VietnameseDecree 65/2023/ND-CP detail Law on Intellectual Property regarding industrial property
ATTRIBUTE
Decree No. 65/2023/ND-CP dated August 23, 2023 of the Government detailing a number of articles of, and providing measures to implement, the Law on Intellectual Property regarding industrial property, protection of industrial property rights and plant variety rights, and the state management of intellectual property
| Issuing body: | Government | Effective date: | Known Please log in to a subscriber account to use this function. Don’t have an account? Register here |
| Official number: | 65/2023/ND-CP | Signer: | Tran Luu Quang |
| Type: | Decree | Expiry date: | Updating |
| Issuing date: | 23/08/2023 | Effect status: | Known Please log in to a subscriber account to use this function. Don’t have an account? Register here |
| Fields: | Agriculture - Forestry , Industry , Intellectual property |
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Effect status: Known
THE GOVERNMENT | THE SOCIALIST REPUBLIC OF VIETNAM Independence - Freedom - Happiness | |
No. 65/2023/ND-CP | Hanoi, August 23, 2023 |
DECREE
Detailing a number of articles of, and providing measures to implement, the Law on Intellectual Property regarding industrial property, protection of industrial property rights and plant variety rights, and the state management of intellectual property[1]
Pursuant to the June 19, 2015 Law on Organization of the Government; and the November 22, 2019 Law Amending and Supplementing a Number of Articles of the Law on Organization of the Government and the Law on Organization of Local Administration;
Pursuant to the November 29, 2005 Law on Intellectual Property; the June 19, 2009 Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property; the June 14, 2019 Law Amending and Supplementing a Number of Articles of the Law on Insurance Business and the Law on Intellectual Property; and the June 16, 2022 Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property;
At the proposal of the Minister of Science and Technology;
The Government promulgates the Decree detailing a number of articles of, and providing measures to implement, the Law on Intellectual Property regarding industrial property, protection of industrial property rights and plant variety rights, and the state management of intellectual property.
Part One
GENERAL PROVISIONS
Article 1. Scope of regulation
This Decree details, and provides measures to implement, the Law on Intellectual Property’s provisions on:
1. The establishment, holders, contents, limitations of industrial property rights, transfer of industrial property rights, industrial property representatives, and measures to promote industrial property activities.
2. The identification of infringing acts, nature and severity of infringements of industrial property rights and plant variety rights, determination of damage, requests for handling of infringements and settlement thereof, handling of infringements upon industrial property rights and plant variety rights, control of imported and exported goods related to industrial property and plant variety rights, assessment of industrial property and plant variety rights, and the state management of intellectual property.
Article 2. Subjects of application
1. Vietnamese and foreign organizations and individuals that satisfy conditions for enjoyment of the protection of industrial property rights in Vietnam under treaties to which Vietnam is a contracting party.
2. Organizations and individuals that hold protected industrial property rights and plant variety rights or commit acts infringing upon industrial property rights and plant variety rights specified in the Law on Intellectual Property.
3. Other related organizations and individuals.
Article 3. Interpretation of terms
In this Decree, the terms below are construed as follows:
1. “Vietnamese organizations and individuals” means individuals, legal persons and other subjects of the civil law.
2. “Applicant” means an organization or individual that files an application for the establishment of industrial property rights or an organization or individual that files a request for handling of an act infringing upon industrial property rights or plant variety rights.
3. “Paris Convention” means the 1883 Paris Convention for the Protection of Industrial Property, as revised in 1967 and 1979.
4. “PCT” means the 1970 Patent Cooperation Treaty, as revised in 1984 and 2001.
5. “Madrid Agreement” means the 1891 Madrid Agreement Concerning the International Registration of Marks, as revised in 1979.
6. “Madrid Protocol” means the 1989 Madrid Protocol Concerning the Madrid Agreement, as revised in 2006 and 2007.
7. “Hague Agreement” means the 1999 Hague Agreement Concerning the International Registration of Industrial Designs and its Documents.
8. “PCT application” means an invention registration application filed under the PCT.
9. “PCT application designating or selecting Vietnam” means a PCT application filed in any PCT member state, including Vietnam, specifying Vietnam as a designated or selected state.
10. “PCT national-phase application” means a PCT application designating or selecting Vietnam filed to the state management agency in charge of industrial property rights.
11. “PCT application originating in Vietnam” means a PCT application filed from Vietnam, containing a request for protection in any PCT member state, including Vietnam.
12. “Madrid application” means an application for international registration of a mark filed under the Madrid Agreement or the Madrid Protocol.
13. “Madrid application originating in Vietnam” means a Madrid application requesting the protection of a mark in other member states of the Madrid Agreement or the Madrid Protocol filed from Vietnam.
14. “Madrid application designating Vietnam” means a Madrid application requesting the protection of a mark in Vietnam and originating from any other member state of the Madrid Agreement or the Madrid Protocol.
15. “Hague application” means an application for international registration of an industrial design filed under the Hague Agreement.
16. “Hague application designating Vietnam” means a Hague application requesting the protection of an industrial design in Vietnam and originating from any member state of the Hague Agreement, including Vietnam.
17. “Hague application originating in Vietnam” means a Hague application filed from Vietnam requesting the protection of an industrial design in any member state of the Hague Agreement, including Vietnam.
18. “International Bureau” means the International Bureau of the World Intellectual Property Organization.
19. “Infringing act” means an act infringing upon industrial property rights or plant variety rights.
20. “Handling of infringing act” means handling of an act infringing upon industrial property rights or plant variety rights.
21. “Infringer” means an organization or individual that commits an act infringing upon industrial property rights or plant variety rights.
22. “Infringing element” means an element created from an act infringing upon industrial property rights or plant variety rights.
23. “Act in question” means an act that is suspected and put under consideration so as to conclude whether such act is an infringement.
24. “Subject in question” means a subject that is suspected and put under consideration so as to conclude whether it/he/she is an infringer of industrial property rights or plant variety rights.
25. “Request for infringement handling” means a request for the application of measures to handle an infringing act.
26. “Law on Intellectual Property” means the November 29, 2005 Law on Intellectual Property, as amended and supplemented under the June 19, 2009 Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property; the June 14, 2019 Law Amending and Supplementing a Number of Articles of the Law on Insurance Business and the Law on Intellectual Property; and the June 16, 2022 Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property.
Part Two
STATE MANAGEMENT OF INTELLECTUAL PROPERTY
Article 4. The principle of uniformity of the state management of intellectual property
The organization of the state management of intellectual property mentioned in Articles 10 and 11 of the Law on Intellectual Property is based on the principle of uniformity of objectives, contents and measures under the Government’s general direction, with clear assignment of responsibilities and close coordination among ministries, ministerial-level agencies, government-attached agencies and People’s Committees at all levels.
Article 5. Responsibility for assuming the prime responsibility for, and coordinating in, the state management of intellectual property
1. The Ministry of Science and Technology shall assume the prime responsibility for, and coordinate with the Ministry of Culture, Sports and Tourism, Ministry of Agriculture and Rural Development, other ministries, ministerial-level agencies, government-attached agencies, People’s Committees at all levels and related agencies in, carrying out the following common activities in order to ensure the uniform state management of intellectual property:
a/ Formulating and promulgating, or submitting to competent authorities for promulgation and organizing the implementation of, general strategies, policies and legal documents on protection of intellectual property rights;
b/ Monitoring, urging and inspecting the implementation of general tasks regarding intellectual property assigned by the National Assembly or the Government to ministries, ministerial-level agencies, government-attached agencies and People’s Committees at all levels under Articles 10 and 11 of the Law on Intellectual Property and under this Decree;
c/ Summarizing, evaluating and reporting to the Government on the protection of intellectual property rights, proposing specific policies and measures to improve the efficiency of the intellectual property system, and ensuring the uniform state management of intellectual property;
d/ Formulating, and directing the implementation of, general programs and schemes on protection of intellectual property rights and measures for coordination among competent state agencies in the protection of intellectual property rights;
dd/ Negotiating and concluding or acceding to, and organizing the implementation of, general treaties on intellectual property; proposing the resolution of intellectual property-related national disputes in international relations;
e/ Building the database system and establishing the national information network on the state management of intellectual property and protection of intellectual property rights.
2. The Ministry of Culture, Sports and Tourism shall coordinate with the Ministry of Science and Technology in performing the tasks specified in Clause 1 of this Article; secure the performance of the function of state management of copyright and related rights and ensure that policies, strategies and legal documents on copyright and related rights are consistent with general policies, strategies and legal documents on intellectual property; regularly or irregularly provide information on the state management and protection of intellectual property rights to the Ministry of Science and Technology for coordination in the handling of arising issues and summarize and report to the Prime Minister.
3. The Ministry of Agriculture and Rural Development shall coordinate with the Ministry of Science and Technology in performing the tasks specified in Clause 1 of this Article; secure the performance of the state management of plant variety rights and ensure that policies, strategies and legal documents on protection of plant variety rights are consistent with general policies, strategies and legal documents on intellectual property; regularly or irregularly provide information on the state management and protection of intellectual property rights to the Ministry of Science and Technology for coordination in the handling of arising issues and summarize and report to the Prime Minister.
Article 6. Responsibilities of the Ministry of Science and Technology regarding industrial property
The Ministry of Science and Technology has the following responsibilities in the state management of industrial property:
1. To formulate, and organize the implementation of, strategies and policies on protection of industrial property rights.
2. To promulgate, or submit to competent authorities for promulgation and organize the implementation of, legal documents on industrial property.
3. To organize the system of agencies performing the state management of industrial property.
4. To provide professional guidance, training and further training in industrial property.
5. To organize the establishment of industrial property rights, registration of contracts of transfer of industrial property rights, and perform other procedures related to industrial property rights protection titles.
6. To exercise the right to compel the licensing of inventions under Article 147 of the Law on Intellectual Property.
7. To assume the prime responsibility for, or coordinate with others in, implementing measures to protect lawful rights and interests of organizations, individuals, the State and society regarding industrial property.
8. To manage industrial property assessment activities; to grant industrial property assessor cards.
9. To examine and inspect the observance of the law on intellectual property; to settle complaints and denunciations and handle violations related to industrial property.
10. To organize industrial property-related information and statistics activities; to manage and organize activities related to the national database on industrial property.
11. To organize education, public communication and dissemination of knowledge, policies and laws on industrial property.
12. To manage industrial property representation activities; to grant industrial property representation service practice certificates.
13. To undertake international cooperation on industrial property; to propose the resolution of disputes between Vietnam and other countries over industrial property.
14. To perform other tasks assigned by the Government.
Article 7. Mechanism for coordination in the state management of intellectual property
1. The Ministry of Science and Technology shall assume the prime responsibility for, and coordinate with the Ministry of Culture, Sports and Tourism, Ministry of Agriculture and Rural Development, and related agencies in, protecting, examining, inspecting and handling infringements upon intellectual property rights.
2. The state management agency in charge of intellectual property shall provide adequate and timely responses to requests of agencies competent to handle infringements upon intellectual property rights.
3. The state management agency in charge of intellectual property shall participate in inspection or examination teams when so requested to serve inspection and examination activities.
Article 8. Responsibilities of ministries, ministerial-level agencies, government-attached agencies and provincial-level People’s Committees regarding intellectual property
Ministries, ministerial-level agencies, government-attached agencies and provincial-level People’s Committees shall, within the ambit of their functions and tasks, coordinate with the Ministry of Science and Technology, Ministry of Culture, Sports and Tourism, and Ministry of Agriculture and Rural Development in:
1. Performing the tasks specified in Clause 1, Article 5 of this Decree and directly performing specific tasks assigned by the Government.
2. Securing the implementation of policies and laws on intellectual property in localities in accordance with the Law on Intellectual Property and guiding documents.
3. Regularly or irregularly providing information on the state management and protection of intellectual property rights to the Ministry of Science and Technology for coordination in handling arising issues and summarize and report to the Prime Minister.
Article 9. Responsibilities of provincial-level People’s Committees, ministries, ministerial-level agencies and government-attached agencies regarding industrial property
1. Regarding the state management of industrial property in localities, provincial-level People’s Committees have the following responsibilities:
a/ To organize the implementation of policies and laws on industrial property;
b/ To formulate, promulgate, and organize the implementation of, local regulations on industrial property;
c/ To organize the system of management of industrial property activities in localities and implement measures to improve the efficiency of such system;
d/ To organize the public communication and dissemination of knowledge, policies and laws on industrial property, and impalement measures to intensify industrial property activities;
dd/ To guide and support organizations and individuals in carrying out industrial property-related procedures;
e/ To coordinate with related agencies in the protection of industrial property rights and handling of industrial property-related violations;
g/ To examine and inspect the observance of the law on industrial property and settle industrial property-related complaints and denunciations in localities;
h/ To manage geographical indications of localities, including location names and other signs indicating geographical origins of local specialties;
i/ To undertake international cooperation on industrial property in localities.
2. Ministries, ministerial-level agencies and government-attached agencies shall organize and direct the implementation of the law on industrial property and manage industrial property subject matters under their management.
Part Three
INDUSTRIAL PROPERTY RIGHTS
Chapter I
ESTABLISHMENT OF INDUSTRIAL PROPERTY RIGHTS
Section 1
GENERAL PROVISIONS ON ESTABLISHMENT OF INDUSTRIAL PROPERTY RIGHTS
Article 10. Grounds and procedures for establishment of industrial property rights
1. Industrial property rights to inventions, layout designs, industrial designs, marks and geographical indications shall be established on the basis of decisions of the state management agency in charge of industrial property rights to grant protection titles to applicants for registration of such subject matters under Chapters VII, VIII and IX of the Law on Intellectual Property and Appendix I to this Decree.
Industrial property rights to internationally registered marks under the Madrid Agreement and the Madrid Protocol shall be established on the basis of decisions of the state management agency in charge of industrial property rights to accept the protection of such marks.
Industrial property rights to internationally registered industrial designs under the Hague Agreement shall be established on the basis of decisions of the state management agency in charge of industrial property rights to accept the protection of such industrial designs.
2. Industrial property rights to well-known marks shall be established on the basis of the reality of wide use of such marks under Article 75 of the Law on Intellectual Property without requiring performance of registration procedures. When exercising rights and settling disputes over rights to well-known marks, the owners of such marks shall prove their rights with the evidences specified at Point c, Clause 5, Article 91 of this Decree.
3. Industrial property rights to trade names shall be established on the basis of the reality of lawful use of such trade names in areas (territories) and business lines without requiring performance of registration procedures. When exercising rights and settling disputes over rights to trade names, the owners of such trade names shall prove their rights with the evidences specified at Point b, Clause 5, Article 91 of this Decree.
4. Industrial property rights to business secrets shall be established on the basis of financial investment, intellectual investment or any other lawful methods to find out, create or acquire information and information security that constitute such business secrets without requiring performance of registration procedures. When exercising rights and settling disputes over rights to business secrets, the owners of such business secrets shall prove their rights with the evidences specified at Point a, Clause 5, Article 91 of this Decree.
5. The rights to combat unfair competition shall be established on the basis of the reality of competition activities without requiring performance of registration procedures at the state management agency in charge of industrial property rights. When exercising the rights to combat unfair competition, the holders of such rights shall prove their rights with evidences showing subject matters, areas, territories and business periods related to competition activities.
Article 11. Industrial property rights under treaties
1. In case an industrial property-related treaty to which Vietnam is a contracting party provides the recognition and protection of industrial property rights of organizations and individuals of member states under Article 6 of the Law on Intellectual Property, industrial property rights of organizations and individuals of other member states shall be recognized and protected in Vietnam.
Industrial property rights shall be protected within a scope and period in accordance with provisions of treaties without requiring performance of registration procedures in accordance with the Law on Intellectual Property.
2. The Ministry of Science and Technology shall announce all necessary information about industrial property rights recognized and protected in Vietnam under treaties.
Article 12. Priority right of invention, industrial design and mark registration applications
The priority right of invention, industrial design and mark registration applications provided in Article 91 of the Law on Intellectual Property shall be applied as follows:
1. In case an invention, industrial design or mark registration applicant wishes to enjoy the priority right under the Paris Convention, his/her claim for the priority right may be accepted if the following conditions are satisfied:
a/ The applicant is a Vietnamese citizen or a citizen of a member state of the Paris Convention or a citizen of another state and resides or has a production or business establishment in Vietnam or another member state of the Paris Convention;
b/ The first application has been filed in Vietnam or another member state of the Paris Convention and contains a section corresponding to the claim for the priority right of the invention, industrial design or mark registration application;
c/ The application is filed within 6 months for industrial design or mark registration applications, or 12 months for invention registration applications, from the date of filing the first application;
d/ In the invention, industrial design or mark registration application, the applicant clearly states his/her claim for the priority right and has filed a copy of the first application mentioned at Point b of this Clause in case of overseas filing, bearing certification by the authority having received the first application. The copy of the first application may be filed within 3 months from the date of application filing;
dd/ The applicant fully pays the charge for claiming the priority right.
2. The first application that has been filed in Vietnam or another member state of the Paris Convention under Point b, Clause 1 of this Article is the application eligible for confirming its date of filing in a concerned member state, regardless of the application processing result.
3. In case an invention, industrial design or mark registration applicant wishes to enjoy the priority right under another treaty, his/her claim for the priority right may be accepted if he/she satisfies the conditions for the priority right specified in such treaty.
Article 13. Industrial property registration right under treaties
1. Foreign organizations and individuals that satisfy the conditions for having industrial property rights protected in Vietnam under Article 2 of this Decree may file industrial property registration applications in Vietnam under treaties on or related to procedures for filing international applications.
2. Vietnamese organizations and individuals may file international registration applications for industrial property to request the protection of their rights in Vietnam if so provided by treaties.
Article 14. Procedures for security control of inventions
1. For inventions in technical areas that exert impacts on security and national defense listed in Appendix VII to this Decree, are created in Vietnam and subject to the registration right of Vietnamese citizens permanently residing in Vietnam or organizations established in accordance with Vietnam’s law, in order to satisfy the conditions for overseas filing of invention registration applications specified in Clause 1, Article 89a of the Law on Intellectual Property, security control procedures shall be carried out before the state management agency in charge of industrial property rights announces such invention registration applications.
2. The Ministry of National Defense and Ministry of Public Security shall designate agencies to receive and process requests for invention identification in invention registration applications in technical areas that exert impacts on national defense and security specified in Clause 3 of this Article.
3. Within 1 month from the date of receipt of a national-format invention registration applicant’s notice of the intent of overseas filing of the registration application for invention security control under Clause 1 of this Article or from the date of filing of a PCT application originating from Vietnam through the state management agency in charge of industrial property rights, if having a ground to doubt that the invention in such application falls into the case specified in Clause 1 of this Article, the state management agency in charge of industrial property rights shall suspend the process of application examination and send a request for identifying whether the invention falls into the technical areas that exert impacts on national defense and security to a designated agency of the Ministry of National Defense or Ministry of Public Security. Such designated agency shall, within 3 months after the state management agency in charge of industrial property rights sends the request, issue a document to identify whether the invention shown in the application falls into a technical area that exerts impact on national defense or security.
4. For an invention registration application specified in Clause 3 of this Article, the state management agency in charge of industrial property rights shall notify the applicant of the suspension of the process of application examination for the performance of security control procedures under Article 89a of the Law on Intellectual Property within 7 working days after the request is sent to the designated agency of the Ministry of National Defense or Ministry of Public Security.
5. Within 20 days after receiving the notice of the designated agency of the Ministry of National Defense or Ministry of Public Security stating that the subject matter shown in the invention registration application falls into a technical area that exerts impacts on national defense and security under Clause 3 of this Article, the state management agency in charge of industrial property rights shall notify such to the applicant and, at the same time, request the latter to carry out procedures for state secret protection in accordance with law within 1 month after being notified and the following procedures:
a/ For an invention registration application filed in the national format: In case the applicant files such application according to procedures specified by regulations on state secret protection, the application shall continue to be processed in accordance with law. In case the applicant fails to file such application according to procedures specified by regulations on state secret protection within a specified time limit, such application shall be regarded as having been withdrawn and destroyed by the state management agency in charge of industrial property rights in accordance with regulations on state secret protection, unless the applicant has evidences to prove that the invention is not a state secret.
b/ For a PCT application originating in Vietnam filed through the state management agency in charge of industrial property rights: Such application shall be destroyed in accordance with regulations on state secret protection and must comply with Point e, Clause 1, Article 20 of this Decree, unless the applicant has evidences to prove that the invention is not a state secret.
6. The state management agency in charge of industrial property rights shall continue the process of application examination in the following cases:
a/ It does not receive a notice from the designated agency of the Ministry of National Defense or Ministry of Public Security though the 3-month time limit specified in Clause 3 of this Article has expired.
b/ The designated agency of the Ministry of National Defense or Ministry of Public Security notifies that the invention shown in the application does not fall into any technical area that exerts impacts on national defense and security.
The state management agency in charge of industrial property rights shall notify the applicant of continued processing of the application within 1 month from the date specified at Point a of this Clause or from the date of being notified as specified at Point b of this Clause.
7. For the applications specified in Clause 6 of this Article, applicants may file their invention registration applications overseas.
Article 15. Method of calculation of time limits
1. The method of calculation of time limits in industrial property activities must comply with the Civil Code’s provisions on time limits.
2. The time limit for an applicant and related parties to file, modify or supplement documents or provide suggestions may be extended once for a period equal to the time limit stated in the notice of the state management agency in charge of industrial property rights, provided that the extension requester has submitted a request for the extension before the date of expiration of the specified time limit and paid a fee therefor under regulations.
3. The period during which a force majeure event or an external obstacle occurs, making the organization or individual with rights and obligations unable to exercise and perform such rights and obligations, shall not be included in a time limit in case the organization or individual has made a request and has a reliable evidence to prove such a situation. If such request is accepted, the state management agency in charge of industrial property rights shall issue a decision, and notify the revocation of the issued decision or notice for the reason that such organization or individual fails to exercise its/his/her rights and perform its/his/her obligations within the time limit, and resume the process of application processing like in case the time limit has not yet expired.
4. Force majeure event means an event that objectively and unforeseeably occurs (such as disasters, enemy sabotages, etc.) and is irremediable despite the application of necessary and permissible measures.
External obstacle means an obstacle caused by an external situation (such as sickness, being on a working mission or study in a distant location, etc.) making a person with rights and obligations unable to know that his/her lawful rights and interests are infringed upon or unable to exercise his/her rights or perform his/her obligations.
Article 16. Modification and supplementation of industrial property registration applications
1. Before the state management agency in charge of industrial property rights issues a decision on refusal to accept an application or a decision on grant or refusal to grant a protection title, an applicant may:
a/ Modify or add documents in the application, provided that such modification or addition does neither extend the protection scope (volume) shown in the description, for invention registration applications, or in the set of photos, drawings and description of the industrial design shown in the set of photos and drawings, for industrial design registration applications, or in the specimen mark and the list of goods and services, for mark registration applications, nor change the nature of the subject matter shown in the application;
b/ Modify the name, address or country code of the applicant, or the name, nationality or address of the invention, layout design or industrial design author; or change the industrial property representative.
