IP Overview in Vietnam in 2009

In June 2009 the National Assembly of Vietnam passed a new IP Law to amend a number of articles of the existing IP Law passed on November 2005, came into force on July 1, 2006. The “Amended IP Law” aims at encouraging innovation, improving IP management system and bringing it into compliance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS). The amended IP Law will come into force on January 1^st, 2010. Bellow is key amendments made to the Law.

Copyright
The term of copyright protection is amended to extend from 50 years to 75 years from the first publication and is applicable to cinematographic, photographic, applied art and anonymous works. For those cinematographic, photographic and applied art works not published within twenty five (25) years from the fixation date, the protection term is extended to 100 years from the fixation date of the work (this amends Article 27.2 of the IP Law). This amendment encourages authors and owners to publish their work earlier.

For commercial use of published work, the charges reflect a bigger role for the principle of free and voluntary undertaking and agreement in civil transactions, by stipulating that broadcasting organizations should negotiate with rights owners about royalty rate and method of payment. Additionally, if no agreement can be reached, royalty obligations should be carried out in accordance with the government regulations. Alternatively, the rights owner is entitled to bring the case to court (Article 26.1 and Article 33.1)

Industrial property rights
In order to ensure the quality of application examination, the time limitation to complete substantive examination of patent applications is extended from 12 months to 18 months in lieu of six months as stipulated in the outgoing version of the IP Law. Trademark, industrial design and geographical indication applications shall be examined as to substance within nine, seven and six months, respectively, from the date of publication.

The amended IP Law clarifies in Article 90 that the first-to-file principle shall apply in cases where the same person files several applications for the same subject. To date, this principle has not been set forth explicitly and has been applied implicitly, which has given rise to wide misunderstanding.

The filing date or priority date, when applicable, of a patent or design application now serves as the date from which a prior use right to an invention or industrial design is established instead of the publication date as now applied (this amends Article 143.1 of the IP Law). This amendment is intended to bring the patent law of Vietnam into conformity with Article 4B of the Paris Convention, by which no action taken by a third party during the period of priority might give rise to any right of that third party.

Rights to plant varieties
Vietnam's membership in the Convention of the Union for the Protection of New Varieties of Plants (UPOV) required certain changes in the Vietnamese IP Law.  Therefore, the rights to the harvested materials derived from the unlawful use of propagating materials of a protected plant variety are now explicitly established for whoever holds the protection title to the plant variety (Article 186.2). This expansion of rights is only limited where the holder was given a reasonable opportunity to exercise them.

Enforcement of IP rights
The amended IP Law removes the limitation that an IP right holder may seek administrative remedies after only s/he serves the alleged infringer with a written warning notice and where the infringer continues the alleged infringing act. Under the 2009 version of the IP Law, acts of infringement of IP rights that cause losses to "authors" and "IP right holders" are eligible for administrative remedies. Infringement causing losses to consumers or society will also result in administrative remedies as provided in the IP Law.

Changes for correctly interpreting the law and correction of technical errors
Corrected technical errors and the clarification of the legislative intent are features of the amended IP Law. Article 3.3 clarifies that besides propagating materials, the notion of plant varieties includes harvested materials, while Article 4 further defines materials in the law. In compliance with Article 747 of Civil Code 1995, which provided that "architecture works" are protected by Copyright Law, the amended list of works protected by copyright in Article 14 corrects the omission of these kinds of works by adding the appropriate language. The National Assembly clearly announced its intent by amending Article 220.3, which now provides that during transitional periods,  revocation or invalidation of a protection title is only subject to the provisions of the law "applicable to the grant of this title" instead of "applicable at the time of its grant" as provided in the outgoing version of the IP Law.  In the lawmakers' perspective, this new wording makes clear that the applications for registration of intellectual property rights that have been filed before the effective date of the new law shall be treated under the old law.

download: Luatso362009QH12.doc (187 KB)