the services supplied;
  • Duration of continuous use of the mark;
  • Widespread goodwill of the goods or services bearing the mark;
  • Number of countries in which the mark has been protected;
  • Number of countries in which the mark has been recognized as well known;
  • Value of the mark in assignment, licensing, investment capital contribution.

Signs not registrable as a mark