2. The modification or supplementation of applications is as follows:
a/ In case the applicant carries out application modification or supplementation after the state management agency in charge of industrial property rights accepts the valid application, including also change of the lawful representative in Vietnam, a request for application modification or supplementation shall be made according to Form No. 04 provided in Appendix II to this Decree;
b/ In case the application modification or supplementation is made before the state management agency in charge of industrial property rights accepts or refuses to accept the valid application or in case the application modification or supplementation is made based on the notice of the state management agency in charge of industrial property rights concerning such application, a request for application modification or supplementation shall be made in writing, clearly stating contents requested to be modified or supplemented;
c/ An applicant may request modification or supplementation of the same content relevant to different applications sharing the same type of subject matter of industrial property rights in a declaration form or a request;
d/ Modification or supplementation requesters shall pay:
d1/ Charge for examination of requests for modification or supplementation regarding each content to be modified under regulations and a copy of the charge receipt (in case the charge is paid via postal services or directly into the account of the state management agency in charge of industrial property rights);
d2/ Charge for disclosure of information on application modification or supplementation under regulations if modified or supplemented contents are subject to disclosure under Point a, Clause 3 of this Article. In case the modification or supplementation is required to correct errors made by the state management agency in charge of industrial property rights, the applicant is not required to pay the charge for information disclosure;
dd/ For requests for modification or supplementation of the following documents, the applicant shall submit corresponding documents that have been modified or supplemented:
dd1/ Part or the whole of the description or summary of the invention, for invention registration applications;
dd2/ Four sets of photos or drawings or descriptions of integrated circuits manufactured according to the layout design, for layout design registration applications;
dd3/ Four sets of drawings or 4 sets of photos or descriptions, for industrial design registration applications;
dd4/ Five specimens of the mark and the list of goods and services bearing such mark, for mark registration applications;
dd5/ Description of particular characteristics of the product bearing a geographical indication, or map of the geographical area corresponding to the geographical indication, for geographical indication registration applications.
Documents modifying or supplementing the application must comply with requirements stated in Appendix I to this Decree. For modification or supplementation requests specified at Points dd1, dd2, and dd3 of this Clause, the applicant shall also submit detailed explanations about modified or supplemented contents as compared with the submitted documents.
e/ For cases of change of the name, address or country code of the applicant, or name or nationality of the author, the applicant shall submit a certification (the original or a certified copy) or a legal document (a certified copy) to prove the change (the decision on change of the name or address; the enterprise registration certificate stating the change of name or address, etc.). For cases of change of the industrial property representative, the applicant shall submit a statement of change of the industrial property representative.
3. The state management agency in charge of industrial property rights shall process a request for application modification or supplementation as follows:
a/ To announce modified or supplemented contents, in case of request for modification or supplementation of information relevant to the valid application in terms of format stated in the decision on acceptance of the valid application; the name and nationality of the invention, industrial design or layout design author; the invention summary enclosed with drawings (if any); the set of industrial design photos or drawings; specimen mark and accompanying list of goods and services; the description of particular characteristics and the name of the product bearing the geographical indication;
b/ In case the applicant requests application modification or supplementation under Point a, Clause 2 of this Article, to examine the modified or supplemented contents under Article 109 of the Law on Intellectual Property and relevant regulations;
c/ To re-examine the application in case the request for application modification or supplementation is submitted after receiving the notice of the intent to grant the protection title that falls into the following cases, and the applicant shall pay the charge under regulations:
c1/ Modification of information related to the nature of the subject matter shown in the application: the description of the invention; description and set of industrial design photos and drawings; specimen mark and list of goods and services bearing the mark, regulation on the use of the collective mark, or regulation on the use of the certification mark; or description of particular characteristics of the product bearing the geographical indication, geographical area corresponding to the geographical indication;
c2/ Change of the mark registration applicant;
d/ To notify the acceptance of or refusal to accept the request for modification or supplementation within the time limit specified in Clause 4, Article 119 of the Law on Intellectual Property;
dd/ To notify the acceptance of or refusal to accept the request for application modification or supplementation in documents sent to the applicant in the course of processing the concerned industrial property registration application, for the case specified at Point b, Clause 2 of this Article.
Article 17. Splitting or withdrawal of industrial property registration applications; requests for examination of contents, and conversion of invention registration applications
1. The splitting of an industrial property registration application is as follows:
a/ Before the state management agency in charge of industrial property rights issues a decision on refusal to accept the application or a decision on grant of or refusal to issue a protection title, the applicant may split the application (splitting one or several technical solution(s) in the invention registration application, one or several industrial design(s) in the industrial design registration application, or part of the list of goods and services shown in the mark registration application into one or more than one new application, which is referred to as a split application);
b/ A split application bears a new number and the filing date of the initial application or priority date(s) of the initial application (if any). For each split application, the applicant shall pay the filing fee and all charges and fees for procedures carried out independently from the initial application (in addition to the procedures already carried out for the initial application and not required to be carried out again for the split application) and is not required to pay the charge for examination of the claim for the priority right (except cases of splitting of industrial design applications due to the failure to ensure uniformity). Split applications shall be examined in terms of format and continue to be processed according procedures not yet completed for the initial application. Split applications shall be announced under regulations;
c/ The applicant shall submit an explanation about the subject matter requested to be protected and modified contents as compared to the initial application upon the submission of split applications;
d/ The initial application (after the splitting) may continue to be processed according to procedures for application processing or procedures for application modification.
2. The withdrawal of an industrial property registration application under Article 116 of the Law on Intellectual Property is as follows:
a/ The withdrawal of the application shall be carried out by the applicant or the representative authorized by the applicant by means of a written declaration. For applications filed through representatives, the power of attorney must clearly state the authorization for application withdrawal or be enclosed with an order letter clearly stating the number of applications to be withdrawn;
b/ Within 2 months after receiving the request for application withdrawal, the state management agency in charge of industrial property rights shall:
b1/ Issue a notice of acceptance of the application withdrawal in case the request complies with Point a of this Clause, terminate the application processing, and record the withdrawal in the application dossier. A withdrawn industrial property registration application cannot be restored and may only be used as a ground for claiming the priority right under Clause 3, Article 116 of the Law on Intellectual Property;
b2/ Issue a notice of the intent to refuse to accept the application withdrawal in case the request does not comply with Point a of this Clause and fix a time limit of 2 months from the date of notice issuance for the applicant to remedy its/his/her errors;
b3/ Issue a notice of refusal to accept the application withdrawal if the applicant fails to remedy his/her errors within the time limit specified at Point b2 of this Clause or his/her remediation is unsatisfactory.
3. The conversion of an invention registration application under Point dd, Clause 1, Article 115 of the Law on Intellectual Property is as follows:
a/ Before the state management agency in charge of industrial property rights issues a decision on refusal to accept the application or a decision on grant of or refusal to grant a protection title, the invention registration applicant may convert the application for a patent into an application for a utility solution patent or vice versa for the whole or part of the application, provided that the applicant pays the filing fee for the conversion application under regulations. In case of conversion of part of an application, the applicant shall carry out procedures for splitting the application before requesting the conversion;
b/ After receiving a valid request for application conversion, the state management agency in charge of industrial property rights shall continue to carry out procedures for processing the conversion application under relevant regulations but not carry out once again the procedures already completed for the application before the conversion request is made.
4. A third party shall request the state management agency in charge of industrial property rights to examine contents of the invention registration application under Article 113 of the Law on Intellectual Property as follows:
a/ The request for examination of contents of the invention registration application shall be made according to Form No. 05 provided in Appendix I to this Decree;
b/ The time limit for filing the request for examination of contents of the invention registration application must comply with Clauses 1 and 2, Article 113 of the Law on Intellectual Property;
c/ The requester for examination of invention registration application shall pay charges for search and examination of contents under regulations;
d/ The request for examination of contents of the invention registration application shall be notified to the applicant within 3 months after it is received;
dd/ In case a request for content examination is invalid, within 1 month after receiving the request, the state management agency in charge of industrial property rights shall issue a notice and fix a time limit of 2 months from the date of notice issuance for the requester to correct errors. In case the requester fails to correct errors within the fixed time limit or makes unsatisfactory remediation, the state management agency in charge of industrial property rights shall issue a notice of refusal to examine contents of the application;
e/ In case the request is valid, the state management agency in charge of industrial property rights shall examine contents of the application under Article 114 of the Law on Intellectual Property and relevant regulations and notify examination results to the requester.
Article 18. Recording of change of industrial property registration applicants
1. Before the state management agency in charge of industrial property rights issues a decision on refusal to accept an application, or a decision on grant of or refusal to issue a protection title, an applicant may request the state management agency in charge of industrial property rights to record the change of the applicant on the basis of transfer or inheritance or takeover or under a competent agency’s decision.
2. The recording of change of an applicant due to transfer of an industrial property registration application is as follows:
a/ A dossier of request for recording of change due to application transfer must comprise:
a1/ A request for recording of the application transfer, made according to Form No. 05 provided in Appendix II to this Decree;
a2/ Documents on transfer of the application (the original or a certified copy), which must have such principal contents as names and addresses of the transferor and the transferee; and number of the transferred application or sufficient information for identifying such application;
a3/ Copies of charge and fee receipts under regulations (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights);
b/ The request for recording of change due to the transfer of different applications of the same applicant may be implemented in the same declaration form, provided that the examination charge is paid under regulations corresponding to the number of applications requested for transfer recording;
c/ The request for recording of change due to the application transfer shall be processed like a request for application modification or supplementation under Article 16 of this Decree. In case the request for recording of change due to the transfer of a mark registration application is submitted after the issuance of the notice of the intent to grant a protection title, such mark registration application shall be re-examined and transfer contents shall be announced. The requester shall pay the application examination charge and information disclosure charge under regulations.
3. The recording of change of an applicant due to inheritance or takeover or under a competent agency’s decision shall be carried out upon request based on asset inheritance or takeover upon the consolidation, merger, division or splitting of legal person(s), entry into a joint venture or an association, establishment of a new legal person by the same owner, business transformation, or under a court ruling or another competent agency’s decision. Procedures for requesting the recording of change of applicants in these cases are the same as procedures for application modification or supplementation specified in Article 16 of this Decree.
Section 2
PCT APPLICATION AND PROCESSING THEREOF
Article 19. PCT applications
1. PCT applications include PCT applications originating in Vietnam and national-phase PCT applications.
2. For PCT applications originating in Vietnam, applicants may file them through the state management agency in charge of industrial property rights or directly to the International Bureau. An application filed directly to the International Bureau shall be made in a language specified in the PCT and must satisfy format and content requirements specified in the PCT. Applications filed through the state management agency in charge of industrial property rights shall be made in English, each of which shall be made in 1 copy and must satisfy format and content requirements specified in the PCT, and the applicants shall pay the charge for preliminary examination of application format and charges and fees specified in the PCT Implementation Regulation and the laws on charges and fees of the member states designated in such PCT applications.
3. For a PCT application designating or selecting Vietnam to enter into the national phase, its applicant shall submit to the state management agency in charge of industrial property rights, within 31 months from the priority date (if the application claims the priority right) or from the filing date of the international application, the following documents:
a/ An invention registration declaration form, made according to Form No. 01 provided in Appendix 1 to this Decree;
b/ A copy of the international application (in case the applicant requests entry into the national phase before the date of international disclosure);
c/ A Vietnamese translation of the description and summary in the international application (the disclosed copy or the initially filed original if the application is yet to be disclosed, and a modified copy and modification explanation in case the international application has been modified under Article 19 and/or Article 34.2(b) of the PCT);
d/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights);
dd/ A power of attorney (in case the request is submitted through a representative).
Article 20. Processing of PCT applications originating in Vietnam filed through the state management agency in charge of industrial property rights
1. After receiving a PCT application originating in Vietnam, the state management agency in charge of industrial property rights shall carry out procedures for:
a/ Collecting the charge for preliminary examination of the application format;
b/ Determining whether the subject matter of the protection shown in the application is a state secret;
c/ Notifying charge amounts under regulations for the applicant to remit to the International Bureau and the International Searching Authority under the PCT;
d/ Examining and processing the application under the PCT;
dd/ Forwarding the application to the International Bureau and the International Searching Authority in case the application satisfies the preliminary requirements on format, charges under national laws are fully and promptly paid, and the subject matter requested for protection shown in the application is not a state secret;
e/ Refraining from performing subsequent jobs in case the subject matter requested for protection shown in the application is a state secret.
2. After a PCT application originating in Vietnam has been forwarded by the state management agency in charge of industrial property rights to the International Bureau, all transactions related to such application shall be carried out by the applicant directly with the International Bureau or the competent authority of the concerned member state of the PCT designated in the application in accordance with the PCT.
Article 21. Processing of PCT national-phase applications
A PCT national-phase application shall be processed as follows:
1. The claim for the priority right in the PCT national-phase application shall be processed in compliance with the PCT and the PCT Implementation Regulation. To enjoy the priority right, the applicant shall:
a/ Reaffirm the claim for the priority right in the declaration form;
b/ Pay the charge for examination of the claim for the priority right;
c/ Submit Vietnamese translations of the documents filed to the International Bureau at the request of the state management agency in charge of industrial property rights and necessary documents specified in Rule 17.1(a) of the PCT Implementation Regulation.
2. Applicants may modify or add documents in their applications. The modification or addition of documents in an application must comply with the following provisions:
a/ Articles 28 and 41 of the PCT, Rules 52.1(b) and 78.1(b) of the PCT Implementation Regulation, and Article 115 of the Law on Intellectual Property;
b/ The power of attorney and document on transfer of the filing right in the international phase (if any) shall be submitted within 34 months from the priority date (if the application claim for the priority right) or from the filing date of the international application;
c/ Modified or added documents submitted by the applicant to the state management agency in charge of industrial property rights shall be made in Vietnamese.
3. A PCT national-phase application shall be processed on the first day of the 32nd month from the priority date (if the application claim for the priority right) or from the filing date of the international application. If the applicant requests in writing the early processing of the PCT national-phase application, such application shall be processed before the deadline specified in this Clause in accordance with Article 23.2 of the PCT.
4. PCT national-phase applications must undergo format and content examination according to procedures applicable to invention registration applications filed in the national format and shall be disclosed within 2 months from the date of acceptance of a valid application.
Section 3
HAGUE APPLICATIONS AND PROCESSING THEREOF
Article 22. Hague applications
1. Hague applications include Hague applications designating Vietnam and Hague applications originating in Vietnam.
2. For Hague applications originating in Vietnam, the applicants may file them through the state management agency in charge of industrial property rights or directly to the International Bureau. Any application filed directly to the International Bureau shall be made in a language specified in the Hague Agreement and must satisfy format and content requirements specified in the Hague Agreement.
3. Hague applications filed through the state management agency in charge of industrial property rights shall be made in English, each of which shall be made in 2 copies and must satisfy format and content requirements specified in the Hague Agreement, and the applicants shall pay the international filing fee and charges and fees specified in the Hague Agreement and the charge and fee laws of the designated member states.
Article 23. Processing of Hague applications originating in Vietnam filed through the state management agency in charge of industrial property rights
1. In case a Hague application originating in Vietnam is filed through the state management agency in charge of industrial property rights, such agency shall carry out procedures for:
a/ Collecting the international filing fee;
b/ Notifying the charge amount that the applicant has to pay directly to the International Bureau under the Hague Agreement within 20 days from the date of receipt of the application;
c/ Preliminarily examining the application format within 15 days from the date of receipt of the application;
d/ If the application contains an error, notifying the applicant of such error and fix a time limit of 12 days from the date of notification for the applicant to correct the error;
dd/ Forwarding the application to the International Bureau within 1 month from the date of receipt of the application.
2. The date on which the state management agency in charge of industrial property rights receives a Hague application will be regarded as the filing date of the international registration application for an industrial design in case the International Bureau receives such application within 1 month from the date shown on the application receipt stamp of the state management agency in charge of industrial property rights.
3. After a Hague application originating in Vietnam has been filed to the International Bureau, all transactions related to such application shall be conducted by the applicant directly with the International Bureau or the competent authority of the concerned member state of the Hague Agreement designated in the application under the Hague Agreement.
Article 24. Processing of Hague applications designating Vietnam
After receiving a notice from the International Bureau, the state management agency in charge of industrial property rights shall process a Hague application designating Vietnam as follows:
1. To examine contents of the application like an industrial design registration application filed in the national format, except the cases specified in Clauses 2, 3, 4, 5, 6, 7 and 9 of this Article. Within 6 months after the International Bureau issues the notice, to conclude on the protectability of the industrial design shown in the application.
2. In case the industrial design shown in the application satisfies the protection conditions specified by Vietnam’s law and the application contains no error, the state management agency in charge of industrial property rights shall perform the following jobs:
a/ Before the 6-month time limit specified in Clause 1 of this Article expires, to issue a decision on acceptance of the protection of the internationally registered industrial design shown in the application, record relevant information in the National Register of Industrial Property (the Part on internationally registered industrial designs) and send to the International Bureau a statement on acceptance of the protection of the internationally registered industrial design, made according to the form provided by the International Bureau;
b/ To disclose such decision on the Official Gazette of Industrial Property within 2 months after it is issued.
3. In case the industrial design fails to satisfy the protection conditions or the application contains errors (lack of certain photos/drawings, making the set of photos/drawings unable to fully show designing features of the industrial design or the international registration fails to comply with Vietnam’s statements or there is an information item that needs to be verified, etc.), before the 6-month time limit specified in Clause 1 of this Article expires, to issue a notice of refusal made according to the form provided by the International Bureau, clearly stating contents subject to, and reason for, the refusal, and send such notice to the International Bureau.
4. In case certain industrial designs fail to satisfy the protection conditions or the application contains errors regarding certain industrial designs (lack of certain photos/drawings, making the set of photos/drawings unable to fully show designing features of the industrial design or the international registration fails to comply with Vietnam’s statements or there is an information item that needs to be verified, etc.), before the 6-month time limit specified in Clause 1 of this Article expires, the state management agency in charge of industrial property rights shall:
a/ Issue a notice of refusal for industrial designs that fail to satisfy the protection conditions or contain errors, made according to the form provided by the International Bureau, clearly stating contents subject to, and reasons for, the refusal, and send such notice to the International Bureau;
b/ Issue a decision on acceptance of the protection of industrial designs that satisfy the protection conditions or contain no errors, record information thereon in the National Register of Industrial Property (the Part on internationally registered industrial designs), and send to the International Bureau a statement on acceptance of the protection of internationally registered industrial designs, made according to the form provided by the International Bureau, clearly indicating industrial designs accepted for protection;
c/ Disclose such decision on the Official Gazette of Industrial Property within 2 months after it is issued.
5. Within 3 months after the state management agency in charge of industrial property rights issues a refusal notice under Clauses 3 and Clause 4 of this Article, the applicant may correct errors or object to the refusal of the state management agency in charge of industrial property rights according to procedures applicable to industrial design registration applications filed in the national format, including also regulations on application filing methods.
In case a Hague application is expected to be rejected due to failure to satisfy the requirement on uniformity of applications specified in Article 101 of the Law on Intellectual Property, the applicant may remedy such failure by requesting splitting of one or several industrial design(s) in the above internationally registered application into one or more than one new application. The state management agency in charge of industrial property rights shall carry out the application splitting and issue decisions on, and notices of, new applications independently from the initial application.
6. In case the applicant makes satisfactory remediation of errors and/or grounded objections, within the 3-month time limit specified in Clause 5 of this Article, the state management agency in charge of industrial property rights shall:
a/ Issue a decision on acceptance of the protection of internationally registered industrial designs, for industrial designs that satisfy the protection conditions, and record information thereon in the National Register of Industrial Property (the Part on internationally registered industrial designs), and send to the International Bureau a statement on post-refusal acceptance of the protection of internationally registered industrial designs, made according to the form provided by the International Bureau, clearly indicating industrial designs accepted for protection;
c/ Disclose such decision on the Official Gazette of Industrial Property within 2 months after it is issued.
7. Upon the expiration of the 3-month time limit specified in Clause 5 of this Article, if the applicant fails to correct errors or unsatisfactorily does so, makes no objection or makes groundless objections regarding industrial designs notified as refused, the state management agency in charge of industrial property rights shall issue a decision on refusal of the protection of internationally registered industrial designs for such industrial designs.
8. Upon the expiration of the 3-month time limit after the International Bureau issues a notice of the Hague application designating Vietnam, if the applicant fails to submit documents to prove the priority right or has submitted such documents which are not accepted by the state management agency in charge of industrial property rights, the application shall be regarded as having no claim for the priority right.
9. Procedures for filing and settling complaints about the decisions specified in Clauses 2, 3, 4, 6 and 7 of this Article are the same as procedures applicable to industrial design registration applications filed in the national format. In case several or all of industrial designs refused under refusal decisions are now accepted for protection as a result of the complaint settlement, the state management agency in charge of industrial property rights shall send to the International Bureau a statement on post-refusal acceptance of the protection according to the form provided by the International Bureau, clearly indicating industrial designs accepted for protection.
10. In case a third party raises an opinion on a Hague application designating Vietnam before the date of issuance of the protection acceptance decision, such opinion shall be regarded as a source of reference for the processing of the Hague application designating Vietnam.
Section 4
MADRID APPLICATIONS AND PROCESSING THEREOF
Article 25. Madrid applications
1. Madrid applications include Madrid applications originating in Vietnam and Madrid applications designating Vietnam.
2. For Madrid applications originating in Vietnam, applicants shall file them through the state management agency in charge of industrial property rights.
3. A Madrid application originating from Vietnam must comprise:
a/ A declaration form of request for the international registration of a mark originating in Vietnam, made in Vietnamese according to Form No. 01 provided in Appendix II to this Decree;
b/ Two MM2 declaration forms, made according to the form provided by the International Bureau, in English or French;
c/ Two specimens of the mark identical to the mark shown in the registration application filed in Vietnam (base application) or the mark registration certificate (base registration);
d/ Two MM18 declaration forms in English (if the application designates the USA);
dd/ A power of attorney in Vietnamese (in case the application is filed through a representative);
e/ A receipt of the charge paid for performance of procedures for international registration of the mark originating in Vietnam;
g/ Other relevant documents (if necessary).
4. Madrid applications originating in Vietnam must satisfy format and content requirements under regulations. Applicants shall fully, accurately and properly fill information in declaration forms which is consistent with information contained in base applications or base registrations.
Article 26. Processing of Madrid applications originating in Vietnam and relevant requests
1. After receiving a Madrid application originating in Vietnam, the state management agency in charge of industrial property rights shall examine it in order to determine whether it satisfies the requirements specified in Clauses 3 and 4, Article 25 of this Decree and perform the following jobs:
a/ In case the application contains errors, to notify them to the applicant for the latter to correct them. In case the applicant fails to do so within the time limit of 3 months after being notified by the state management agency in charge of industrial property rights, the application shall be regarded as having been withdrawn;
b/ In case the application contains no errors or the applicant has satisfactorily corrected errors, to issue a notice of charges and fees that the applicant has to pay directly to the International Bureau, give the application certification signature and forward the application to the International Bureau within 15 days after issuing the notice;
c/ The date on which the state management agency in charge of industrial property rights receives the Madrid application originating in Vietnam shall be regarded as the date of international registration of such application in case the International Bureau receives such application within 2 months from the date shown on the application receipt stamp of the state management agency in charge of industrial property rights. In case the application has not been finalized for filing to the International Bureau within the above time limit, the date of application receipt by the International Bureau shall be regarded as the date of international registration.
