The most recent Amendment to Vietnam’s Law on Intellectual Property was passed by the National Assembly on 16 June 2022. Except for a few provisions, the Amendment will take effect from 1 January 2023. The changes are relatively extensive and below are some of the main ones concerning patents and industrial designs:
Security Control of Inventions
A new Article 89a has been added to formalize some security control provisions which were previously implemented by way of a Government Decree. Specifically, a patent application for an invention in a technical field affecting national defense and security, which was created in Vietnam and which belongs to an individual who is Vietnamese citizen and permanently residing in Vietnam or an entity established under Vietnamese law, can only be filed abroad if it has already been filed in Vietnam to carry out security control procedures. In other words, compared to the previous Government Decree, the scope of the new Article 89a is limited to a specific category of inventions affecting national defense and security.
Contravention of security control of inventions is a cause for rejection during formality examination or substantive examination, as well as a basis for total invalidation of a granted patent. Notably, the transitional provisions state that the new Article 89a will be applied retroactively to pending applications in which a Decision to Grant Decision to Refuse has not been issued by the effective date of 1 January 2023.
Broader Definition of Prior Art
A new category of prior art covering unpublished patent applications is added. Specifically, an invention in a later-filed patent application is not considered new if it has been disclosed in another patent application having an earlier filing or priority date but published on or after the filing or priority date of that later-filed patent application. This new category of prior art is applicable to novelty assessment but not inventive step assessment, similar to equivalent provisions in some other jurisdictions such as the UK and Singapore.
Additional Grounds for Invalidation
Besides contravention of security control provisions, another new basis for total invalidation of a granted patent is if the patent application is for an invention directly created based on genetic resources or traditional knowledge about genetic resources but does not disclose or incorrectly disclose the origin of the genetic resources or traditional knowledge about genetic resources included in that application.
New grounds for total or partial invalidation of a granted patent or registered industrial design include:
- Amendment of a patent or industrial design application expands the scope of subject matter disclosed or stated in the application or changes the nature of subject matter claimed in the application;
- The invention has not been disclosed sufficiently and clearly for a person of ordinary skill in the relevant art to implement it;
- The patented invention exceeds the scope of disclosure in the original specification of the patent application;
- The invention does not satisfy the first-filing principle.
Further, during substantive examination, a patent application may be refused based on grounds equivalent to those above.
Formalized Opposition Procedure
A new Article 112a has been added to formalize opposition procedure. Specifically, any third-party may submit a written opposition to a patent application within 9 months of its publication, or an industrial design application within 4 months of its publication. Meanwhile, the third-party observation procedure remains available, but the submissions will be considered a source of reference information for the processing of the patent or industrial design application.
Compensation for Delay in Marketing Approval
A new Article 131a has been added to prescribe waiving certain patent annual fees during the period in which the procedure to register first circulation of a pharmaceutical product manufactured according to the patent is delayed. The procedure is considered delayed if the authority empowered to grant pharmaceutical product Circulation Permits has not issued a first written response after a period of 2 years from the date it receives the complete application to register circulation. In other words, instead of compensating patent owners by a patent term extension, a fee waiver is provided.
Broader Definition of Industrial Design
The definition of industrial design has been revised to include external appearance of not only a product but also a part for assembly into a complex product. In other words, partial design protection will be available following the Amendment, at least to some extent because no definition of “a complex product” has been provided. Notably, the transitional provisions allow the broader definition of industrial design to be retroactively applied to pending industrial design applications filed from 1 August 2020 in which a Decision to Grant or Decision to Refuse has not issued by 1 January 2023.
Industrial Design Application and Publication
The requirements for an industrial design application have been revised to place more emphasis on the representations of the industrial design by way of photographs or drawings, and less emphasis on the description of the industrial design. Deferment of publication of an industrial design application for up to 7 months from the filing date can be requested at the time of filing.
- The remuneration of inventors, in the absence of an agreement, has been fixed at 10% of the profit before tax from the exploitation of the invention or industrial design, and 15% of the royalties before tax. Previously, only a minimum level of remuneration was prescribed in the absence of an agreement and this was a source of disputes.
- The requirements to qualify as an Industrial Property agent practicing in patents and industrial designs have been revised to include a Bachelor’s degree or equivalent qualification in science or engineering. The transitional provisions allow Industrial Property agents already qualified or licensed on 1 January 2023 to continue practicing without being affected by this new requirement.
- The Amendment has also formally allowed the IP Office to use substantive examination results of corresponding patent applications established by foreign patent offices during the assessment of a patent application. This is not surprising given the current formal work-sharing agreements, such as the ASEAN Patent Examination Cooperation program and the PPH pilot programs with Japan and Republic of Korea, and Examiners have informally relied on work products of established foreign patent offices on a routine basis.
The Vietnamese Government has been tasked to revise the relevant implementing rules and regulations, so it is expected that further guidance will become available in the coming weeks and months. Meanwhile, if you have any questions regarding the amended provisions of Vietnam’s IP Law, please do not hesitate to contact us.