2. After a Madrid application originating in Vietnam is filed to the International Bureau, the state management agency in charge of industrial property rights shall notify such to the applicant and continue to process (in coordination with the applicant if necessary) notices and requests from the International Bureau or perform other jobs related to the application (if any).
3. Requests arising after a Madrid application originating in Vietnam is given an international registration number, such as late designation (expansion of the protection territory), change of the name and/or address of the international registration holder, limitation on the list of goods and services, extension of the international registration validity, designation or change of the representative, recording of international registration transfer, etc., may be carried out directly with the International Bureau or through the state management agency in charge of industrial property rights. For any request filed through the state management agency in charge of industrial property rights, the applicant shall submit:
a/ A declaration form for request, made in Vietnamese according to Form No. 02, provided in Appendix II to this Decree;
b/ Two corresponding declaration forms, made according to the form provided by the International Bureau;
c/ A power of attorney in Vietnamese (in case the request is filed through a representative);
d/ Receipts of charges for examination of modification, transfer, extension, territory expansion, limitation on the list of goods and services, and termination or the validity or invalidation of the internationally registered mark originating from Vietnam, etc.;
dd/ Other relevant documents (if necessary).
4. After receiving a request specified in Clause 3 of this Article, the state management agency in charge of industrial property rights shall perform the following jobs:
a/ In case the request dossier contains errors, to notify them to the applicant for the latter to correct them. In case the applicant fails to do so within the time limit of 3 months after being notified by the state management agency in charge of industrial property rights, the request shall be regarded as having been withdrawn;
b/ In case the request dossier contains no errors or the applicant has satisfactorily corrected errors, to issue a notice of charges that the applicant has to pay directly to the International Bureau, give the request certification signature and forward the request to the International Bureau within 10 days after issuing the notice.
5. In case a request for extension of an international registration is filed through the state management agency in charge of industrial property rights, the applicant shall file such request no sooner than 6 months and no later than 1 month counted to the date of expiration of such international registration. In case of requesting the validity extension of an international registration during the grace period, the request dossier shall be filed to the state management agency in charge of industrial property rights no later than 1 month counted to the date of expiration of the grace period.
Article 27. Processing of Madrid applications designating Vietnam
1. After receiving the International Bureau’s notice of a Madrid application designating Vietnam, the state management agency in charge of industrial property rights shall examine contents of such application like mark registration applications filed in the national format, except the cases specified in Clauses 3 and 10 of this Article. Within 12 months after the International Bureau issues the notice, the state management agency in charge of industrial property rights shall conclude on the protectability of the mark.
2. For a mark that satisfies the protection conditions specified by Vietnam’s laws, the state management agency in charge of industrial property rights shall perform the following jobs:
a/ Before the 12-month time limit specified in Clause 1 of this Article expires, to issue a decision on acceptance of the protection of the internationally registered mark in Vietnam, record information thereon in the National Register of Industrial Property (the Part on internationally registered marks), and send to the International Bureau a protection declaration;
b/ To disclose the decision on the Official Gazette of Industrial Property within 2 months after it is issued.
The protection scope (volume) shall be determined on the basis of contents of the request in the international registration of the mark as recorded by the International Bureau and accepted by the state management agency in charge of industrial property rights.
3. For a mark that has part or the whole of goods or services not satisfying the protection conditions or for a mark that satisfies the protection conditions but its international registration contains errors (lack of regulations on the use of collective marks or certification marks, or lack of photos or drawings showing 3-dimensional illustrations of the mark, etc.), before the 12-month time limit specified in Clause 1 of this Article expires, the state management agency in charge of industrial property rights shall issue a notice of temporary refusal, clearly stating contents of, and reason for, the refusal intent, and send such notice to the International Bureau.
4. Within 3 months after the state management agency in charge of industrial property rights sends a notice of temporary refusal regarding part or the whole of goods or services, the applicant may correct errors or make an objection to the refusal intent of the state management agency in charge of industrial property rights.
The correction of errors or objection to the refusal intent shall be carried out according to procedures applicable to mark registration applications filed in the national format, including also regulations on filing methods.
5. In case the state management agency in charge of industrial property rights intends to refuse part or the whole of the list of goods or services (specified in the notice of temporary refusal), if within the 3-month time limit specified in Clause 4 of this Article, the applicant satisfactorily corrects errors and/or makes a grounded objection to the refusal intent, the state management agency in charge of industrial property rights shall:
a/ Issue a decision on acceptance of the protection of the internationally registered mark in Vietnam with the protection scope (volume) corresponding to the goods or services satisfying the protection conditions; record information thereon in the National Register of Industrial Property (the Part on internationally registered marks), and send to the International Bureau a protection declaration following the notice of temporary refusal;
b/ Disclose the decision on the Official Gazette of Industrial Property within 2 months after it is issued.
6. In case the state management agency in charge of industrial property rights intends to refuse part of the list of goods or services (specified in the notice of temporary refusal), if upon the expiration of the 3-month time limit specified in Clause 4 of this Article, the applicant fails to correct errors or unsatisfactorily does so or makes no objection or makes a groundless objection to the refusal intent, the state management agency in charge of industrial property rights shall apply the procedures specified in Clause 5 of this Article exclusively for goods or services satisfying the protection conditions (those not stated in the notice of temporary refusal).
7. In case the state management agency in charge of industrial property rights intends to refuse the whole list of goods or services (specified in the notice of temporary refusal), if upon the expiration of the 3-month time limit specified in Clause 4 of this Article, the applicant fails to correct errors or unsatisfactorily does so or makes no objection or a groundless objection to the refusal intent, the state management agency in charge of industrial property rights shall issue a decision on refusal to accept the protection of the internationally registered mark in Vietnam and send to the International Bureau a notice confirming the refusal of the whole list of goods or services.
8. Procedures for filing and settling complaints about the decisions specified at Point a, Clause 2, and in Clauses 5, 6 and 7, of this Article are the same as procedures applicable to mark registration applications filed in the national format if there are grounds to believe that such decisions are issued in contravention of regulations on contents and issuance procedures. Complaint settlement results shall be notified by the state management agency in charge of industrial property rights to applicants. If part or the whole of the list of goods or services refused under refusal decisions is now accepted for protection or there is a change in exclusion elements (not separately protected) as a result of the complaint settlement, the state management agency in charge of industrial property rights shall send to the International Bureau a subsequent decision that is likely to affect the mark protection, made according to the form provided by the International Bureau, concerning corresponding contents.
9. From the date on which the international registration of a mark is accepted for protection in Vietnam, the state management agency in charge of industrial property rights shall, at the request of the mark owner, issue a certification of the internationally registered mark protected in Vietnam, provided that the requester has paid charges and fees under regulations.
10. From the date on which a Madrid application is disclosed by the International Bureau on the Official Gazette to before the date of issuance of the protection acceptance decision or upon the expiration of the time limit of 12 months after the International Bureau notifies the application designating Vietnam, whichever comes first, if a third party raises an opinion on the Madrid application designating Vietnam, such opinion shall be regarded as a source of reference for the application processing.
Article 28. Conversion of international registrations of marks into applications filed in the national format
1. In case the international registration of a mark in Vietnam of a mark owner being a member of the Madrid Protocol is invalidated under Article 6 of the Madrid Protocol, such owner may file a conversion application to the state management agency in charge of industrial property rights to register protection for such mark with respect to part or the whole of goods or services on the list of goods or services already recorded in the international registration of the mark but invalidated under Article 9quinquies of the Madrid Protocol. The converted mark registration application may be accepted as valid if satisfying the following conditions:
a/ It is filed within 3 months after the invalidated international registration is recorded in the International Register;
b/ It has never been subject to the whole refusal, termination or cancellation in Vietnam;
c/ It is made according to Form No. 03 provided in Appendix II to this Decree (in which the list of goods or services, in Vietnamese, in the converted application must be smaller than or equal to the invalidated list of goods or services in the corresponding international registration);
d/ It satisfies all other requirements on format, for mark registration applications specified by Vietnam’s law;
dd/ The applicant has fully paid charges and fees under regulations applicable to mark registration applications filed in the national format, except the case specified at Point b, Clause 2 of this Article.
The filing date of a converted mark registration application is the date of international registration or the date of late designation (in case of late designation into Vietnam). In case an international registration is eligible for the priority right under a treaty, the converted mark registration application may record the corresponding priority right, unless there is a ground for abrogating such right.
2. The state management agency in charge of industrial property rights shall examine a converted mark registration application under regulations on the conversion conditions specified in Clause 1 of this Article and on the following principles:
a/ Regarding format elements accepted by the International Bureau in the corresponding international registration, the state management agency in charge of industrial property rights will not carry out re-examination, unless the application has errors (lack of regulations on the use of collective marks or certification marks, lack of photos or drawings showing 3-dimensional illustrations of the mark, etc.). The state management agency in charge of industrial property rights shall issue a decision on refusal of the application in case the application fails to satisfy the conditions specified in Clause 1 of this Article.
b/ Regarding a mark registration application converted from an international registration accepted for protection in Vietnam, the state management agency in charge of industrial property rights will not carry out re-examination. In case the application satisfies the conversion conditions specified in Clause 1 of this Article, the state management agency in charge of industrial property rights shall carry out procedures for notifying the intent of grant of the protection title, issuing a decision on issuance of the protection title, recording in the National Register of Industrial Property, disclosing the decision on the Official Gazette of Industrial Property as for applications filed in the national format.
c/ Regarding valid converted mark registration applications not falling into the case specified at Point b of this Clause, the state management agency in charge of industrial property rights shall carry out procedures for accepting valid applications, disclosing applications and examining contents, and carry out subsequent procedures as for mark registration applications filed in the national format.
Section 5
PROTECTION TITLES
Article 29. Modification of information in protection titles, change of information in the National Register of Industrial Property
1. Protection titles must record the information specified in Clause 1, Article 92 of the Law on Intellectual Property and shall be made according to the form provided in Appendix II to this Decree. Protection titles may be granted in electronic form and paper form (in case applicants request protection titles to be granted in paper form). A protection title holder or an organization or individual that is permitted by the State to exercise the right to register a geographical indication may request the state management agency in charge of industrial property rights to record in its/his/her protection title the following changes:
a/ Change in the name or address of the protection title holder; change of the organization managing the geographical indication; name and citizenship of the invention, industrial design or layout design author;
b/ Change of the protection title holder (transfer of ownership due to inheritance, takeover, merger, division, splitting, consolidation, entry into a joint venture or association, or establishment of a new legal person of the same owner, business transformation or under a court ruling or another competent agency’s decision);
c/ Modification of the description of particular characteristics of the product bearing the geographical indication, geographical area corresponding to the geographical indication, regulations on the use of the collective mark, or regulations on the use of the certification mark.
Those requesting the recording of change(s) in information in protection titles shall pay the charge for examination of their requests for modification of protection titles, registration charge and charge for disclosure of decisions on recording of modification of protection titles.
2. Protection title holders and organizations and individuals that are permitted by the State to exercise the right to register geographical indications may request the state management agency in charge of industrial property rights to record the change of industrial property representation organizations of protection title holders in the National Register of Industrial Property. Persons requesting the recording of the change of industrial property representation organizations shall submit protection title holders’ power of attorney and pay the charge for examination of their requests for recording of the change, registration charge and charge for disclosure of decisions on recording of the change under regulations.
3. A protection title holder may request the state management agency in charge of industrial property rights to narrow the scope of protection under Clause 3, Article 97 of the Law on Intellectual Property in the following cases:
a/ It/he/she requests the reduction of one or several goods or service(s) or group(s) of goods or services on the list of goods or services stated in the mark registration certificate or the elimination of small details that are exclusion elements (not subject to separate protection) without affecting the distinctiveness of the mark as specified in the mark registration certificate;
b/ It/he/she requests the reduction of one or several independent or dependent point(s) within the (requested) scope of protection stated in the patent or utility solution patent;
c/ It/he/she requests the elimination of one or several industrial design plan(s), or one or several product(s) in the set of products mentioned in the industrial design patent.
Those requesting the narrowing of the scope of protection shall pay the charge for examination of their requests, registration charge and charge for disclosure of decisions on modification of protection titles.
4. Depending on contents that need to be modified under Clauses 1, 2, and 3 of this Article, a dossier of request for modification must comprise:
a/ A declaration form of request for the modification, made according to Form No. 06 provided in Appendix II of this Decree, clearly stating the request for recording of change(s). One declaration form may be used to request the modification of more than one protection title if they share the same to-be-modified content, provided the requester pays the charge for each protection title under regulations;
b/ The original protection title, in case it is granted in paper form;
c/ A document certifying the change of the name or address (the original or a certified copy); decision on change of the name or address; the business registration certificate recording the change of the name or address; and other legal documents proving the change of the name or address (the original or a certified copy) in case of request for change of the name or address;
d/ Documents proving the ownership transfer under Point b, Clause 1 of this Article (document proving the inheritance, takeover, merger, division, splitting, consolidation, entry into a joint venture or association, or establishment of a new legal person of the same owner, business transformation, or under a court ruling or another competent agency’s decision) in case of requesting the change of the protection title holder;
dd/ Documents on detailed explanation about the modified contents;
e/ Five sets of photos or drawings of the modified industrial design (in case of requesting modification of the industrial design); 2 descriptions of particular characteristics of the product bearing the geographical indication, map of the geographical area corresponding to the modified geographical indication (in case of requesting modification of the geographical indication); 2 copies of the modified regulation on the use of the collective mark or certification mark (in case of requesting modification of the collective mark or certification mark); 5 mark specimens (in case of requesting modification of the mark specimen under Point a, Clause 3 of this Article);
g/ Power of attorney (in case the request is filed through a representative);
h/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
5. A request for protection title modification or recording of change of an industrial property representation organization in the National Register of Industrial Property shall be processed as follows:
a/ Within 2 months after receiving the request, the state management agency in charge of industrial property rights shall consider the request for protection title modification under Points a and b, Clause 1 of this Article. If the request is valid, the state management agency in charge of industrial property rights shall issue a decision on protection title modification, record the modified information in the protection title, and register and disclose such decision on the Official Gazette of Industrial Property within 60 days after it is issued. In case the request contains errors or is invalid, the state management agency in charge of industrial property rights shall issue a notice of the intent of refusal of the modification request, clearly stating the reason, and fixing a time limit of 2 months from the date of notice issuance for the requester to correct the errors or make an objection to the refusal. Upon the expiration of the fixed time limit, if the requester fails to correct the errors or unsatisfactorily does so or makes no objection or makes groundless objections, the state management agency in charge of industrial property rights shall issue a decision on refusal of the request for protection title modification;
b/ For requests for protection title modification specified at Point c, Clause 1, and Clause 3, of this Article, procedures for re-examination of corresponding applications shall be carried out under Article 114 of the Law on Intellectual Property and relevant regulations. The period of re-examination is not included in the time limit for processing requests for protection title modification;
c/ Within 2 months after receiving a request for recording of change of the industrial property representation organization in the National Register of Industrial Property, the state management agency in charge of industrial property rights shall consider the request under Clause 2 of this Article. If the dossier of request is valid, the state management agency in charge of industrial property rights shall issue a decision on recording of change of the industrial property representation organization in the National Register of Industrial Property, and register and disclose such decision on the Official Gazette of Industrial Property within 60 days after it is issued. In case the request contains errors or is invalid, the state management agency in charge of industrial property rights shall issue a notice of intent of refusal of the request, clearly stating the reason, and fix a time limit of 2 months from the date of notice issuance for the requester to correct the errors or make an objection to the refusal. Upon the expiration of the fixed time limit, if the requester fails to correct the errors or unsatisfactorily does so or makes no objection or groundless objections, the state management agency in charge of industrial property rights shall issue a decision on refusal of the recording of change of the industrial property representation organization.
6. If detecting an error in a protection title, the state management agency in charge of industrial property rights shall, on its own will or at the request of the person detecting such error, revoke the protection title and re-grant it with modified information. The protection title holder shall pay the charge for examination of the request for protection title modification under Clause 1, Article 97 of the Law on Intellectual Property and the charge for disclosure of modified information in case the protection title contains errors that have been disclosed in case such errors are made by the protection title holder. If such errors are made by the state management agency in charge of industrial property rights, the protection title holder is not required to pay such charge.
7. The state management agency in charge of industrial property rights shall issue duplicates of a protection title and re-grant a protection title/its duplicates in the following cases:
a/ In case industrial property rights are under joint ownership, the protection title may only be granted to the first person on the list of joint-applicants. Other co-holders may request the state management agency in charge of industrial property rights to grant duplicates of protection titles, provided they pay the charge therefor;
b/ In case the protection title or one of its duplicates is lost, damaged, torn, dirty or faded to the extent that it becomes unusable, or is disassembled without the seal, the industrial property rights holder that has been granted such protection title/duplicate may request the state management agency in charge of industrial property rights to re-grant it, provided it/he/she pays the charge therefor;
c/ A request for grant of a protection title duplicate or re-grant of a protection title/protection title duplicate shall be made in writing, unless it has been shown in the declaration form for registration of the industrial property subject matter. A dossier of request must comprise:
c1/ A declaration form of request for the grant of a protection title duplicate or re-grant of a protection title/protection title duplicate, made according to Form No. 09 provided in Appendix II to this Decree;
c2/ Two mark specimens, 2 sets of photos or 2 sets of drawings of the industrial design identical to the specimens of the mark or set of industrial design photos or drawings shown in the original protection title;
c3/ A power of attorney (in case the request is filed through a representative);
c4/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
d/ A request for grant of a protection title duplicate or re-grant of a protection title/protection title duplicate shall be processed as follows:
d1/ Within 1 month after receiving the request for grant of a protection title duplicate or re-grant of a protection title/protection title duplicate, the state management agency in charge of industrial property rights shall consider it. In case such request satisfies the conditions specified at Points a, b, and c of this Clause, the state management agency in charge of industrial property rights shall issue a decision on grant of a protection title duplicate or re-grant of a protection title/protection title duplicate and record information thereon in the section on registration of the corresponding protection title in the National Register of Industrial Property;
d2/ Contents of the protection title duplicate must fully show information of the relevant protection title and bear the “Duplicate” indication. Contents of the re-granted protection title/protection title duplicate must fully show information of the initially granted protection title/protection title duplicate and bear the “Re-granted” indication. The state management agency in charge of industrial property rights shall issue a decision to disclose information on the re-grant of the protection title/protection title duplicate on the Official Gazette of Industrial Property within 60 days from the date of issuance;
d3/ In case the request for grant of a protection title duplicate or re-grant of a protection title/protection title duplicate fails to comply with Point c of this Clause, the state management agency in charge of industrial property rights shall issue a notice and fix a time limit of 2 months from the date of notice issuance for the requester to correct errors or make an objection. Upon the expiration of the fixed time limit, if the requester fails to correct errors or unsatisfactorily does so or makes no objection or a groundless objection, the state management agency in charge of industrial property rights shall issue a decision on refusal to grant a protection title duplicate or decision on refusal to re-grant a protection title/protection title duplicate, clearly stating the reason.
8. Procedures for grant of duplicates or re-grant of industrial property subject matter licensing contract registration certificates are the same as the procedures specified in Clause 7 of this Article.
Article 30. Maintenance of validity of invention/utility solution protection titles
1. A dossier of request for maintenance of validity of an invention/utility solution protection title must comprise:
a/ A declaration form, made according to Form No. 07 provided in Appendix II to this Decree;
b/ A power of attorney (in case the request is filed through a representative);
c/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
2. A request for maintenance of validity of the protection title and the charge for examination of the request, fee for validity maintenance, charge for use of the protection title, registration charge and information disclosure charge shall be filed/paid to the state management agency in charge of industrial property rights no later 6 months before the date of expiration of the validity duration. Such request may be filed beyond the above time limit, but must be within 6 months from the date of expiration of the previous validity duration of the protection title and the protection title holder shall pay a charge for each late month under regulations on charges and fees.
3. Within 1 month after receiving a dossier of request for maintenance of validity of a protection title and charge and fee amounts specified in Clauses 1 and 2 of this Article, the state management agency in charge of industrial property rights shall check the dossier of request and perform the following jobs:
a/ In case the dossier of request is valid, to issue a notice of maintenance of validity of the protection title, record information thereon in the National Register of Industrial Property, and disclose it on the Official Gazette of Industrial Property within 60 days from the date of notice issuance;
b/ In case the dossier of request contains errors or is invalid, to issue a notice of intent of refusal of the maintenance, clearly stating the reason, and fix a time limit of 2 months from the date of notice issuance for the requester to correct the errors or make an objection to the refusal. Upon the expiration of the fixed time limit, if the requester fails to correct the errors or unsatisfactorily does so or makes no objection or groundless objections, the state management agency in charge of industrial property rights shall issue a decision on refusal to maintain the validity of the protection title.
Article 31. Extension of validity of industrial design patents and mark registration certificates
1. An industrial design patent may be extended for 5 years for no more than 2 consecutive times. In case the protected industrial design has many plans, its patent may be extended for all or some of the plans, including the basic plan. A mark registration certificate may be extended once every 10 years for multiple consecutive times for the whole or part of the list of goods or services.
2. A dossier of request for extension of the validity duration of an industrial design patent or a mark registration certificate must comprise:
a/ A declaration form of request for the validity extension, made according to Form No. 07 provided in Appendix II to this Decree;
b/ The original industrial design patent or mark registration certificate (in case the protection title is granted in paper form and the recording of the validity extension in the protection title is required);
c/ A power of attorney (in case the request is filed through a representative);
d/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
One dossier may be used to request the extension of the validity of one or more than one protection title if such protection titles share the same subject matter and the same holder.
3. A dossier of request for validity extension of a protection title and the charge for examination of the request, charge for protection title validity extension, charge for use of the protection title, registration charge and charge for disclosure of the decision on validity extension of the protection title shall be filed/paid by the industrial design patent or mark registration certificate holder to the state management agency in charge of industrial property rights within 6 months counted to the date of expiration of the industrial design patent or mark registration certificate. A request for extension may be filed beyond the above time limit but shall be filed within 6 months from the date of expiration of the protection title and the protection title holder shall pay a charge for each late month under regulations on charges and fees.
4. Within 1 month after receiving a dossier of request for validity extension of a protection title, the state management agency in charge of industrial property rights shall check the dossier of request and perform the following jobs:
a/ In case the dossier of request is valid, to issue a decision on validity extension of the protection title, record information thereon in the protection title (if so requested), register and disclose information on the decision on validity extension of the industrial design patent or mark registration certificate on the Official Gazette of Industrial Property within 60 days from the date of decision issuance;
b/ To issue a notice of the intent of refusal of validity extension, clearly stating the reason, and fix a time limit of 2 months from the date of notice issuance for the requester to correct errors or make an objection in one of the following cases:
b1/ The dossier of request is invalid or improperly filed;
b2/ The requester is not the concerned industrial design patent or mark registration certificate holder.
Upon the expiration of the fixed time limit, if the requester fails to correct errors or unsatisfactorily does so or makes no objection or groundless objections, the state management agency in charge of industrial property rights shall issue a decision on refusal to extend the validity duration of the industrial design patent or mark registration certificate.
c/ After validity extension procedures are completed, if the industrial design patent or mark registration certificate holder requests the state management agency in charge of industrial property rights to record the validity extension decision in the protection title, the protection title holder shall carry out procedures for modifying the protection title and pay charges and fees under regulations.
Article 32. Termination or invalidation of protection titles
1. Organizations and individuals that request the termination or invalidation of protection titles under Clause 4, Article 95 or Clause 4, Article 96 of the Law on Intellectual Property shall pay the fee for request, charge for examination of requests for termination or invalidation of protection titles, registration charge and charge for disclosure of decisions on termination or invalidation of protection titles.
2. Requests for the termination or invalidation of protection titles must comply with the following provisions:
a/ One application may be filed to request the termination or invalidation of one or more than one protection title for the same reason, provided the requester pays charges and fees for each protection title;
b/ A request for termination or invalidation of a protection title must comprise:
b1/ A declaration form of request for the termination or invalidation of the protection title, made according to Form No. 08 provided in Appendix II to this Decree;
b2/ Evidences (if any);
b3/ A power of attorney (in case the request is filed through a representative);
b4/ Explanations about the reason for filing the request (clearly stating the serial number of the protection title, reason(s), legal grounds, and contents of the request for termination or invalidation of part or the whole of the protection title), and relevant documents;
b5/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
3. A request for the termination or invalidation of a protection title shall be processed as follows:
a/ It shall be processed under Articles 95 and 96, and Clause 3, Article 220, of the Law on Intellectual Property, and this Article. For requests for invalidation of protection titles, the state management agency in charge of industrial property rights shall re-examine relevant contents under Article 114 of the Law on Intellectual Property and relevant regulations;
b/ In case a third party requests the termination or invalidation of the protection title, within 1 month after receiving the request, the state management agency in charge of industrial property rights shall notify in writing the third party’s opinions to the protection title holder and set a time limit of 2 months from the date of notification for the protection title holder to give its/his/her opinions. The state management agency in charge of industrial property rights may organize a direct opinion exchange between the third party and the concerned protection title holder;
c/ After considering opinions of the parties, the state management agency in charge of industrial property rights shall issue a decision on termination or invalidation of part or the whole of the protection title or a notice of refusal to terminate or invalidate part or the whole of the protection title under Clause 5, Article 95 and Clause 5, Article 96 of the Law on Intellectual Property;
The time limit for issuing a decision or notice under this Point is 3 months from the date of expiration of the 2-month time limit specified at Point b of this Clause or from the date of expiration of the 3-month time limit specified at Point a, Clause 4 and Point a, Clause 5 of this Article and the protection title holder raises no opinions or from the date of receipt of protection title holder’s opinions. This time limit may be extended for up to 3 months if the protection title holder’s opinions are different from the requester’s opinions.
In case the protection title holder declares to waive its/his/her industrial property rights under Clause 3, Article 95 of the Law on Intellectual Property, the above time limit will be 15 days from the date of receipt of the request.
The period of performance of other relevant procedures necessary to process the request for termination or invalidation of the protection title shall not be included in the above time limit.
d/ If disagreeing with contents of the state management agency in charge of industrial property rights’ decision on or notice of processing of the request for termination or invalidation of the protection title specified at Point c of this Clause, the requester or the organization or individual specified at Point b of this Clause may file a complaint about such decision or notice in accordance with the law on complaints regarding industrial property procedures;
dd/ Decisions on termination or invalidation of protection titles shall be recorded in the National Register of Industrial Property and disclosed on the Official Gazette of Industrial Property within 60 days from the date of issuance.
4. A request for the termination or invalidation of a mark’s international registration shall be processed as follows:
a/ For a request for the termination or invalidation of a mark’s international registration under the Madrid Agreement or the Madrid Protocol filed by a third party, the state management agency in charge of industrial property rights shall notify contents of the request for the termination or invalidation of the mark’s international registration to the mark owner through the International Bureau, fixing a time limit of 3 months from the date of notification for the mark owner to give opinions;
b/ The mark’s international registration may be terminated or invalidated for part or the whole of the list of goods or services;
c/ In case the state management agency in charge of industrial property rights issues a decision on termination or invalidation of a mark’s international registration for part or the whole of the list of goods or services and such decision is no longer subject to a complaint or an administrative lawsuit, the state management agency in charge of industrial property rights shall issue a notice of termination or invalidation of the mark’s international registration according to the form provided by the International Bureau, clearly indicating the terminated or invalidated list of goods or services, and send it to the International Bureau;
d/ Other relevant regulations on processing of requests for termination or invalidation of mark protection titles based on mark registration applications filed in the national format are applicable to the processing of requests for termination or invalidation of marks’ international registrations.
5. A request for the termination or invalidation of an industrial design’s international registration shall be processed as follows:
a/ For a request for the termination or invalidation of an industrial design’s international registration under the Hague Agreement filed by a third party, the state management agency in charge of industrial property rights shall notify contents of the request to the industrial design owner through the International Bureau, fixing a time limit of 3 months from the date of notification for the industrial design owner to give opinions;
b/ The industrial design’s international registration may be invalidated for several or all of industrial designs included in such registration;
c/ In case the state management agency in charge of industrial property rights issues a decision on invalidation of an international registration for several or all of industrial designs included in such registration and such decision is no longer subject to a complaint or an administrative lawsuit, the state management agency in charge of industrial property rights shall issue a notice of invalidation of the international registration of the industrial design(s) according to the form provided by the International Bureau, clearly indicating the invalidated industrial design(s), and send it to the International Bureau;
d/ Other relevant regulations on processing of requests for termination or invalidation of industrial designs’ protection titles granted on the basis on industrial design registration applications filed in the national format are applicable to requests for termination or invalidation of industrial designs’ international registrations.
Chapter II
HOLDERS, CONTENTS AND LIMITATIONS OF INDUSTRIAL
PROPERTY RIGHTS
PROPERTY RIGHTS
Article 33. Industrial property rights holders
1. Industrial property rights holders include organizations and individuals that own industrial property subject matters specified in Article 121 of the Law on Intellectual Property or organizations and individuals that are assigned industrial property rights by owners of industrial property subject matters.
2. In case the protection title for an invention, an industrial design, a layout design or a mark is granted to more than one organization or individual under Clause 2, Article 86; Clause 5, Article 87; and Clause 3, Article 90, of the Law on Intellectual Property, industrial property rights are jointly owned by those organizations or individuals. Co-owners shall exercise the ownership rights in accordance
with the civil law.
with the civil law.
Article 34. Scope of industrial property rights
1. The scope of industrial property rights for inventions, industrial designs, layout designs, marks and geographical indications shall be determined according to the scope of protection recorded in the National Register of Industrial Property, International Register of Marks or International Register of Industrial Designs or their protection titles, mark international registration certificates or decisions on acceptance of protection of internationally registered industrial designs.
2. The scope of rights to a trade name shall be determined according to the scope of protection of the trade name, covering the trade name, business fields and business territories where the trade name is lawfully used by the subject bearing the trade name. The registration of the name of a business organization or individual in business procedures is not regarded as use of that name but only a condition for the use of such name to be regarded as lawful.
3. The scope of rights to a business secret shall be determined according to the scope of protection of the business secret, covering the collection of information constituting the business secret and arranged in an accurate and complete order to an extent that it is exploitable.
4. Industrial property rights holders may enjoy the rights and shall perform the obligations within the scope of protection under the conditions specified in Articles 132, 133, 133a, 134, 135, 136, 136a and 137 of the Law on Intellectual Property.
Article 35. Rights of authors of inventions, industrial designs and layout designs
1. Authors’ moral rights specified in Clause 2, Article 122 of the Law on Intellectual Property shall be protected indefinitely.
2. The right of authors to receive remunerations specified in Clause 3, Article 122 of the Law on Intellectual Property shall be protected throughout the term of protection of inventions, industrial designs or layout designs.
3. Unless otherwise agreed between the owner and the author, the payment of remuneration shall be made no later than 30 days from the date the owner receives the payment for licensing or no later than 90 days from the last day of the fiscal year in case the remuneration payable to the author is calculated under Point a, Clause 1, Article 135 of the Law on Intellectual Property.
Article 36. Responsibility for state management of signs indicating geographical origin
1. Provincial-level People’s Committees shall assume the prime responsibility for, and coordinate with the Ministry of Agriculture and Rural Development and Ministry of Industry and Trade in, identifying types, characteristics and production processes of specialties bearing geographical indications under the management of ministries, sectors and localities on the basis of local master plans.
2. Provincial-level People’s Committees shall permit the use of geographical names and other signs indicating geographical origins of local specialties for registration of collective marks or certification marks; directly file applications for registration of geographical indications for local specialties or decentralize or authorize district-level People’s Committees or their specialized agencies to do so.
3. The Minister of Science and Technology shall guide criteria for determining geographical names and other signs indicating geographical origins of products.
Article 37. Exercise of ownership right to geographical indications
1. For geographical indications of Vietnam, agencies and organizations having the right to manage geographical indications (below referred to as geographical indication management organizations) specified in Clause 4, Article 121 of the Law on Intellectual Property include:
a/ Provincial-level People’s Committees of localities where exist geographical areas corresponding to such geographical indications, for geographical indications belonging to a locality;
b/ Provincial-level People’s Committees that are authorized representatives of provincial-level Peoples Committees of other localities where exist geographical areas corresponding to geographical indications, for geographical indications belonging to more than one locality;
c/ District-level People’s Committees or specialized agencies of provincial-level People’s Committees that are decentralized or authorized by provincial-level People’s Committees to manage geographical indications;
d/ Agencies and organizations that are empowered by provincial-level People’s Committees to manage geographical indications, provided that such agencies and organizations represent interests of all organizations and individuals empowered to use geographical indications under Clause 4, Article 121 of the Law on Intellectual Property.
2. Agencies and organizations that have the right to manage geographical indications specified at Point d, Clause 1 of this Article may exercise the owner’s rights to geographical indications specified in Clause 2, Article 123, and Article 198, of the Law on Intellectual Property.
3. For foreign geographical indications, owners, organizations permitted to exercise the owner’s rights to geographical indications and geographical indication management organizations shall be identified in accordance with the laws of the countries of origin of these geographical indications.
Article 38. Exercise of the right to manage geographical indications by geographical indication management organizations
1. A geographical indication management organization specified in Clause 1, Article 37 of this Decree shall:
a/ Formulate and promulgate a regulation on management of the geographical indication;
b/ Manage the geographical indication under the regulation it promulgates;
c/ Make and publicize a list of organizations and individuals using the geographical indication based on notices of such organizations and individuals. The list of organizations and individuals using the geographical indication shall be updated upon occurrence of any change;
d/ Implement measures for managing the use of the geographical indication by organizations and individuals producing products bearing the geographical indication in order to ensure that such products meet criteria on specific characteristics, quality and reputation in conformity with descriptions of specific characteristics of products bearing the geographical indication;
dd/ Monitor and implement measures to prevent and prohibit acts of infringing upon rights to the geographical indication; and request competent agencies to handle such acts in accordance with law;
e/ Report to the state management agency in charge of industrial property rights on the management of the geographical indication once every two years.
2. A regulation on management of a geographical indication specified at Point a, Clause 1 of this Article must:
a/ Have the following principal contents:
a1/ Products bearing the geographical indication: product names, product descriptions (specific characteristics and quality of products, production processes, production areas, etc.) corresponding to contents in descriptions of specific characteristics of products;
a2/ Recognition of an organization or individual using the geographical indication: the dossier of request for recognition of an organization or individual using the geographical indication, comprising a request for recognition and documents proving that the organization or individual carries out activities to produce products bearing the geographical indication in the geographical area corresponding to the geographical indication and other documents, when necessary; examination of the dossier and examination and evaluation of the authenticity of documents, including also compliance with descriptions of specific characteristics of products bearing the geographical indication (when necessary) and recording of information of the organization or individual in the list of organizations and individuals using the geographical indication;
a3/ Mechanism for examining and controlling the use of the geographical indication: examination and control contents (geographical origin, specific characteristics and quality of the product, production process, etc.); examination and control plan; examination and control tools and methods; agencies or organizations carrying out the examination and control, etc.;
a4/ Rights and responsibilities of organizations and individuals using the geographical indication: maintenance of specific characteristics, quality and reputation of products bearing the geographical indication; notifying the geographical indication management organization so as to be included in the list of organizations and individuals using the geographical indication before using the geographical indication; reporting to the geographical indication management organization on the use of the geographical indication on an annual basis, etc.;
a5/ Rights and responsibilities of the geographical indication management organization in managing the geographical indication;
a6/ Funds for geographical indication management activities; and,
a7/ Measures for handling violations of the regulation.
b/ Be sent to organizations and individuals producing products bearing the geographical indication before being promulgated.
c/ Not include contents that unreasonably restrict the lawful right to use the geographical indication of organizations and individuals producing products bearing the geographical indication.
Article 39. Confidentiality of agrochemical product testing data
1. Agrochemical product means a chemical product used in the field of agriculture and rural development.
2. Agrochemical product testing data shall be kept confidential if they satisfy the conditions specified in Clause 1, Article 128 of the Law on Intellectual Property and the applicant, when filing an application for an agrochemical product circulation license, also files a request for confidentiality.
3. The agency competent to grant agrochemical product circulation licenses shall take measures for ensuring confidentiality of testing data specified in Clause 2 of this Article.
Article 40. Use of industrial property subject matters
1. Acts of product circulation specified at Point d, Clause 1; Point b, Clause 2; and Point b, Clause 7, Article 124 of the Law on Intellectual Property include acts of selling, displaying for sale and transporting products.
2. The use of a mark sample that is actually different from the protected mark sample under the permission of the mark owner or a person authorized by the mark owner is also regarded as the use of the mark under Clause 5, Article 124 of the Law on Intellectual Property, provided the difference is insignificant and does not change the distinguishability of the mark.
Article 41. Use of inventions in the name of the State
1. The use of inventions in the name of the State to serve public and non-commercial interests, national defense and security, disease prevention, medical treatment or nutrition care for the people or to meet other urgent social needs under Clause 1, Article 133 of the Law on Intellectual Property shall be carried out by ministries and ministerial-level agencies or other organizations and individuals designated by ministries and ministerial-level agencies on the basis of issuing decisions on mandatory licensing of inventions under Point a, Clause 1, Article 145 and paragraph 2, Clause 1, Article 147 of the Law on Intellectual Property. In case imported products or products manufactured by invention licensees have satisfied requirements for national defense and security, disease prevention, medical treatment, and nutrition care for the people or met other urgent social needs, the holders of the exclusive right to use the inventions shall be considered having fulfilled the obligation to use inventions specified in Article 136 of the Law on Intellectual Property.
2. Procedures for issuing decisions on mandatory licensing of inventions in case of using inventions in the name of the State must comply with Articles 55 and 56 of this Decree.
Article 42. Payment of compensations to invention owners for delay in grant of pharmaceutical circulation licenses
1. In case the performance of procedures for registration of the initial circulation of a pharmaceutical is delayed under Article 131a of the Law on Intellectual Property, after such pharmaceutical is licensed for circulation, within 2 months after the applicant files a written request, made according to Form No. 02 provided in Appendix I to this Decree, to the agency competent to grant pharmaceutical circulation licenses, the latter shall give a certification of delayed performance of procedures for pharmaceutical circulation registration, clearly stating the delay period.
2. In case a patent holder files a written request, made according to Form No. 03 provided in Appendix I to this Decree, enclosed with a written certification of the agency competent to grant pharmaceutical circulation licenses of delayed performance of circulation registration procedures for pharmaceuticals produced under the patent under Clause 1 of this Article, made by the agency competent to grant pharmaceutical circulation licenses, the state management agency in charge of industrial property rights shall notify the patent holder of the plan on compensation payment and:
a/ Refrain from collecting the charge for use of the patent for the period of delayed performance of circulation registration procedures of pharmaceuticals produced under the patent in the course of processing the request for validity maintenance;
b/ In case the charge for use of the patent for the delay period has been paid, deduct the paid charge amount in the course of processing of the request for maintenance of validity of the patent for the next period;
c/ In case the patent holder discontinues the patent validity maintenance or the patent has expired, refund the charge for use of the patent to the patent holder within 3 months after receiving a complete dossier of request under regulations.
3. For pharmaceuticals produced under different patents, charges for use of all relevant patents are exempt.
Chapter III
INVENTIONS, INDUSTRIAL DESIGNS AND LAYOUT DESIGNS BEING OUTCOMES OF STATE BUDGET-FUNDED SCIENCE AND TECHNOLOGY TASKS
Article 43. Right to register inventions, industrial designs and layout designs being outcomes of state budget-funded science and technology tasks
1. Automatic assignment of the right to register inventions, industrial designs and layout designs being outcomes of state budget-funded science and technology tasks specified in Clauses 1 and 2, Article 86a of the Law on Intellectual Property means that the organizations in charge of such tasks have the right to register inventions, industrial designs and layout designs provided such subject matters are created in the course of performing such tasks without having to carry out procedures for assignment of the registration right from the state owner’s representative.
2. The right to register an invention, an industrial design or a layout design being the outcome of a science and technology task funded by the state budget as part of various funding sources specified in Clause 2, and at Point b, Clause 3, Article 86a of the Law on Intellectual Property shall be determined as follows:
a/ The organization in charge of the task has the right to register the invention, industrial design or layout design corresponding to the state budget’s funding amount. For an invention, an industrial design or a layout design being the outcome of a science and technology task in the field of national defense and security, the registration right belongs to the State and shall be exercised by the state owner’s representative under Clause 3 of this Article;
b/ Other organizations and individuals shall have part of the right to register the invention, industrial design or layout design in proportion to their contributed capital amounts.
3. The state owner’s representative specified at Point c, Clause 3, Article 86a of the Law on Intellectual Property is:
a/ The Minister of Science and Technology, for national-level science and technology tasks, except the national-level science and technology tasks specified at Point b of this Clause;
b/ Ministers, heads of ministerial-level agencies, government-attached agencies or other central agencies, and chairpersons of provincial-level People’s Committees, for national-level science and technology tasks they are assigned to manage and science and technology tasks they approve;
c/ Heads of agencies and organizations, for science and technology tasks they approve.
Article 44. Obligation to notify and register inventions, industrial designs and layout designs being outcomes of state budget-funded science and technology tasks
1. The date of creation of an invention, an industrial design or a layout design specified in Clause 1, Article 136a of the Law on Intellectual Property is the date the organization in charge of the science and technology task receives the author’s written report on, or knows about, the creation of such invention, industrial design or layout design under such task, whichever comes first.
2. Within 1 month from the date of creation of an invention, an industrial design or a layout design specified in Clause 1 of this Article, the organization in charge of the science and technology task shall send a notice to the state owner’s representative, clearly stating information on the invention, industrial design or layout design, the need to register the invention, industrial design or layout design, and countries to which it intends to file the registration application (if any). In case such organization fails to carry out procedures for establishing the rights to the above subject matters, it shall notify such in writing to the state owner’s representative within 10 days before the expiration of the time limit specified in Clause 2, Article 136a of the Law on Intellectual Property.
3. The author of an invention, an industrial design or a layout design and in-charge organization are obliged to ensure confidentiality of information on the invention, industrial design or layout design until the invention, industrial design or layout design registration application is filed or the state owner’s representative discloses contents of the invention, industrial design or layout design under Clause 2, Article 133a of the Law on Intellectual Property.
4. Applications for registration of inventions, industrial designs and layout designs being outcomes of state budget-funded science and technology tasks may only be transferred to organizations that are established in accordance with Vietnam’s law and individuals who are Vietnamese citizens permanently residing in Vietnam. Organizations and individuals being invention, industrial design and layout design registration application transferees shall perform the relevant obligations of the in-charge organizations in accordance with the Law on Intellectual Property and this Decree.
5. In the course of carrying out procedures for establishing industrial property rights in accordance with the intellectual property law for an invention, an industrial design or a layout design being the outcome of a state budget-funded science and technology task, the in-charge organization has the following obligations:
a/ To notify in writing the agency managing the science and technology task of results of the processing of the invention, industrial design or layout design registration application within 7 working days after the state management agency in charge of industrial property rights issues a decision on, or notice of, the application processing results;
b/ Within 7 working days from the expiration of the time limit specified in Clauses 1 and 2, Article 113 of the Law on Intellectual Property, to notify in writing the agency managing the science and technology task of the fact that the registration application is regarded as having been withdrawn under Clause 3, Article 113 of the Law on Intellectual Property and clearly state the reason.
c/ To notify the agency managing the science and technology task for the latter to carry out procedures for assignment of the right to register the invention, industrial design or layout design being the outcome of the state budget-funded science and technology task to other organizations and individuals under Article 45 of this Decree in the following cases:
c1/ The invention, industrial design or layout design registration application is refused to be accepted as valid, except where the application is refused to be accepted as valid because the subject matter stated therein is ineligible for protection as an invention, an industrial design or a layout design under Articles 59, 64 and 69 of the Law on Intellectual Property;
c2/ The invention, industrial design or layout design registration application is withdrawn before it is published under regulations.
Article 45. Assignment of the right to register inventions, industrial designs and layout designs being outcomes of state budget-funded science and technology tasks to other organizations and individuals
1. The state owner’s representative shall assign the agency managing the science and technology task to disclose on its website or portal the intended assignment of the right to register an invention, an industrial design or a layout design for organizations and individuals that have demand therefor to submit dossiers of request for such assignment in the cases specified in Clause 1, Article 133a of the Law on Intellectual Property and the cases specified at Point c, Clause 5, Article 44 of this Decree.
2. Information to be disclosed under Clause 1 of this Article includes the name and technical field of the invention, industrial design or layout design; method of assignment of the registration right; and information access method.
3. Organizations and individuals that wish to be assigned the registration right mentioned in Clause 1 of this Article can access detailed information on inventions, industrial designs and layout designs specified in Clause 2 of this Article, provided that they send written requests for assignment to the agencies managing science and technology tasks and commit to ensuring confidentiality and not using such information for commercial purposes.
4. Organizations and individuals that wish to be assigned the registration right mentioned in Clause 1 of this Article shall file requests for assignment of the right to register inventions, industrial designs and layout designs, made according to Form No. 01 provided to Appendix III to this Decree, to the agencies managing science and technology tasks.
5. The agency managing a science and technology task shall process a request for assignment of the right to register an invention, an industrial design or a layout design being the outcome of such task under the following provisions:
a/ It shall check the validity of the request. In case the request is invalid, within 5 working days after receiving it, the agency managing the science and technology task shall notify such in writing to the requester and set a time limit of 10 days from the date of notification for the latter to correct errors;
b/ Within 7 working days from the date of expiration of the time limit for making a public notification specified in Clause 1, Article 133a of the Law on Intellectual Property, the agency managing the science and technology task shall report the case to the state owner’s representative for the latter to issue a decision on assignment of the right to register the invention, industrial design or layout design to the qualified organization or individual;
c/ In case more than one organization or individual request the assignment of the right to register the invention, industrial design or layout design and all of them have filed valid requests, the state owner’s representative shall notify the intent to assign the right to register the invention, industrial design or layout design to these organizations and individuals for the latter to jointly exercise the registration right and undersign the invention, industrial design or layout design registration application, and set a time limit of 7 working days from the date of notification for the organizations and individuals to give their opinions on notified contents. Past the above time limit, if an organization or individual applying for assignment of the registration right replies in writing that it/he/she does not agree to jointly undersign the registration application or fails to make a written reply, within 5 working days after the expiration of the above time limit, the state owner’s representative shall issue a decision to assign the right to register the invention, industrial design or layout design to organizations and individuals that have notified in writing their consent to the intended assignment of the registration right.
6. An organization or individual assigned the right to register an invention, an industrial design or a layout design shall file an application for registration for establishment of rights to such invention, industrial design or layout design within 6 months after receiving the assignment decision specified in Clause 5 of this Article and perform other relevant obligations of the in-charge organization in accordance with the Law on Intellectual Property and this Decree.
7. Past the time limit of 90 days from the date a notice is published under Clause 1 of this Article, if the right to register an invention, an industrial design or a layout design being the outcome of a science and technology task is not assigned to any organization or individual, the state owner’s representative shall assign the agency managing the science and technology task to publicize on its website or portal contents of such invention, industrial design or layout design for exploitation or use by organizations and individuals in accordance with law.
Article 46. Exercise of industrial property rights and protection measures for inventions, industrial designs and layout designs being outcomes of state budget-funded science and technology tasks
1. In order to ensure the exercise of industrial property rights and efficient exploitation of inventions, industrial designs and layout designs being outcomes of state budget-funded science and technology tasks, in-charge organizations that are granted protection titles for these subject matters shall:
a/ Apply appropriate measures to protect industrial property rights of these subject matters, including the performance of necessary procedures to maintain and extend the validity of protection titles of these subject matters;
b/ Determine and implement appropriate commercialization measures.
2. Every year, an in-charge organization that is granted a protection title for an invention, an industrial design or a layout design being the outcome of a state budget-funded science and technology task shall submit to the agency managing the science and technology task a report with the following contents:
a/ The commercialization and evaluation of efficiency of the utilization of the invention, industrial design or layout design;
b/ The total amount of money and profit that the in-charge organization has received from the use and licensing of, assignment of rights to, and contribution of capital with, the invention, industrial design or layout design; payment of remuneration to the author; and the profit distribution, accompanied with an independently audited financial statement of the in-charge organization;
c/ Rights protection measures that are being implemented.
Article 47. Procedures for permitting other organizations and individuals to use inventions, industrial designs and layout designs being outcomes of state budget-funded science and technology tasks
1. The reasonable time limit specified at Point a, Clause 3, Article 133a of the Law on Intellectual Property shall be determined as 4 years from the date of filing an invention registration application; 3 years from the date of grant of a patent; 3 years from the date of filing an industrial design/layout design registration application; or 2 years from the date of grant of an industrial design patent or a semi-conductor integrated circuit layout design registration certificate, whichever comes later.
2. The agency competent to approve the state budget-funded science and technology task in accordance with the law on science and technology shall issue on its own will or at the request of other organizations and individuals a decision permitting the use of the invention, industrial design or layout design being the outcome of such task upon the occurrence of the cases specified in Clause 3, Article 133a of the Law on Intellectual Property after consulting the Ministry of Science and Technology.
3. A decision specified in Clause 2 of this Article must clearly state the scope and conditions for use of the invention, industrial design or layout design by other organizations and individuals, including:
a/ Whether the right to use the invention, industrial design or layout design is exclusive or non-exclusive;
b/ The exercise of the right to use the invention, industrial design or layout design is limited within a scope and a period that are sufficient for achievement of objectives of the use permission;
c/ Organizations and individuals permitted to use the invention, industrial design or layout design by competent agencies may not transfer such right to others.
The decision on permission for use of the invention, industrial design or and layout design shall be sent by the agency competent to approve the science and technology task to persons permitted to use the invention, industrial design or layout design, the exclusive use right holder and the state management agency in charge of industrial property rights.
4. Organizations and individuals that request permission for use of an invention, industrial design or layout design being the outcome of a state budget-funded science and technology task under Clause 2 of this Article shall file dossiers of request to the agency competent to approve the science and technology task. Such a dossier must comprise:
a/ A written request for permission for use of the invention, industrial design or layout design being the outcome of a state budget-funded science and technology task, made according to Form No. 02 provided in Appendix III to the Decree;
b/ Documents proving that the request for permission for use of the invention, industrial design or layout design is well-grounded.
5. The agency competent to approve the science and technology task shall process a dossier as follows:
a/ Examining the validity of the dossier: In case the dossier is invalid, within 5 working days after receiving it, the agency competent to approve the science and technology task shall notify thereof in writing to the organization or individual and set a time limit of 20 days from the date of notification for the latter to correct errors.
b/ Within 7 working days after receiving a valid dossier, the agency competent to approve the science and technology task shall notify the request for permission for use of the invention, industrial design or layout design to the exclusive use right holder and set a time limit of 1 month from the date of notification for the latter to make a written reply, except cases in which the request falls into the case specified at Point b, Clause 3, Article 133a of the Law on Intellectual Property in which the agency competent to approve the science and technology tasks is not required to notify the exclusive use right holder.
c/ Past the above time limit, the agency competent to approve the science and technology task shall process the request for permission for use of the invention, industrial design or layout design and opinions of the exclusive use right holder on the basis of the dossier and opinions of related parties. In case the request for permission for use of the invention, industrial design or layout design is not well grounded under Clause 3, Article 133a of the Law on Intellectual Property, the agency competent to approve the science and technology task shall issue a refusal decision and clearly state the reason. If deeming that the request for permission for use of the invention, industrial design or layout design is well grounded, the agency competent to approve the science and technology task shall issue a decision permitting the use.
6. The exclusive use right holder may request the termination of permission for use of the invention, industrial design or layout design if the grounds for the permission specified in Clause 3, Article 133a of the Law on Intellectual Property no longer exist and are unlikely to recur. The request for termination of the permission for use of the invention, industrial design or layout design shall be made in writing and sent to the agency competent to approve the science and technology task, accompanied by supporting documents.
Chapter IV
CLASSIFIED INVENTIONS
Article 48. Classified invention registration applications
1. Classified invention registration applications shall be filed in paper form to the state management agency in charge of industrial property rights under Clauses 1 and 2, Article 89 of the Law on Intellectual Property.
2. A classified invention registration application must comprise:
a/ The documents specified in Article 100 of the Law on Intellectual Property, affixed with the stamp “Classified” in accordance with the law on protection of state secrets (except charge and fee receipts);
b/ A document certifying that the subject matter stated in the application is a state secret as defined by the law on protection of state secrets.
3. A classified invention registration application shall be accepted if it contains the information and documents specified in Clause 1, Article 108 of the Law on Intellectual Property and the documents specified at Point b, Clause 2 of this Article.
Article 49. Procedures related to classified inventions
1. Procedures for processing classified invention registration applications and grant, maintenance, modification, termination and invalidation of protection titles of classified inventions must comply with relevant provisions of the Law on Intellectual Property and guiding documents for invention registration applications, except the cases specified in Clauses 2, 3, 4 and 5 of this Article.
2. The time limit for substantive examination of a classified invention registration application is 18 months from the date such application is accepted as valid in case the request for substantive examination is filed before the application is accepted as valid or from the date the request for substantive examination is received in case such request is filed after the application is accepted as valid.
3. Documents stating third parties’ opinions or objections shall be considered a source of information for the processing of a classified invention registration application. In case it is impossible to determine whether information or the disclosure of information in the documents specified in this Clause conform to regulations on protection of state secrets, the state management agency in charge of industrial property rights shall coordinate with the Ministry of Public Security in determining the compliance of the disclosure of information in the documents specified in this Clause with the law on protection of state secrets.
4. The complaint-filing procedures specified in Article 119a of the Law on Intellectual Property do not apply to decisions and notices on classified invention registration applications and other types of applications related to classified inventions.
5. Classified invention registration applications and protection titles of classified inventions may not be published on the Official Gazette of Industrial Property.
Article 50. Processing of classified invention registration applications and classified invention protection titles that are declassified
1. Classified invention registration applications and classified invention protection titles shall be declassified under Article 22 of the Law on Protection of State Secrets.
2. In case there are clear grounds to believe that the invention in a classified invention registration application or invention protected under a classified invention protection title does not comply with Clause 1, Article 2 of the Law on Protection of State Secrets, the state management agency in charge of industrial property rights shall issue a notice requesting the applicant to re-determine whether the invention is a state secret as specified by the law on protection of state secrets and set a time limit of 3 months from the date of notification for the applicant to make a reply.
3. For cases of declassification specified in Clause 1 of this Article, agencies and organizations competent to carry out the declassification specified by the law on protection of state secrets shall notify the declassification to the state management agency in charge of industrial property rights, applicants and exclusive use rights holders.
4. For an invention registration application declassified under Clause 1 of this Article or determined by the applicant as not being a state secret under Clause 2 of this Article, the filing date is the date of filing the classified invention registration application and such application shall be further processed in accordance with the Law on Intellectual Property regarding invention registration applications.
5. For an invention protection title declassified under Clause 1 of this Article or determined by the applicant as not being a state secret under Clause 2 of this Article, the date of grant is the date of grant of the classified invention protection title and related procedures shall be carried out in accordance with the Law on Intellectual Property regarding invention protection titles.
6. Classified invention registration applications and classified invention patents/classified utility solution patents that have been declassified shall be published on the Official Gazette of Industrial Property within 3 months from the date of declassification.
Article 51. Overseas registration of classified inventions
The filing of classified invention registration applications overseas shall be carried out in accordance with the law on protection of state secrets.
Article 52. Management of the use of classified inventions
The use of classified inventions protected under Article 123 of the Law on Intellectual Property must comply with the law on protection of state secrets.
Chapter V
TRANSFER OF INDUSTRIAL PROPERTY RIGHTS
Article 53. Compensations for the licensing of inventions under mandatory licensing decisions
1. Compensation for the licensing of an invention under a mandatory licensing decision specified in Point d, Clause 1, Article 146 of the Law on Intellectual Property shall be determined according to the economic value of the to-be-licensed use right, with the following factors taken into consideration:
a/ The contractual price of the invention licensing;
b/ Funds for the invention creation, including funds allocated from the state budget (if any);
c/ Profits gained from the invention use;
d/ The remaining validity period of the protection title;
dd/ Necessity of the invention licensing;
e/ The licensing scope and duration;
g/ Other factors that are decisive to the economic value of the licensed use right.
2. Compensation for the licensing of an invention under a mandatory licensing decision in case the licensee and the holder of the exclusive right to use the invention cannot reach an agreement must not exceed 5% of the net selling price of the product manufactured under the licensed invention, provided that the principles specified in Clause 1 of this Article are adhered to.
3. If deeming it necessary, the agency competent to issue mandatory invention licensing decisions may establish a council to determine compensation amounts in accordance with law.
Article 54. Right to request issuance of mandatory invention licensing decisions
Organizations and individuals that have the ability, duty or demand to use an invention as specified at Points a, b, c and dd, or are restricted from competition as specified at Point d, Clause 1, Article 145 of the Law on Intellectual Property may request the competent person specified in Clause 1, Article 147 of the Law on Intellectual Property to issue a mandatory invention licensing decision under Articles 55 and 56 of this Decree.
Article 55. Dossiers of request for issuance of mandatory invention licensing decisions
1. A dossier of request for issuance of a mandatory invention licensing decision must comprise:
a/ A declaration form requesting mandatory licensing of the invention, made according to Form No. 04 provided in Appendix I of this Decree;
b/ Documents proving that the request for issuance of a mandatory invention licensing decision is well grounded in accordance with law as specified in Clauses 2, 3, 4, 5, 6 and 7 of this Article;
c/ A power of attorney (in case the request is filed through a representative);
d/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the agency competent to carry out the procedures).
2. In case of requesting the issuance of a mandatory invention licensing decision on the grounds specified at Point a, Clause 1, Article 145 of the Law on Intellectual Property, a dossier must also comprise documents proving that at the time of request filing, there is an actual need to use the invention for public non-commercial purposes, national defense or security or disease prevention, medical treatment, nutrition care for the people or to meet other urgent social needs, but the exclusive use right holder fails to use the invention and such failure affects the achievement
of those purposes.
of those purposes.
3. In case of requesting the issuance of a mandatory invention licensing decision on the grounds specified at Point a, Clause 1, Article 145 of the Law on Intellectual Property, a dossier must also comprise documents proving that the exclusive use right holder fails to fulfill the obligation to use the invention specified in Clause 1, Article 136 and Clause 5, Article 142 of the Law on Intellectual Property and by the time of dossier filing, the time limits of 4 years from the date of filing the invention registration application and 3 years from the date the invention patent is granted have expired.
4. In case of requesting the issuance of a mandatory invention licensing decision on the grounds specified at Point c, Clause 1, Article 145 of the Law on Intellectual Property, a dossier must also comprise documents proving that the person that has the need to use the invention fails to reach an agreement with the exclusive use right holder on the conclusion of a patent use contract though having made efforts within a reasonable period of time to negotiate by offering reasonable prices and commercial conditions. Such documents must clearly state the need to use the invention, period of negotiation and specific prices and commercial conditions proposed by the person wishing to use the invention.
5. In case of requesting the issuance of a mandatory invention licensing decision on the grounds specified at Point d, Clause 1, Article 145 of the Law on Intellectual Property, a dossier must also comprise documents proving that the exclusive use right holder has committed an act that is regarded as prohibited competition restriction in accordance with the competition law.
6. In case of requesting the issuance of a mandatory invention licensing in the field of semi-conductor technology on the grounds specified at Points a and d, Clause 1, Article 145 and Point b, Clause 1, Article 146 of the Law on Intellectual Property, a dossier must also comprise documents proving that the use of the invention is for public non-commercial purposes only or documents proving that the exclusive use right holder has committed an act that is regarded as prohibited competition restriction in accordance with the competition law.
7. In case of requesting the issuance of a mandatory invention licensing decision on the grounds specified at Point dd, Clause 1, Article 145 of the Law on Intellectual Property, a dossier must also comprise documents proving that the use of the invention aims to meet the demand for pharmaceuticals for disease prevention and treatment of other countries that are eligible for import under Article 31bis of the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Article 56. Procedures for processing dossiers requesting issuance of mandatory invention licensing decisions
1. Dossiers requesting the issuance of mandatory invention licensing decisions shall be filed under the following provisions:
a/ Dossiers falling into the cases specified in Points b, c and d, Clause 1, Article 145 of the Law on Intellectual Property shall be filed to the Ministry of Science and Technology;
b/ Dossiers falling into the cases specified in Points a and dd, Clause 1, Article 145 of the Law on Intellectual Property shall be filed to line ministries and ministerial-level agencies managing fields relevant to inventions;
c/ The Ministry of Science and Technology, ministries and ministerial-level agencies shall designate an agency to receive and examine dossiers in the cases specified in this Clause (below referred to as dossier examination agency).
2. A dossier of request for issuance of a mandatory invention licensing decision shall be examined as follows:
Within 2 months after receiving the dossier, the dossier examination agency shall consider the dossier as follows:
a/ If the dossier is valid, within 20 days after receiving it, the dossier examination agency shall issue a notice of the request for mandatory invention licensing to the exclusive use right holder and request the latter to give its/his/her written opinions within 1 month from the date of notice issuance; request relevant parties to re-negotiate their disagreements so as to conclude an invention licensing agreement, if deeming it necessary. In case no agreement is reached between the parties and if deeming that the exclusive use right holder’s refusal to conclude an invention licensing agreement is unreasonable, such agency shall report dossier consideration results to the Minister of Science and Technology or related minister or ministerial-level agency head and request the latter to issue a mandatory invention licensing decision.
If the request falls into the case specified in Point a, Clause 1, Article 145 of the Law on Intellectual Property and the use of the invention is for public non-commercial purposes, the related ministry or ministerial-level agency may issue a mandatory invention licensing decision without having to request the exclusive use right holder to give its/his/her opinions and the parties to negotiate.
b/ In case the request is not well grounded under Article 145 of the Law on Intellectual Property, the dossier examination agency shall report dossier consideration results to the Minister of Science and Technology or the minister or ministerial-level agency head and request the latter to issue a notice of intended refusal of the request, clearly stating the reason, and setting a time limit of 1 month from the date of notice issuance for the dossier submitter to give its/his/her opinions on the intended refusal.
The period of time for the dossier submitter to correct errors of the dossier or make objections is not included in the time limit for dossier examination.
c/ In case the dossier falls into the cases specified in Points a and dd, Clause 1, Article 145 of the Law on Intellectual Property, the dossier examination agency of the line ministry or ministerial-level agency shall send a copy of the dossier to the Ministry of Science and Technology (through the dossier examination agency of the Ministry of Science and Technology) to seek the latter’s opinions before submitting the dossier to the minister or ministerial-level agency head for decision under Points a and b of this Clause. Within 20 days after receiving the dossier, the dossier examination agency of the Ministry of Science and Technology shall consider the dossier and report dossier consideration results to the Minister of Science and Technology for the latter to send a written request to the line minister or ministerial-level agency head for issuance of a mandatory invention licensing decision or a notice of refusal.
3. Within 20 days after receiving a report on dossier consideration results from the dossier examination agency of the Ministry of Science and Technology, the Minister of Science and Technology shall consider and issue a mandatory invention licensing decision or send to the dossier submitter a notice of refusal of the request for compulsory invention licensing, clearly stating the reason.
Within 20 days after receiving the written request of the Minister of Science and Technology, the line minister or ministerial-level agency head shall consider and issue a mandatory invention licensing decision or send to the dossier submitter a notice of refusal of the request for mandatory invention licensing, clearly stating the reason.
In case of disagreement with the request of the Minister of Science and Technology, the line minister or ministerial-level agency head shall issue a notice of disagreement, clearly stating the reason.
4. The mandatory invention licensing decision shall be sent by the line minister or ministerial-level agency head to the licensee, exclusive use right holder and dossier examination agency of the Ministry of Science and Technology.
The dossier examination agency of the Ministry of Science and Technology shall record the decision in the National Register of Industrial Property within 1 month and publish it in the Official Gazette of Industrial Property within 2 months from the date of issuance.
Article 57. Requests for termination of the right to use inventions under mandatory decisions
1. The termination of the right to use an invention under a mandatory decision shall be decided by a minister, the head of a ministerial-level agency or the person who has issued the mandatory licensing decision.
2. A request for termination of the right to use an invention under a mandatory decision must have the following documents:
a/ A request for termination of the right to use an invention under a mandatory decision;
b/ Documents proving that the grounds leading to the invention licensing under the mandatory decision no longer exist and are unlikely to recur and, at the same time, the termination of the use of the invention use does not cause damage to the invention licensee under the mandatory decision;
c/ A power of attorney (in case the request is filed through a representative);
d/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the dossier examination agency of the Ministry of Science and Technology).
3. Procedures for receiving and handling a request for termination of the right to use an invention under mandatory regulations and issuing a decision on the termination are the same as those for receiving and processing a dossier of request for invention licensing under a mandatory decision specified in Article 55 of this Decree.
Article 58. Dossiers for registration of contracts on transfer of industrial property rights
1. A dossier for registration of a contract on transfer of industrial property rights must comprise:
a/ A declaration form for registration of the contract on transfer of industrial property rights, made according to Form No. 01 provided in Appendix IV to this Decree;
b/ The original or a certified copy of the contract. If the contract is made in a language other than Vietnamese, it shall be accompanied by a Vietnamese translation; for a multiple-page contract, each page must bear signatures of the contracting parties or adjoining pages must have a fan stamp;
c/ The original protection title, in case the protection title is granted in paper form;
d/ A consent of the co-owners to the transfer of industrial property rights, if such corresponding industrial property rights are under joint ownership;
dd/ A power of attorney (in case the request is filed through a representative);
e/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights);
g/ In addition to the above documents, a dossier for registration of a contract on transfer of a collective mark or certification mark must comprise:
g1/ A regulation on the use of the collective mark or regulation on the use of the certification mark, issued by the transferee under Article 105 of the Law on Intellectual Property;
g2/ Documents evidencing the transferee’s right to file an application, for a certification mark or collective mark specified in Clauses 3 and 4, Article 87 of the Law on Intellectual Property.
In this case, the state management agency in charge of industrial property rights shall re-examine the filing right and regulation on the use of the mark. The applicant shall pay the application examination charge in addition to specified charges and fees for a dossier for registration of a contract on transfer of industrial property rights.
2. A dossier for registration of a contract on licensing of the right to use an industrial property subject matter must comprise:
a/ A declaration form for registration of a contract for licensing of the right to use industrial property subject matters, made according to Form No. 02 provided in Appendix IV to this Decree;
b/ Two originals or copies of the contract, enclosed with the original for collation, unless these copies have been certified under regulations. If the contract is made in a language other than Vietnamese, it shall be accompanied by a Vietnamese translation; for a multiple-page contract, each page must bear signatures of the contracting parties or adjoining pages must have a fan stamp;
c/ A consent of the co-owners to the licensing of the right to use industrial property subject matter, if the relevant industrial property rights are under joint ownership;
d/ A power of attorney (in case the request is filed through a representative);
dd/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
3. Each dossier for registration of a contract on transfer of industrial property rights shall be recorded for only one step of transfer. In case an industrial property subject matter undergoes multiple-step transfer, for each step, it is required to submit a separate dossier for registration of a contract for transfer of industrial property
rights.
rights.
Article 59. Procedures for processing dossiers for registration of contracts on transfer of industrial property rights
1. In case a dossier for registration of a contract on transfer of industrial property rights does not contain errors specified in Clause 3 of this Article, the state management agency in charge of industrial property rights shall:
a/ Issue a decision on recording of the transfer of industrial property rights (for contracts on transfer of industrial property rights) and a decision on grant of a certificate of registration of a contract on licensing of an industrial property subject matter (for contracts on licensing of industrial property subject matters);
b/ For a contract on transfer of industrial property rights: Record information on the new owner in the protection title. In case of transfer of part of the list of goods or services bearing a protected mark, grant a mark registration certificate to the transferee and determine limits of the list of goods or services in the original protection title for such transferred part;
c/ For a contract on licensing of industrial property subject matters: Grant a certificate of registration of the contract on licensing of the industrial property subject matter to the applicant; append the registration stamp on 2 copies of the contract and hand over 1 copy to the applicant and retain the other copy;
d/ Record the transfer of industrial property rights in the National Register of Industrial Property;
dd/ To announce the decision on recording of the transfer of industrial property rights and the decision on grant of the certificate of registration of the contract on licensing of industrial property subject matters in the Official Gazette of Industrial Property within 2 months from the date of issuance of such decisions.
2. In case a dossier for registration of a contract on transfer of industrial property rights has errors specified in Clause 3 of this Article, the state management agency in charge of industrial property rights shall:
a/ Issue a notice of intent of refusal of contract registration, clearly stating errors of the dossier, and set a time limit of 2 months from the date of notice signing for the applicant to correct the errors or make an objection about the intent of refusal of contract registration;
b/ To issue a decision on refusal of contract registration if the applicant fails to correct errors or improperly does so, or makes no objections or groundless objections about the intent of refusal of contract registration within the set time limit.
3. A dossier for registration of a contract on transfer of industrial property rights shall be considered containing errors in one of the following cases:
a/ The declaration form is invalid;
b/ The dossier lacks one of the required documents;
c/ The power of attorney is invalid;
d/ The copies of the contract are not validly certified;
dd/ The name and address of the transferor stated in the contract do not match the corresponding information stated in the protection title or the contract, which serve as a ground giving rise to the right to transfer, the power of attorney or the declaration form; or the name and address of the transferee stated in the contract do not match the name and address stated in the power of attorney or the declaration form;
e/ The contract does not fully contain signatures (and seals, if any) of the transferor and the transferee;
g/ The transferor is not the protection title holder;
h/ The concerned industrial property subject matter is no longer within the validity period for protection or involved in a dispute;
i/ The transfer contract lacks one of the required contents specified in Article 140 or Clause 1, Article 144 of the Law on Intellectual Property;
k/ The contract has a content inconsistent with the provisions on conditions restricting the transfer of industrial property rights of Article 139 of the Law on Intellectual Property or contains a term unreasonably restricting the rights of the licensee of the industrial property subject matter provided in Clause 2, Article 144 of the Law on Intellectual Property;
l/ There is a ground to believe that the transfer of industrial property rights infringes upon the industrial property rights of a third party.
4. The time limit for processing a dossier for registration of a contract on transfer of industrial property rights is 2 months. The period for applicants to correct errors of dossiers is not counted into the dossier processing period.
5. After a dossier for registration of a contract on transfer of industrial property rights is filed to the state management agency in charge of industrial property rights, if the parties have a dispute related to the contract, the state management agency in charge of industrial property rights shall suspend considering the dossier until the parties completely settle their dispute and submit documents proving the dispute settlement.
6. Before the state management agency in charge of industrial property rights issues a decision on recording of or refusal to record the registration of a contract on transfer of industrial property rights, if either of the parties wishes to withdraw the registration dossier, it shall obtain consents of both parties to the withdrawal of the submitted dossier, except the case of withdrawal due to the inability to correct errors at the request of the state management agency in charge of industrial property rights.
Article 60. Conditions on restriction of the transfer of rights to marks
1. The transfer of rights to a mark under Clause 4, Article 139 of the Law on Intellectual Property shall be regarded as causing a confusion about characteristics or origin of goods or services bearing the mark in the following cases:
a/ The transferred mark is identical or confusingly similar to another mark currently protected under a mark registration certificate or international registration of a mark owned by the transferor;
b/ Part of the transferred goods or services bearing the mark is similar to the remaining part of goods or services on the list of goods or services owned by the transferor and the use of the mark together with such part of goods or services by the transferee is likely to cause a confusion about the commercial origin of such goods or services (in case the scope of transfer covers part of the list of goods or services);
c/ The transferred mark contains elements that mislead consumers as to the origin, quality, value, etc., of the goods or services subject to the transfer.
2. Rights to collective marks or certification marks may only be transferred to organizations that satisfy the conditions for organizations having the right to register such collective marks or certification marks.
Article 61. Recording of modified contents, extension or premature invalidation of contracts on licensing of industrial property subject matters
1. The modification of contents, extension or premature invalidation of a contract on licensing of a registered industrial property subject matter shall be recorded at the state management agency in charge of industrial property rights under this Article.
2. A dossier of request for recording of modified contents, extension or premature invalidation of a contract is as follows:
a/ A dossier of request for recording of modified contents, extension or premature invalidation of a contract for licensing of an industrial property subject matter shall be made in writing, and must comprise:
a1/ A declaration form for requesting the recording of modified contents, extension or premature invalidation of a contract for licensing of an industrial property subject matter, made according to Form No. 03 provided in Appendix IV to this Decree;
a2/ The original certificate of registration of the contract on licensing of an industrial property subject matter (in case of registration of modification of contents or extension of validity of the contract);
a3/ Documents evidencing the modification of names and addresses of the contracting parties;
a4/ Agreements and documents recording specific terms and clauses of the contract that need to be modified, including the extension or premature invalidation of the contract;
a5/ A power of attorney (in case the request is filed through a representative);
a6/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
b/ A dossier of request for contract extension shall be submitted within 1 month counted to the date of expiration of the contract term stated in the certificate of registration of the contract on licensing of an industrial property subject matter.
3. Within 1 month after receiving a dossier of request for recording of modified contents, extension or premature invalidation of the contract, the state management agency in charge of industrial property rights shall check the dossier as follows:
a/ In case the dossier is valid, the state management agency in charge of industrial property rights shall issue a decision on recording of modified contents, extension or premature invalidation of the contract on licensing of an industrial property subject matter; record modified contents or extension of the contract in the certificate of contract registration; record modified contents, extension or premature invalidation of the contract in the National Register of Industrial Property; announce decisions on recording of modified contents, extension or premature invalidation of the contract in the Official Gazette of Industrial Property within 2 months from the date of issuance of such decisions;
b/ In case the dossier contains errors, the state management agency in charge of industrial property rights shall issue a notice of intended refusal to record modified contents, extension or premature invalidation of the contract on licensing of an industrial property subject matter, clearly stating errors of the dossier, and set a time limit of 2 months from the date of issuance of the notice for the applicant to correct errors or make objections about the intent of refusal of contract registration.
If the applicant fails to correct errors or improperly does so, or makes no objections or groundless objections within the set time limit, the state management agency in charge of industrial property rights shall issue a decision on refusal to record modified contents, extension or premature invalidation of the contract.
Chapter VI
INDUSTRIAL PROPERTY REPRESENTATION
Article 62. Training program on the industrial property law
1. The training program on the industrial property law must provide learners with necessary knowledge and skills in applying the industrial property law to solve specific problems related to industrial property rights protection with a duration of at least 20 academic units or 18 credits (at least 40% of such training duration is reserved for practice training, vocational internship or graduate internship).
2. The Ministry of Science and Technology shall formulate the framework training program on the industrial property law based on the criteria specified in Clause 1 of this Article.
3. Training courses on the industrial property law specified at Point d, Clause 2, and Clause 2a, Article 155 of the Law on Intellectual Property which are provided under the framework program mentioned in Clause 2 of this Article shall be recognized by the Ministry of Science and Technology.
4. An individual shall be regarded as having graduated from a training course on the industrial property law specified at Point d, Clause 2, and in Clause 2a, Article 155 of the Law on Intellectual Property if he/she completes the industrial property training course, satisfies the requirements specified in Clause 2 of this Article, and has such recognized by the Ministry of Science and Technology under Clause 3 of this Article.
Article 63. Competency testing of industrial property representation
1. The competency testing of industrial property representation shall be carried out to evaluate the ability to apply the industrial property law to solve specific problems related to the establishment and protection of industrial property rights.
2. The state management agency in charge of industrial property rights shall organize competency tests of industrial property representation once every 2 years. Plans on organization of competency tests of industrial property representation shall be disclosed on the portal of the state management agency in charge of industrial property rights.
3. Testing results shall be notified by the state management agency in charge of industrial property rights to test takers. Test takers may request the state management agency in charge of industrial property rights to review their testing results.
4. Testing results of an individual who satisfies the condition specified at Point e, Clause 2, Article 155 of the Law on Intellectual Property are valid for 5 years (from the date of issuance of the notice of testing results) for requesting the state management agency in charge of industrial property rights to grant an industrial property representation service practice certificate.
5. A council for competency testing of industrial property representation shall be established by the state management agency in charge of industrial property rights and tasked to organize competency tests of industrial property representation under the Regulation on competency testing of industrial property representation issued
by the latter.
by the latter.
6. Individuals who fully satisfy the conditions specified at Points a thru dd, Clause 2, Article 155 of the Law on Intellectual Property may register to take competency tests of industrial property representation under Clause 7 of this Article.
7. A dossier for registration for taking a test shall be submitted to the state management agency in charge of industrial property rights and must comprise:
a/ A declaration form for registration for taking a test, made according to Form No. 01 provided in Appendix V to this Decree;
b/ A copy of the bachelor’s degree or an equivalent diploma as specified at Point c, Clause 2, Article 155 of the Law on Intellectual Property (with the original produced for collation, unless such copy has been certified);
c/ A copy of the certificate of graduation from the training course on the industrial property law recognized by the Ministry of Science and Technology under Article 62 of this Decree (with its original produced for collation, unless such copy has been certified); or a copy of the recruitment decision or labor contract, and other documents (certified by the employer) proving that the applicant has at least 5 years’ experience in the examination of industrial property registration applications at the national or international agency in charge of industrial property or experience in the industrial property law as specified at Point d, Clause 2, Article 155 of the Law on Intellectual Property, covering inspection, testing, supervision, adjudication, legal affairs, legal counseling and state management of industrial property; scientific research (with the title of researcher) and teaching in industrial property (with the original certificate produced for collation, unless such copy has been certified);
d/ Two 3cm x 4cm photos of the applicant;
dd/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or remitted directly into the account of the state management agency in charge of industrial property rights).
8. A dossier for registration for taking a test shall be processed by the state management agency in charge of industrial property rights within 20 days after it is received, specifically as follows:
a/ In case the dossier is valid, the state management agency in charge of industrial property rights shall notify the applicant of the eligibility to take the test and, at the same time, notify the projected time, venue and schedule of the test;
b/ In case the dossier is invalid, the state management agency in charge of industrial property rights shall notify errors of the dossier and set a time limit of 1 month from the date of notification for the applicant to correct errors;
c/ In case the applicant fails to correct errors or improperly does so, the state management agency in charge of industrial property rights shall issue a decision on refusal to accept the registration for taking a test, clearly stating the reason.
Article 64. Grant, re-grant and revocation of industrial property representation service practice certificates
1. The grant of industrial property representation service practice certificates is as follows:
a/ Industrial property representation service practice certificates shall be granted by the state management agency in charge of industrial property rights to individuals who satisfy the conditions specified in Clauses 2 and 2a, Article 155 of the Law on Intellectual Property if such they so request and pay charges and fees in accordance with law;
b/ A dossier of request for grant of an industrial property representation service practice certificate must comprise:
b1/ A declaration form for requesting the grant of an industrial property representation service practice certificate, made according to Form No. 02 provided in Appendix V to this Decree;
b2/ A copy of the certificate of graduation from the training course on the industrial property law and a copy of the lawyer’s card in case of request for grant of a practice certificate under Clause 2a, Article 155 of the Law on Intellectual Property (with the original certificate produced for collation, unless such copy has been certified);
b3/ Two 3cm x 4cm photos of the requester;
b4/ A copy of the people’s identity card (with the original card produced for collation, unless such copy has been certified), except where the declaration form contains information on the citizen identity card number;
b5/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
c/ A dossier of request for grant of an industrial property representation service practice certificate shall be processed by the state management agency in charge of industrial property rights within 1 month after it is received, specifically as follows:
c1/ In case the dossier is valid, the state management agency in charge of industrial property rights shall decide to issue an industrial property representation service practice certificate which states the full name, date of birth, permanent residence address, identity card number, certificate number and areas of practice of the certificate holder; record the grant of the industrial property representation service practice certificate in the National Register of Industrial Property Representation and publish it in the Official Gazette of Industrial Property and the Portal of such agency within 2 months from the date of decision issuance;
c2/ In case the dossier is invalid, the state management agency in charge of industrial property rights shall notify errors of the dossier and set a time limit of 1 month from the date of notification for the requester to correct the errors;
c3/ In case the applicant fails to correct the errors or improperly does so, the state management agency in charge of industrial property rights shall issue a decision on refusal to issue an industrial property representation service practice certificate, clearly stating the reason;
d/ An industrial property representation service practice certificate shall be made according to Form No. 03 provided in Appendix V to this Decree.
2. The re-grant of an industrial property representation service practice certificate is as follows:
a/ In the following cases, the state management agency in charge of industrial property rights shall re-grant an industrial property representation service practice certificate if the industrial property representative so requests and pays charges and fees under regulations:
a1/ There is a change in the certificate’s information mentioned at Point c1, Clause 1 of this Article;
a2/ The certificate is lost, defective or damaged (torn, dirty, faded, etc.) to the extent that it becomes unusable;
a3/ The conditions for grant of an industrial property representation service practice certificate have been later satisfied in case the certificate is revoked because its holder no longer satisfies the conditions specified in Clauses 2 and 2a, Article 155 of the Law on Intellectual Property.
b/ A dossier of request for re-grant of an industrial property representation service practice certificate filed to the state management agency in charge of industrial property rights must comprise:
b1/ A declaration form of request for re-grant of an industrial property representation service practice certificate, made according to Form No. 04 provided in Appendix V to this Decree;
b2/ Two 3cm x 4cm photos of the requester;
b3/ A copy of the people’s identity card (with the original card produced for collation, unless the copy has been certified), except the case where the declaration form contains information on the citizen identity card number, for the case specified at Point a1 of this Clause;
b4/ Documents proving that the conditions for grant of an industrial property representation service practice certificate have been satisfied, for the case specified at Point a3 of this Clause;
b5/ Copies of charge and fee receipts (in case charges and fees are paid through the postal service or directly into the account of the state management agency in charge of industrial property rights).
c/ A dossier of request for re-grant of an industrial property representation service practice certificate shall be processed by the state management agency in charge of industrial property rights within 20 days after it is received, according to the procedures similar to those for grant of an industrial property representation service practice certificate specified at Point c, Clause 1 of this Article.
d/ In case the industrial property representation service practice certificate contains errors made by the state management agency in charge of industrial property rights, such agency shall re-grant the certificate within 5 working days after receiving the certificate holder’s request for the re-grant and no charge is collected upon the certificate re-grant.
3. The revocation of an industrial property representation service practice certificate is as follows:
a/ An industrial property representation service practice certificate shall be revoked by the state management agency in charge of industrial property rights in the following cases:
a1/ The certificate holder no longer satisfies the conditions specified in Clauses 2 and 2a, Article 155 of the Law on Intellectual Property;
a2/ The certificate holder has his/her certificate revoked under a competent state agency’s decision under Clause 4, Article 156 of the Law on Intellectual Property;
b/ The state management agency in charge of industrial property rights shall, at its own will or at the request of organizations or individuals, revoke an industrial property representation service practice certificate if having grounds to believe that the certificate holder falls into one of the cases specified at Point a of this Clause;
c/ An organization or individual requesting revocation of an industrial property representation service practice certificate shall submit:
c1/ A request for revocation of an industrial property representation service practice certificate;
c2/ Documents evidencing grounds for revocation of an industrial property representation service practice certificate.
d/ Procedures for revocation of an industrial property representation service practice certificate are as follows:
d1/ In case an organization or individual requests the revocation of an industrial property representation service practice certificate under Point c of this Clause, within 1 month from the date of receipt of the request, the state management agency in charge of industrial property rights shall notify in writing such request to the certificate holder and set a time limit of 1 month from the date of notification for the latter to give opinions. On the basis of considering opinions of the parties, the state management agency in charge of industrial property rights shall issue a decision to revoke the certificate or a decision on refusal to revoke the certificate and send it to the parties;
d2/ If having grounds to believe that the certificate holder no longer satisfies the conditions specified in Clauses 2 and 2a, Article 155 of the Law on Intellectual Property, the state management agency in charge of industrial property rights shall notify in writing the intent to revoke the certificate to the certificate holder and set a time limit of 1 month from the date of notification for the latter to give opinions. On the basis of considering opinions of the certificate holder, the state management agency in charge of industrial property rights shall issue a decision on revocation of the certificate or notify the non-revocation of the certificate to the certificate holder;
d3/ In case a competent state agency issues a decision on revocation of the industrial property representation service practice certificate, within 1 month after receiving such decision, the state management agency in charge of industrial property rights shall issue a decision on revocation of the certificate;
d4/ The decision on revocation of the industrial property representation service practice certificate shall be recorded by the state management agency in charge of industrial property rights in the National Register of Industrial Property Representation and published in the Official Gazette of Industrial Property within 2 months from the date of decision issuance.
Article 65. Recording and deletion of names of industrial property representatives
1. The recording of an organization eligible for providing industrial property representation services is as follows:
a/ An organization that fully satisfies the conditions specified in Article 154 of the Law on Intellectual Property shall be recorded by the state management agency in charge of industrial property rights as an industrial property representation service provider in the National Register of Industrial Property and publicized in the Official Gazette of Industrial Property if it so requests and pays charges and fees in accordance with law.
Branches and affiliated units of organizations that fully satisfy the conditions specified in Article 154 of the Law on Intellectual Property may only provide industrial property representation services in the name of such organizations.
b/ A dossier of request for recording of an industrial property representation service provider in the National Register of Industrial Property, which is submitted to the state management agency in charge of industrial property rights, must be in the name of an organization that fully satisfied the conditions specified in Article 154 of the Law on Intellectual Property, and must comprise:
b.1/ A declaration form of request for recording of an industrial property representation service provider, made according to Form No. 05 provided in Appendix V to this Decree, which must have sufficient information on the service provider and its authorized industrial property representative;
b.2/ A copy of the recruitment decision or labor contract of the service provider, for persons who possess a certificate of industrial property representation service practice (with the original produced for collation, unless the copy has been certified);
b.3/ Copies of charge and fee receipts (in case charges and fees are paid via postal service or directly into the account of the state management agency in charge of industrial property rights).
c/ Within 20 days after receiving a dossier of request for recording of an industrial property representation service provider, the state management agency in charge of industrial property rights shall examine the dossier according to the procedures similar to those for issuance of a certificate of industrial property representation service practice specified at Point c, Clause 1, Article 64 of this Decree.
2. The recording of an industrial property representative is as follows:
a/ An individual that fully satisfies the conditions for industrial property representation service practice shall request the state management agency in charge of industrial property rights to record him/her as an industrial property representative in the National Register of Industrial Property Representation and publicize information thereon in the Official Gazette of Industrial Property Representation under Clause 1, Article 156 of the Law on Intellectual Property and this Clause and pay charges and fees in accordance with law.
b/ A dossier of request for recording of an industrial property representative in the National Register of Industrial Property Representation, which is submitted to the state management agency in charge of industrial property rights, must be in the name of an individual who fully satisfies the conditions specified in Article 155 of the Law on Intellectual Property, and must comprise:
b.1/ A declaration form of request for recording of an industrial property representative, made according to Form No. 06 provided in Appendix V to this Decree, which must have sufficient information on the individual and the industrial property representation service provider where he/she practices;
b.2/ A copy of the recruitment decision or labor contract, for individuals, of the industrial property representation service provider (with the original produced for collation, unless the copy has been certified);
b.3/ Copies of charge and fee receipts (in case charges and fees are paid via postal service or directly into the account of the state management agency in charge of industrial property rights).
c/ Within 20 days after receiving a dossier of request for recording of an industrial property representative, the state management agency in charge of industrial property rights shall examine the dossier according to the procedures similar to those for grant of a certificate of industrial property representation service practice specified at Point c, Clause 1, Article 64 of this Decree.
3. The recording of changes in information on an industrial property representation service provider is as follows:
a/ An industrial property representation service provider may request the state management agency in charge of industrial property rights to record changes relating to information already recorded in the National Register of Industrial Property Representation (including full name, transaction name, abbreviated name and address of the organization, the areas of industrial property representation service provision, and full name and serial number of the certificate of the practicing industrial property representative) according to this Point and shall pay charges and fees according to regulations.
b/ A dossier of request for recording of changes in information on an industrial property representation service provider submitted to the state management agency on industrial property rights must comprise:
b.1/ A declaration form of request for recording of changes in information on an industrial property representation service provider, made according to Form No. 07 provided in Appendix V to this Decree;
b.2/ A copy of the modified business registration certificate or operation registration certificate of the industrial property representation service provider in case its name or address is changed (with the original produced for collation, unless the copy has been certified), except case the enterprise identification number has been included in the declaration form of request for recording of changes in information on the industrial property representation service provider;
b.3/ Copies of charge and fee receipts (in case charges and fees are paid via postal service or directly into the account of the state management agency in charge of industrial property rights).
c/ Within 20 days after receiving a dossier of request for recording of changes in information on the industrial property representation service provider, the state management agency in charge of industrial property rights shall examine the dossier according to the procedures similar to those for grant of a certificate of industrial property representation service practice specified at Point c, Clause 1, Article 64 of this Decree.
4. The deletion of the name of an industrial property representation service provider is as follows:
a/ An industrial property representation service provider shall carry out procedures for deletion of its name in the National Register of Industrial Property Representation at the state management agency in charge of industrial property rights in the following cases:
a.1/ It waives or terminates the provision of industrial property representation services;
a.2/ It no longer fully satisfies the conditions specified in Article 154 of the Law on Intellectual Property;
b/ A dossier of request for deletion of the name of an industrial property representation service provider submitted to the state management agency in charge of industrial property rights must comprise:
b.1/ A declaration form of request for deletion of the name of the industrial property representation service provider, made according to Form No. 08 provided in Appendix V of this Decree;
b.2/ Documents evidencing that the industrial property representation service provider no longer satisfies the conditions for provision of industrial property representation services;
b.3/ Copies of charge and fee receipts (in case charges and fees are paid via postal service or directly into the account of the state management agency in charge of industrial property rights).
c/ Within 20 days after receiving a dossier of request for deletion of the name of an industrial property representation service provider, the state management agency in charge of industrial property rights shall examine the dossier according to the procedures similar to those for grant of a certificate of industrial property representation service practice specified at Point c, Clause 1, Article 64 of this Decree.
5. The deletion of the name of an industrial property representative is as follows:
a/ An industrial property representative shall perform the procedures for deletion of his/her name in the National Register of Industrial Property Representation at the state management agency in charge of industrial property rights when he/she no longer satisfies the practice conditions specified at Point b, Clause 1, Article 155 of the Law on Intellectual Property.
b/ A dossier of request for deletion of the name of an industrial property representative submitted to the state management agency in charge of industrial property rights must comprise:
b.1/ A declaration form of request for deletion of the name of an industrial property representative, made according to Form No. 09 provided in Appendix V of this Decree;
b.2/ Documents evidencing that the holder of certificate of industrial property representation service practice fails to satisfy the conditions on industrial property representation service practice specified at Point b, Clause 1, Article 155 of the Law on Intellectual Property (decision on termination of the labor contract or other documents);
b3/ Copies of charge and fee receipts (in case charges and fees are paid via postal service or directly into the account of the state management agency in charge of industrial property rights);
c/ Within 20 days after receiving a dossier of request for deletion of the name of an industrial property representative, the state management agency in charge of industrial property rights shall examine the dossier according to the procedures similar to those for grant of a certificate of industrial property representation service practice specified at Point c, Clause 1, Article 64 of this Decree.
Chapter VII
MEASURES TO PROMOTE INTELLECTUAL PROPERTY ACTIVITIES
Article 66. Training and further training of human resources for industrial property activities
1. The Ministry of Science and Technology shall provide in detail industrial property training and further training contents and programs.
2. The Ministry of Science and Technology shall assume the prime responsibility for, and coordinate with related ministries and sectors in, organizing industrial property further training for persons involved in state management, appraisal, assessment, and handling of violations and infringements of industrial property.
Article 67. Assurance of industrial property information
1. The industrial property information system includes a collection of information concerning all subject matters of industry property protected in Vietnam and information selected by purpose or topic about foreign countries’ subject matters of industry property that are classified and arranged in an appropriate and convenient manner to serve searching, distribution and use.
2. The Ministry of Science and Technology shall build and manage industrial property information repositories, develop classification and search tools, and provide guidance on search and use of domestic and foreign industrial property information; provide information fully, timely and accurately, ensuring accessibility to information repositories for those wishing to use information for the establishment and protection of industrial property rights, and research, development and business activities; manage, and organize the sharing, connection, exploitation, international cooperation and other activities pertaining to the national database on industrial property.
Article 68. Expansion of the scope of use of the State’s inventions, industrial designs and layout designs
1. For an invention, an industrial design or a layout design owned by the State, in case the protection title holder’s use capacity fails to satisfy social demands, other state organizations may request such protection title holder to license such invention, industrial design or layout design provided that:
a/ The to-be-licensed invention, industrial design or layout design is neither exclusive nor allowed to be licensed to another person;
b/ The scope of use of such invention, industrial design or layout design by the licensee does not affect its use until it goes beyond the protection title holder’s capacity;
c/ In case the invention, industrial design or layout design is used for non-commercial purposes, the licensing price payable to the protection title holder by the licensee equals 50% of the price payable by the licensee other than a state organization for being licensed such invention, industrial design or layout design with other equivalent conditions.
2. The licensing of the State’s inventions, industrial designs and layout designs to state organizations specified in Clause 1 of this Article does not affect protection title holders’ rights in the licensing of such subject matters to other non-state organizations.
Article 69. Encouraging social organizations and socio-professional organizations to carry out industrial property activities
Social organizations and socio-professional organizations operating in the field of industrial property shall be assisted to perform the function of providing consultancy and social criticism on industrial property and promote non-public social service activities so as to fully promote the role of assisting state agencies’ activities and supporting industrial property rights holders.
Article 70. Other innovation promotion measures
The State shall promote and sponsor technological innovation activities through the following measures:
1. To sponsor technical innovation contests.
2. To commend, and disseminate experiences, innovative methods and advanced models of creative labor.
3. To support the establishment and protection of industrial property rights for innovation outcomes.
Part Four
PROTECTION OF INDUSTRIAL PROPERTY RIGHTS AND PLANT VARIETY RIGHTS
Chapter I
IDENTIFICATION OF ACTS, NATURE AND EXTENT OF INFRINGEMENT, AND DETERMINATION OF DAMAGE
Section 1
GROUNDS FOR IDENTIFICATION OF ACTS, NATURE AND EXTENT OF INFRINGEMENT
Article 71. Application of civil, administrative and criminal measures to protect industrial property rights and plant variety rights
Depending on the nature and extent, infringing acts shall be handled by civil, administrative or criminal measures specified in Part Five (Protection of Intellectual Property Rights) of the Law on Intellectual Property and under the following provisions:
1. Civil measures shall be applied to handle infringing acts at the request of holders of industrial property rights and plant variety rights or organizations and individuals that suffer damage caused by infringing acts, even when such acts have been or are being handled by administrative or criminal measures.
Procedures for requesting the application of civil measures and the competence, order and procedures for application of civil measures must comply with the civil procedure law.
2. Administrative measures shall be applied to handle infringing acts in one of the cases specified in Article 211 of the Law on Intellectual Property at the request of owners of industrial property rights or plant variety rights, organizations and individuals that suffer damage caused by infringing acts, organizations or individuals that detect infringing acts, or competent agencies that detect infringing acts.
Sanctioning forms and levels, competence and procedures for sanctioning infringing acts and remedial measures must comply with the Law on Intellectual Property and the law on sanctioning of administrative violations in the field of industrial property rights and plant variety rights.
3. Criminal measures shall be applied to handle infringing acts in case such acts constitute a crime as prescribed in the Penal Code.
The competence, order and procedures for applying criminal measures must comply with the criminal procedure law.
Article 72. Identification of infringing acts
An act in question shall be regarded as an act infringing upon industrial property rights or plant variety rights specified in Articles 126, 127, 129 and 188 of the Law on Intellectual Property when fully having the following grounds:
1. The subject matter in question falls within the scope of currently protected subject matters;
2. The subject matter in question involves infringing elements;
3. The person who commits the act in question is neither the holder of the industrial property rights or plant variety rights nor a person licensed by law or a competent agency specified in Clauses 2 and 3 of Article 125, Article 133, Clause 3 of Article 133a, Article 134, Clause 2 of Article 137, and Articles 145, 190 and 195, of the Law on Intellectual Property;
4. The act in question is committed in Vietnam. An act is also regarded as occurring in Vietnam if it occurs on the Internet and is committed on a website using a Vietnam domain name or displaying Vietnamese or targeting consumers or information users in Vietnam.
Article 73. Grounds for identifying subject matters eligible for protection
1. Subject matters eligible for protection shall be identified by reviewing documents and evidences proving grounds for giving rise to and establishment of rights under Article 6 of the Law on Intellectual Property.
2. For types of industrial property rights that have been registered at competent agencies, a subject matter eligible for protection shall be identified based on a registration confirmation and protection title and accompanying documents.
3. For trade names, a subject matter eligible for protection shall be identified based on the use process and areas and territories where such trade names are used.
4. For trade secrets, a subject matter eligible for protection shall be identified based on documents showing the content and nature of the trade secret and explanation and description of the corresponding confidentiality measures.
5. For well-known marks, a subject matter eligible for protection shall be identified based on documents and evidences of widespread use of the marks to gain their fame according to the criteria specified in Article 75 of the Law on Intellectual Property.
6. For geographical indications eligible for protection under treaties, a subject matter eligible for protection shall be identified under a treaty or the National Register of Industrial Property.
7. Plant variety rights shall be identified based on the plant variety protection title issued by a competent state agency.
Article 74. Elements infringing upon invention ownership
1. An element infringing upon rights to an invention may take one of the following forms:
a/ A product or part of a product is identical or similar to the product or part of the product falling within the scope of invention protection;
b/ A process is identical or similar to the process falling within the scope of invention protection;
c/ A product or part of a product is manufactured according to a process identical or similar to the process falling within the scope of invention protection.
2. The ground for identifying elements infringing upon the rights to an invention is the scope of invention protection which shall be determined based on the invention patent, utility solution patent or excerpt from the National Register of Industrial Property.
Article 75. Elements infringing upon rights to layout designs
1. An element infringing upon rights to a layout design may take one of the following forms:
a/ A layout design is created by illegally copying the protected layout design;
b/ A semiconductor integrated circuit is illegally created by using the protected layout design;
c/ A product or part of a product is fitted with the semiconductor integrated circuit specified at Point b of this Clause.
2. The ground for identifying elements infringing upon rights to a layout design is the protection scope of rights to such layout design which shall be determined based on the certificate of registration of layout design for semiconductor integrated circuit or excerpt from the National Register of Industrial Property.
Article 76. Elements infringing upon rights to industrial designs
1. An element infringing upon the rights to an industrial design is a product or part to be assembled into a complex product whose external appearance is not significantly different from the protected industrial design.
2. The ground for identifying elements infringing upon rights to an industrial design is the protection scope of such industrial design which shall be determined based on the industrial design patent, decision on acceptance of protection of the internationally registered industrial design or excerpt from the National Register of Industrial Property.
3. A product or part to be assembled into a complex product will have its external appearance considered not to be significantly different from the protected industrial design if falling into one of the following cases:
a/ The product or part to be assembled into a complex product in question, even in case it has been granted the industrial design patent, has its external appearance being a combination of appearance features constituting a replication or being in substance a replication of (with its difference almost indistinguishable from) the protected industrial design of another person;
b/ The product or part to be assembled into a complex product in question has its external appearance being a combination of appearance features constituting a replication or being in substance a replication of an industrial design of at least one product in the protected set of products of another person.
Article 77. Elements infringing upon rights to marks
1. An element infringing upon rights to a mark is a sign attached to goods, goods packaging, means of service provision, transaction documents, signboards, means of advertisement and other means of commercial operation that are identical or confusingly similar to the protected mark.
2. The ground for examining elements infringing upon rights to a mark is the protection scope of such mark, including the specimen of the mark and list of goods and services stated in the mark registration certificate or the confirmation of the internationally registered mark protected in Vietnam or excerpt from the National Register of Industrial Property, or through evaluation of evidences proving a well-known mark under Article 75 of the Law on Industrial Property.
3. To determine whether a suspected sign is an element infringing upon the rights to a mark, it is necessary to compare such sign with the mark and concurrently compare the goods and services bearing such sign with goods and services falling within the scope of protection. It is possible to affirm an element infringing upon rights to a mark only when both the following conditions are satisfied:
a/ The suspected signs are identical or confusingly similar to a mark falling within the scope of protection, in which a sign will be considered to be identical to a mark falling within the scope of protection if it has the same structure and manner of manifestation; a sign will be considered to be confusingly similar to a mark falling within the scope of protection if several components are completely identical or similar to the extent that it is not easy to distinguish between one another in terms of composition, pronunciation, transcription, meaning, format, color (for visible signs), or music and tone for audio symbols, and the use of signs is likely to cause confusion to consumers about the goods and services bearing the marks;
b/ The goods and services bearing suspected signs that are identical or similar to in terms of nature or function and utility and sharing sale channels with goods and services falling within the scope of protection; or are interrelated in terms of nature, function or method of implementation.
4. For well-known marks, a suspected sign will be regarded as an infringing element if:
a/ The suspected sign satisfies the condition specified in Point a, Clause 3 of this Article;
b/ The goods or services bearing the suspected sign satisfy the conditions specified at Point b, Clause 3 of this Article or the goods or services are neither identical nor similar nor relevant to the goods or services bearing the well-known mark but are likely to cause confusion to consumers about the origin of the goods or services or cause a false impression on the relationship between the manufacturer or trader of such goods or services and the owner of the well-known mark.
Article 78. Elements infringing upon rights to geographical indications
1. An element infringing upon rights to a geographical indication is manifested in the form of signs attached to goods, goods packaging, means of service provision, transaction documents, signboards, means of advertisement and other means of commercial operation, that are identical or confusingly similar to the protected geographical indication.
2. The ground for examining elements infringing upon rights to a geographical indication is the protection scope of such geographical indication which is determined based on the geographical indication registration certificate or treaty having the content on recognition and protection of geographical indications or excerpt from the National Register of Industrial Property.
3. To determine whether a suspected sign is an element that infringes rights to a protected geographical indication, it is necessary to compare such sign with the geographical indication and compare the product bearing the suspected sign with the product bearing the protected geographical indication based on the following grounds:
a/ Suspected signs are identical or confusingly similar to a geographical indication, in which a sign will be considered to be identical to a geographical indication if it is similar to the protected geographical indication in terms of word structure, including pronunciation, transcription of letters, meaning or image and symbol falling within the scope of protection of the geographical indication; a sign will be considered to be confusingly similar to a geographical indication if it is confusingly similar to such the geographical indication in terms of word structure, including pronunciation and transcription of letters, meaning or image and symbol falling within the scope of protection of the geographical indication, and makes consumers misunderstand that the product bearing such sign originates in the protected geographical area;
b/ A product bearing the suspected sign is identical or similar to the product bearing the protected geographical indication in which the products will be considered to be identical or similar to one another if they are identical or similar to one other in terms of nature, function, utility and sale channels;
c/ For wine and spirits, in addition to the provisions of Points a and b of this Clause, signs identical to the protected geographical indication, even in the form of translation, transcription or accompanying words, style, format, adaptation or similar words used for products that do not originate in the geographical area bearing the protected geographical indication, are also regarded as elements infringing upon rights to geographical indications.
Article 79. Elements infringing upon rights to trade names
1. An element infringing upon rights to a trade name is manifested in the form of commercial indications attached to goods, goods packaging, means of service provision, transaction documents, signboards, means of advertisement and other means of commercial operation that are identical or confusingly similar to the protected trade name.
2. The ground for examining elements infringing upon rights to a trade name is the protection scope of such trade name which is determined based on evidences of the lawful use of such trade name provided by its owner, specifically indicating business subjects, business establishments, business activities, business sector and business area and the process of using such trade name.
3. To determine whether a suspected sign is an element that infringes rights to a trade name, it is necessary to compare such suspected sign with the protected trade name, compare business subjects, business establishments and business activities concerning the suspected sign, and compare goods and services bearing such suspected sign with those of the protected trade name based on the following grounds:
a/ The suspected signs are identical or confusingly similar to the protected trade name, in which a sign will be considered to be identical to the protected trade name if it is similar to the protected trade name in terms of word structure, even the pronunciation and transcription of the trade name; a sign will be considered to be similar to the protected trade name if it is similar in terms of word structure, pronunciation and transcription of the trade name and causes misunderstanding to consumers about business subjects, business establishments and business activities conducted under the protected trade name;
b/ The goods and services bearing suspected signs will be considered to be identical or similar to the goods and services bearing the protected trade name if they are identical or similar to each other in terms of nature or function and utility and share the same sale channels; or interrelated in terms of nature or function or method of implementation
Article 80. Elements infringing upon plant variety rights
1. An element infringing upon plant variety rights that is regarded as having constituted an infringing act is manifested as follows:
a/ Productive materials, intact seedlings, harvested products or any materials capable of growing into complete seedlings of the protected plant variety;
b/ The name of the plant variety or glyphs displayed on goods, goods packaging, means of service provision, transaction documents, signboards, means of advertisement and other means of commercial operation that are confusingly similar or that are identical or confusingly similar to the name of the protected plant variety;
c/ Machinery, equipment, warehouses and yards for storage and preservation, vehicles or other equipment serving the processing and storage of seeds, productive materials, and harvested materials for use as seeds of the plant varieties.
2. The ground for identifying elements infringing upon rights to a plant variety is the scope of the plant variety protection title that remains valid.
Article 81. Grounds for identification of nature and extent of infringement of industrial property rights and plant variety rights
1. The nature of infringement specified in Clause 1, Article 199 of the Law on Intellectual Property shall be identified based on the following grounds:
a/ Circumstances of and motivations for infringement: intentional infringement, unintentional infringement, infringement as a result of being controlled or dependent, first-time infringement, or repeated infringement;
b/ Ways of committing infringing acts: individual infringement, organized infringement, self-commission of infringing acts, bribing, deceiving, or forcing others to commit infringing acts.
2. The extent of infringement specified in Clause 1, Article 199 of the Law on Intellectual Property shall be identified based on the following grounds:
a/ Territorial scope, duration, volume and scale of infringing acts;
b/ Impacts and consequences of infringing acts.
Section 2
IDENTIFICATION OF DAMAGE
Article 82. Principles for identifying damage to industrial property rights and plant variety rights
1. The damage caused by infringement of industrial property rights and plant variety rights specified in Article 204 of the Law on Intellectual Property is the actual material and spiritual losses caused directly by infringing acts to the rights holders.
2. There will be considered actual losses if the following grounds are fully available:
a/ Material or spiritual benefits are real and belong to the damage sufferer;
b/ The damage sufferer is likely to achieve the benefits specified at Point a of this Clause;
c/ The benefits of the damage sufferer are reduced or lost after an infringing act occurs as compared with possibilities to achieve those benefits without the infringing act and the infringing act is the direct cause of such reduced or lost benefits.
3. The extent of damage shall be identified suitable with elements infringing upon rights to subject matters of industrial property rights and plant variety rights. The identification of the extent of damage is based on evidences of damage provided by the concerned parties, including results of requested assessment and declaration forms on damage, which clarify grounds for identifying and calculating the extent of damage.
Article 83. Property loss
1. Property loss shall be determined based on the level of reduction or loss in monetary value of subject matters of the protected industrial property rights or plant variety rights.
2. The monetary value of subject matters of industrial property rights and plant variety rights specified in Clause 1 of this Article shall be determined based on one or more than one of the following grounds:
a/ The price of transfer of ownership rights over or the price of licensing of subject matters of industrial property rights or plant variety rights;
b/ The value of capital contributed in industrial property rights or plant variety rights;
c/ The value of industrial property rights or plant variety rights in the enterprise’s total assets;
d/ Costs of investment in the creation and development of subject matters of industrial property rights or plant variety rights, including costs of marketing, research, advertisement and labor, taxes and other expenses.
Article 84. Spiritual losses
Losses in terms of honor, dignity, prestige, reputation and other spiritual losses caused to authors of inventions, industrial designs or layout designs; or caused to authors of plant varieties specified in the Law on Intellectual Property that arise as a result of the fact that the moral rights of these authors are infringed, causing damage to such authors’ honor and dignity, reduction or loss of their credibility (prestige), reputation and trust due to misunderstanding.
Article 85. Decreases in incomes and profits
1. Incomes and profits specified at Point a, Clause 1, Article 204 of the Law on Intellectual Property include:
a/ Incomes and profits earned from direct use and exploitation of subject matters of industrial property rights and plant variety rights;
b/ Incomes and profits earned from the lease of subject matters of industrial property rights and plant variety rights;
c/ Incomes and profits earned from the licensing of subject matters of industrial property rights and plant variety rights.
2. The extent of decrease in incomes and profits shall be determined based on one or more than one of the following grounds:
a/ Directly comparing the actual income and profit level before and after the occurrence of an infringing act, corresponding to each type of income specified in Clause 1 of this Article;
b/ Comparing the output and quantity of products, goods and services actually consumed or provided before and after the occurrence of an infringing act;
c/ Comparing the actual selling price of the products, goods and services in the market before and after the occurrence of an infringing act.
Article 86. Losses in terms of business opportunities
1. Business opportunities specified at Point a, Clause 1, Article 204 of the Law on Intellectual Property include:
a/ Actual possibility of directly using and exploiting subject matters of industrial property rights and plant variety rights in business activities;
b/ Actual possibility of leasing subject matters of industrial property rights and plant variety rights to others;
c/ Actual possibility of licensing of subject matters of industrial property rights and plant variety rights, and transferring subject matters of industrial property rights and plant variety rights to others;
d/ Other business opportunities lost as a result of infringing acts.
2. The loss in terms of business opportunities is the damage in monetary value of income that the damage sufferer could have earned from the possibilities specified in Clause 1 of this Article but in fact he/she could not earn such income due to infringing acts.
Article 87. Reasonable costs for prevention and remediation of damage
Reasonable costs for prevention and remediation of damage specified at Point a, Clause 1, Article 204 of the Law on Intellectual Property include expenses for temporary seizure, preservation and storage of infringing goods, expenses for implementation of interim emergency measures, reasonable expenses for hiring lawyers and assessment services, and preventing and remedying infringing acts, and expenses for notification and correction of information relating to infringement acts in the mass media.
Chapter II
REQUESTS FOR HANDLING OF INFRINGING ACTS AND SETTLEMENT THEREOF
Article 88. Exercise of the right to self-protection
1. Organizations and individuals may exercise the right to self-protection under Article 198 of the Law on Intellectual Property and specific provisions of this Article.
2. Technological measures specified at Point a, Clause 1, Article 198 of the Law on Intellectual Property include:
a/ Showing instructive information on grounds giving rise to, protection title, owner, and scope and duration of protection, and other information on industrial property rights and plant variety rights on products and means of service provision (below in this Article collectively referred to as products) in order to notify that products are subject matters of industrial property rights or plant variety rights under protection and warn others not to commit infringing acts;
b/ Using technical means or measures to mark, identify, distinguish and protect protected products.
3. Requests for termination of infringing acts specified at Point b, Clause 1, Article 198 of the Law on Intellectual Property shall be made by holders of industrial property rights or plant variety rights by notifying such in writing to infringers. Such a notice must contain instructive information on grounds giving rise to, protection title, and scope and duration of protection, and set a reasonable time limit for the infringer to terminate the infringing act.
4. Requests for competent state agencies’ handling of infringing acts specified at Point c, Clause 1, Article 198 of the Law on Intellectual Property must comply with Articles 89, 90, 91, 92, 93 and 94 of this Decree.
Article 89. Requests for handling of infringements
1. A written request for handling of an infringement must have the following principal contents:
a/ Date of making the request;
b/ Name and address of the requester; full name of the representative, if the request is filed through a representative;
c/ Name of the request-receiving agency;
d/ Name and address of the infringer; name and address of the person suspected of being the infringer in case of request for suspension of customs procedures for exported or imported goods suspected of infringement;
dd/ Names and addresses of organizations and individuals with related rights and interests (if any);
e/ Name and address of the witness (if any);
g/ Brief information on industrial property rights and plant variety rights being infringed upon: types of rights, grounds giving rise to rights, and summaries of subject matters of rights;
h/ Brief information on the infringing act: date and place of occurrence of the infringement, and brief description of the infringing product and act, and other information (if any);
i/ Contents of the request for application of infringement handling measures;
k/ List of accompanying documents and evidences;
l/ Signature of the requester and seal (if any).
2. A written request for handling of an infringement must have supporting documents and evidences, which must comply with Article 90 of this Decree.
Article 90. Documents and evidence accompanying requests for handling of infringements
1. A requester for handling of an infringement must enclose the written request with the following supporting documents and evidences:
a/ Evidences proving that he/she is the rights holder, if the requester is the owner, transferee, heir or person taking over industrial property rights or plant variety rights;
b/ Evidences proving that the infringing act has occurred; evidences of suspicion that exported or imported goods infringe upon industrial property rights or plant variety rights, for requests for suspension of customs procedures;
c/ Other supporting documents and evidences.
2. In case a request for handling of an infringement is made through an authorized representative, it shall be accompanied by a notarized or certified power of attorney. If such a request is made through a legal representative, it shall be accompanied by documents proving the status of the legal representative.
Article 91. Evidences proving rights holders
1. For an invention, an industrial design, a layout design, a mark or a plant variety, evidences proving its rights holder may be one of the following documents:
a/ A copy of the patent, utility solution patent, industrial design patent, certificate of registration of semi-conductor integrated circuit layout design, mark registration certificate or plant variety protection title, which shall be submitted together with the original for collation, unless the copy has been certified under regulations;
b/ An extract of the National Register of Industrial Property; an extract of the National Register of Protected Plant Varieties, issued by the agency competent to register such subject matters.
2. For a mark internationally registered under the Madrid Agreement and Madrid Protocol designating Vietnam, evidences proving its rights holder may be a certificate of internationally registered mark protected in Vietnam, granted by the state management agency in charge of industrial property, or a copy certified under regulations or an extract of the National Register of Industrial Property (the Part on Internationally Registered Marks).
3. For an industrial design internationally registered under the Hague Agreement designating Vietnam, evidences proving its rights holder may be a copy of the decision on acceptance of internationally registered industrial design protection issued by the state management agency in charge of industrial property, produced together with the original for collation, or a copy certified under regulations, or an extract of the National Register of Industrial Property (the Part on Internationally Registered Industrial Designs).
4. For a geographical indication, evidences proving its rights holder may be one of the following documents:
a/ A geographical indication registration certificate or an extract of the National Register of Industrial Property;
b/ A list of organizations and individuals using the geographical indication as specified at Point c, Clause 1, Article 38 of this Decree; or another document proving the rights holder in accordance with the law of the country of origin in case of a foreign geographical indication protected in Vietnam.
5. For other industrial property subject matters, evidences proving the status of their rights holders include documents, exhibits and information on grounds for the establishment of relevant rights as specified at Points a, b and c, Clause 3, Article 6 of the Law on Intellectual Property, and are specified as follows:
a/ For business secrets: a description of contents, form of storage, method of protection and method of acquisition of the business secret;
b/ For trade names: documents proving the lawful use of the trade name, business fields and areas where the trade name is used and the process of using the trade name;
c/ For well-known marks: documents showing criteria for evaluation of well-known marks specified in Article 75 of the Law on Intellectual Property and explaining the process of use for the mark to become well known;
d/ For geographical indications protected under treaties: documents and information in the treaty having contents on the recognition and protection of geographical indications or an extract of the National Register of Industrial Property;
dd/ For plant varieties: a valid plant variety protection title and a decision on grant or re-grant of a plant variety protection title; or an extract of the National Register of Protected Plant Varieties and evidences collected from different sources under Article 94 of the Civil Procedure Code.
6. In case a requester for handling of the infringement is the transferee of the ownership of a subject matter of industrial property rights or a plant variety, or the licensee of a subject matter of industrial property rights or a plant variety, or the person inheriting or taking over the subject matter of industrial property rights or plant variety, in addition to the documents specified in Clauses 1, 2 and 3 of this Article, the requester shall produce the original or a lawful copy of the contract on transfer of ownership of the subject matter of industrial property rights or plant variety, the contract on use of the subject matter of industrial property rights or plant variety, or a document certifying the right to inheritance or the right to take over the subject matter of industrial property rights or plant variety. In case the transfer has been recorded in a protection title or a certificate of registration of a contract on transfer of the ownership of a subject matter of industrial property rights or a plant variety or a certificate of registration of a contract on use of a subject matter of industrial property rights or a plant variety, the above documents may also be considered evidences proving the status of the rights holder.
Article 92. Evidences of infringements
1. The following documents and exhibits shall be considered evidences of an infringement:
a/ The originals or lawful copies of descriptive documents and relevant specimens and exhibits showing the protected subject matter;
b/ Relevant specimens and exhibits, photographs and video recordings of products in question;
c/ A document for explanation and comparison between the product in question and the protected subject matter;
d/ Minutes, recorded testimonies and other documents for proving the infringement.
2. Documents and exhibits specified in Clause 1 of this Article shall be included in a list bearing the signature of the infringement handling requester.
Article 93. Responsibilities of infringement handling requesters
Infringement handling requesters shall ensure and take responsibility for the truthfulness of information, documents and evidences they provide.
Article 94. Filing and settlement of infringement handling requests
1. Infringement handling requests shall be filed to the agencies competent to handle infringements specified in Article 200 of the Law on Intellectual Property (below referred to as infringement handling agencies).
2. Upon receiving a infringement handling request, if finding that such request falls within the competence of another agency, the request-receiving agency shall instruct the requester to file the request at a competent agency or forward the request to the competent agency for processing within 10 days after receiving the request.
3. In case an infringement handling request lacks necessary documents, evidences and exhibits, the infringement-handling agency shall request the requester to add documents and evidences and set a reasonable time limit of up to thirty days for the requester to add necessary documents and evidences.
4. In the following cases, an infringement handling agency may reject the an infringement handling request, clearly stating the reason:
a/ The time limit specified in Clause 3 of this Article has expired but the requester still fails to fulfill the infringement handling agency’s request for addition of relevant documents, evidences and exhibits;
b/ The statute of limitations for infringement handling has expired in accordance with law;
c/ Results of the verification by the infringement handling agency show that there is no infringement as described in the request;
d/ A competent agency issues a document stating that there are insufficient grounds for infringement handling.
5. In case of a dispute or complaint about a rights holder, the protectability or scope of protection of industrial property rights or plant variety rights, the agency that has received an infringement handling request shall guide the requester to carry out procedures for requesting the dispute or complaint settlement at a competent agency within 10 days after such dispute arises.
Chapter III
HANDLING OF GOODS THAT INFRINGE UPON INDUSTRIAL PROPERTY RIGHTS OR PLANT VARIETY RIGHTS
Article 95. Valuation of infringing goods
1. Infringing goods are specified as follows:
a/ Infringing goods are parts and details (below referred to as parts) of products that contain infringing elements and can be circulated as an independent product;
b/ In case it is impossible to detach an infringing element as part of a product that can be independently circulated as mentioned at Point a of this Clause, the infringing goods is the whole product containing such infringing element.
2. Infringing goods shall be valuated by the infringement handling agency at the time of occurrence of the infringing act and on the basis of the grounds in the following order of priority:
a/ Displayed price of the infringing goods;
b/ Actual selling price of the infringing goods;
c/ Cost of the infringing goods, if not yet put in circulation;
d/ Purchase price of the infringing goods.
3. An infringing goods shall be valuated by part of the infringing product specified at Point a, Clause 1 of this Article or by value of the whole infringing product specified at Point b, Clause 1 of this Article.
4. In case the application of the grounds specified in Clause 2 of this Article is inappropriate or the infringement handling agency and the same-level finance agency cannot reach agreement on the valuation of an infringing goods, the valuation shall be decided by the council for valuation of infringing goods.
The establishment, composition and working principles of the council for valuation of infringing goods must comply with the law on handling of administrative violations and the civil law.
Article 96. Handling of infringing goods
1. For goods bearing counterfeit marks or counterfeit geographical indications, raw materials, materials and means used mainly for production and trading of such goods, an agency competent to handle infringements shall apply one of the following measures:
a/ Distributing them or putting them into non-commercial use under Article 97 of this Decree;
b/ Destroying them under Article 98 of this Decree;
c/ Forcing their owners or carriers or persons stockpiling them to remove infringing elements and remove from the territory of the Socialist Republic of Vietnam in-transit goods bearing counterfeit marks or re-export imported goods bearing counterfeit marks, or imported raw materials, materials and means used mainly to produce and trade in goods bearing such counterfeit marks. If it is impossible to remove infringing elements from goods, raw materials, materials and means used mainly for production and trading of such goods, appropriate measures specified in Clause 4 of this Article shall be applied.
For imported goods, and imported raw materials, materials and means used mainly for the production and trading of goods bearing counterfeit geographical indications, infringement handling agencies shall, on a case-by-case basis, apply measures to force the removal of infringing elements and apply appropriate measures specified in Clause 4 of this Article.
2. For goods that infringe upon industrial property rights or plant variety rights but are not those bearing counterfeit marks or counterfeit geographical indications, or raw materials, materials and means used mainly for production and trading of such goods, infringement handling agencies shall apply measures to force their owners or carriers or persons stockpiling them to remove infringing elements from them and apply appropriate measures specified in Clause 4 of this Article.
For imported goods that infringe industrial property rights or plant variety rights but are not those bearing counterfeit marks or those bearing counterfeit geographical indications, or raw materials, materials and means used mainly to produce and trade in such goods, infringement handling agencies shall apply appropriate measures specified at Point c, Clause 1 of this Article.
3. Raw materials, materials and means with the sole function of creating and commercializing goods bearing counterfeit marks, goods bearing counterfeit geographical indications or goods infringing upon industrial property rights or plant variety rights or actually used solely for such purpose shall be regarded as raw materials, materials and means used mainly for the production and trading of goods bearing counterfeit marks, goods bearing counterfeit geographical indications or goods infringing upon industrial property rights or plant variety rights.
4. Infringement handling agencies shall, on a case-by-case basis, decide to apply the measures specified at Points a and b, Clause 1 of this Article or, at the request of rights holders, force organizations or individuals producing infringing goods to recall infringing goods already put into their distribution channels in order to apply the measures specified at Points a and b, Clause 1 of this Article or other measures, if deeming it appropriate. In the process of issuing infringement handling decisions, infringement handling agencies may consider related parties’ proposals on infringement handling.
Article 97. Forcible distribution or putting into non-commercial use
1. Forcible distribution or forcible putting into non-commercial use of goods bearing counterfeit marks, goods bearing counterfeit geographical indications or goods infringing upon industrial property rights or plant variety rights must satisfy the following conditions:
a/ The goods have use value and are neither harmful to human health, domestic animals, plants and the environment nor cultural products with harmful contents;
b/ Infringing elements have been removed from the goods;
c/ The distribution and use of the goods are not for the profit-making purpose and do not unreasonably affect the normal exploitation of the rights of the holders of industrial property rights or plant variety rights, with priority given to humanitarian or charitable purposes or public interests;
d/ Persons to whom the goods are distributed or who receive the goods for use are not potential customers of the holders of industrial property rights or plant variety rights.
2. The provisions of Clause 1 of this Article also apply to raw materials, materials and means used mainly to produce and trade in goods bearing counterfeit marks, goods bearing counterfeit geographical indications or goods infringing upon industrial property rights or plant variety rights.
Article 98. Forcible destruction
Measures of forcible destruction of goods bearing counterfeit marks, goods bearing counterfeit geographical indications, goods infringing upon industrial property rights or plant variety rights, or raw materials, materials and means used mainly for production and trading of such goods shall be applied in case the conditions for applying the measure of forcible distribution or putting into non-commercial use of goods specified in Article 97 of this Decree are not fully satisfied.
Chapter IV
CONTROL OF EXPORTED AND IMPORTED GOODS RELATED TO INDUSTRIAL PROPERTY RIGHTS OR PLANT VARIETY RIGHTS
Article 99. The right to request control of exported and imported goods related to industrial property rights or plant variety rights
Holders of industrial property rights or plant variety rights may file, directly or through their lawful representatives, requests for inspection and supervision to detect exported or imported goods showing signs of infringement of industrial property rights or plant variety rights, or requests for suspension of customs procedures for exported or imported goods suspected of infringing upon industrial property rights or plant variety rights.
Article 100. Competence to receive requests
Customs offices have the competence to receive requests for inspection and supervision or requests for suspension of customs procedures under Clause 1, Article 75 of the Customs Law.
Article 101. Procedures for processing requests
1. Within 20 days after receiving a complete dossier of request for inspection and supervision of exported or imported goods or within 2 working hours after receiving a complete dossier of request for suspension of customs procedures, a customs office shall check the request, issue a notice of acceptance of the request if the requester has fulfilled the obligations specified at Points a, b and c, Clause 1, and in Clause 2, Article 217 of the Law on Intellectual Property. In case of rejection of the request, the customs office shall issue a written reply to the requester, clearly stating the reason.
2. After accepting a request for inspection and supervision of exported and imported goods, the General Department of Vietnam Customs shall notify the acceptance of the request to the concerned provincial-level Customs Department and the designated agency of the General Department of Vietnam Customs for carrying out inspection and supervision. Based on the notification of the General Department of Vietnam Customs mentioned in this Clause, the concerned provincial-level Customs Department and the designated agency of the General Department of Vietnam Customs shall search for data on the system for implementation within the areas under their management.
3. Customs Branches shall carry out inspection and supervision to detect goods showing signs of infringement or issue decisions to suspend customs procedures on the basis of requests for suspension of customs procedures.
Article 102. Order and procedures for handling goods suspected of infringement
1. In case of detecting a goods showing signs of infringement, at the request of the holder of industrial property rights or plant variety rights or to exercise the competence to impose administrative sanctions, the customs office shall issue a decision to suspend customs procedures, notify the holder of industrial property rights or plant variety rights and the shipment owner of the suspension of customs procedures for the shipment, which must clearly state names, addresses, fax numbers and contact telephone numbers of the parties, and reasons for, and duration of, the suspension of customs procedures.
2. The customs office shall resume customs procedures for shipments subject to suspension of customs procedures under Clause 3, Article 218 of the Law on Intellectual Property and in the following cases:
a/ The decision on suspension of customs procedures is terminated or revoked under a decision on complaint or denunciation settlement;
b/ The requester for suspension of customs procedures withdraws the request.
Article 103. Competence, order and procedures for suspension of customs procedures
1. In the course of conducting inspection, supervision and control, if having clear grounds to believe that imported goods or exported goods are goods bearing counterfeit marks or goods bearing counterfeit geographical indications, Customs Branches shall take the initiative in issuing decisions on suspension of customs procedures for such goods.
2. Customs Branches shall immediately notify such suspension to the rights holders of marks or geographical indications if having contact information and to importers or exporters.
3. The period of suspension of customs procedures is 10 days after Customs Branches give notification to the rights holders under Clause 2 of this Article.
4. During the period of suspension of customs procedures, Customs Branches that have issued decisions on suspension of customs procedures shall:
a/ Request importers or exporters or the rights holders of marks or geographical indications (if contact information is available) to provide goods-related documents (such as catalogs, assessment conclusions, overseas documents and results of the handling of similar cases, etc.);
b/ Take samples or permit related organizations and individuals to take samples for assessment, additional assessment or re-assessment at specialized customs organizations or other assessment organizations under regulations (when necessary);
c/ Coordinate and discuss with state management agencies in charge of industrial property when there is a dispute over or complaint about the rights holders, protectability, scope of protection of ownership rights to marks or geographical indications, and competence to handle violations;
d/ Report to provincial-level Customs Departments and the General Department of Vietnam Customs for directing the prompt settlement of complicated cases.
5. Expiration of the period of suspension of customs procedures:
a/ In case a customs office identifies that the goods subject to suspension of customs procedures are the goods bearing counterfeit marks or goods bearing counterfeit geographical indications and that a violation falls within its competence, it shall administratively handle an act of infringing upon rights to marks or geographical indications, goods bearing counterfeit marks or goods bearing counterfeit geographical indications in accordance with law. If identifying that such infringing act falls beyond its competence, the customs office shall transfer such case to another agency in charge of intellectual property rights protection
to handle;
to handle;
b/ In case of initiation of a civil lawsuit, the customs office shall abide by the court ruling;
c/ In case of receiving a notice from the state management agency in charge of industrial property rights of a dispute over or complaint about rights holders, protectability, or scope of protection of ownership rights to marks or geographical indications, the customs office shall continue carrying out customs procedures for the goods shipment unless it has issued a decision to accept the case according to procedures for handling of administrative violations;
d/ If identifying that an infringing act shows signs of a crime in accordance with the Penal Code, the customs office shall transfer it to a competent agency for conducting investigation and prosecution in accordance with law;
dd/ In case the customs office identifies that the goods subject to suspension of customs procedures are not the goods bearing counterfeit marks or goods bearing counterfeit geographical indications, it shall continue carrying out customs procedures for the goods shipment and notify thereof to the concerned parties.
6. In case a Customs Branch takes the initiative in suspending customs procedures in contravention of regulations, thus causing damage to a goods owner, it shall pay compensation and arising expenses to the goods owner in accordance with law.
Article 104. Procedures for control of exported goods and imported goods related to industrial property rights and plant variety rights
Procedures for control of exported goods and imported goods related to industrial property rights and plant variety rights must comply with this Decree and the customs law.
Chapter V
ASSESSMENT OF INDUSTRIAL PROPERTY AND PLANT
VARIETY RIGHTS
VARIETY RIGHTS
Section 1
ASSESSORS OF INDUSTRIAL PROPERTY OR PLANT VARIETY RIGHTS AND ORGANIZATIONS IN CHARGE OF ASSESSMENT OF INDUSTRIAL PROPERTY OR PLANT VARIETY RIGHTS
Article 105. Forms of practice of assessors of industrial property or plant variety rights
1. An assessor of industrial property or plant variety rights may practice in an organization in charge of assessment of industrial property or plant variety rights in the name of such organization or as an independent assessor.
2. Assessors’ forms of practice shall be stated in the List of assessors of industrial property and the List of assessors of plant variety rights specified in Articles 109 and 112 of this Decree.
3. Information on an assessor practicing in the name of an organization in charge of assessment of industrial property or plant variety rights shall be stated in the List of assessors of organizations according to the procedures for grant of certificates of assessment organization.
Article 106. Rights and obligations of assessors of industrial property or plant variety rights
1. Assessors of industrial property or plant variety rights have the following rights:
a/ To refuse to perform the assessment in case relevant documents are insufficient or invalid for making assessment conclusions, or for cases not falling in the fields of assessment stated in their assessor cards;
b/ To refuse to receive specimens for assessment in case such specimens are likely to cause harm to the health or too bulky while storage conditions are not satisfied;
c/ To use appraisal results or professional conclusions or expert opinions to serve the assessment;
d/ For independent assessors, to request agencies, organizations and individuals to provide information and documents relating to assessment objects for performance of the assessment, unless otherwise provided by law;
dd/ To exercise other rights in accordance with law.
2. Assessors of industrial property or plant variety rights have the following obligations:
a/ To practice in the fields of assessment stated in assessor cards;
b/ To perform assessment in adherence to the principles specified in Clause 4, Article 201 of the Law on Intellectual Property;
c/ To formulate assessment dossiers; to explain assessment conclusions when so requested by the assessment requesters, organizations or individuals with related rights and interests, or competent agencies;
d/ To preserve and retain documents and specimens related to assessment cases in accordance with law;
dd/ To make independent assessment conclusions and be held responsible for their assessment conclusions; to pay compensation if intentionally making false assessment conclusions, causing damage to related organizations and individuals;
e/ To refuse to perform assessment if having rights and interests related to assessment objects or cases, when there are other reasons that are likely to affect the objectivity of the assessment conclusions, or in case of being required to refuse to perform assessment under the provisions of another law;
g/ To keep confidential information and documents at the request of assessment requesters and pay compensation if disclosing confidential information, causing damage to related agencies, organizations and individuals;
h/ To be held responsible before law if abusing the assessors’ capacity and assessment activities for self-seeking purposes or intentionally making false assessment conclusions;
i/ To make biannual and annual reports on assessment activities and send them to the state management agency in charge of industrial property or plant variety rights.
k/ To perform other obligations in accordance with law.
Article 107. Rights and obligations of organizations in charge of assessment of industrial property and plant variety rights
1. Organizations in charge of assessment of industrial property or plant variety rights have the following rights:
a/ To hire assessors of industrial property or plant variety rights to perform assessment on a case-by-case basis;
b/ To request agencies, organizations and individuals to provide information and materials related to assessment objects to perform the assessment, unless otherwise provided by law;
c/ To exercise other rights in accordance with law.
2. Organizations in charge of assessment of industrial property or plant variety rights have the following obligations:
a/ To operate in the fields of assessment stated in certificates of assessment organization;
b/ To perform assessment in adherence to the principles specified in Clause 4, Article 201 of the Law on Intellectual Property;
c/ To preserve and retain documents and specimens related to assessment cases in accordance with law;
d/ To keep confidential information and documents at the request of assessment requesters and pay compensation if disclosing confidential information, causing damage to related agencies, organizations and individuals;
dd/ To refuse to perform assessment in case of being required to refuse to perform assessment under the provisions of another law;
e/ To be held responsible before law if abusing assessors’ capacity and assessment activities for self-seeking purposes or intentionally making false assessment
conclusions;
conclusions;
g/ To make biannual and annual reports on assessment activities and send them to the state management agency in charge of industrial property rights or plant variety rights.
h/ To perform other obligations in accordance with law.
Section 2
CONTENTS OF STATE MANAGEMENT OF INDUSTRIAL PROPERTY ASSESSMENT
Article 108. Industrial property assessment competency testing
1. Industrial property assessment competency tests shall be organized to evaluate the capability to use knowledge and professional skills to evaluate and conclude on issues related to industrial property rights.
2. The organization of industrial property assessment competency tests is as follows:
a/ The state management agency in charge of industrial property rights has the competence to organize industrial property assessment competency tests;
b/ The state management agency in charge of industrial property rights shall post a notice on its Portal, stating the conditions for test participation, procedures for submitting dossiers, and contents and expected time and venue of the tests;
c/ A test shall be organized within 3 months from the date at least 5 persons register for the test who have their applications accepted in accordance with Clause 4 of this Article;
d/ The state management agency in charge of industrial property rights shall notify the test result to the test takers. The test takers may request the state management agency in charge of industrial property rights to review the test result;
dd/ The test result is valid for 5 years for requesting the state management agency in charge of industrial property rights to grant industrial property assessor cards.
3. The council for industrial property assessment competency testing shall be established by the state management agency in charge of industrial property rights and tasked to organize industrial property assessment competency tests in accordance with the Regulation on industrial property assessment competency testing issued by such agency.
4. The registration for taking an industrial property assessment competency test is as follows:
a/ An individual who fully meets the following conditions may register for taking a test in accordance with this Article:
a1/ Being a Vietnamese citizen who has full civil act capacity;
a2/ Permanently residing in Vietnam;
a3/ Having good moral qualities;
a4/ Possessing a university or higher degree in the major suitable to the field in which he/she registers for the test;
a5/ Having at least 5 years’ experience in the field in which he/she registers for the test.
b/ A dossier of registration for taking an industrial property assessment competency test shall be submitted to the state management agency in charge of industrial property rights, which must comprise:
b1/ A registration form for taking an industrial property assessment competency test, made according to Form No. 01 provided in Appendix VI to this Decree;
b2/ A copy of the graduate or postgraduate diploma (enclosed with the original for collation, unless the copy has been certified);
b3/ A copy of the recruitment decision or labor contract and other documents proving the experience of professional practice (enclosed with the original for collation, unless the copy has been certified);
b4/ Two 3cm x 4cm photos of the applicant;
b5/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
c/ Within 20 days after receiving a dossier, the state management agency in charge of industrial property rights shall process the dossier as follows:
c1/ In case the dossier is valid, to issue a notice of acceptance of the dossier, clearly stating whether the test plan has been set or has not been set due to an insufficient number of applicants for the test as specified in Clause 2 of this Article;
c2/ In case the dossier contains errors, to send a notice of the intent of refusal to accept the dossier, clearly stating the reason, and fix a time limit of one month from the date of notice issuance for the applicant to correct the errors or make objections. Past the fixed time limit, if the applicant fails to correct the errors or provides unsatisfactory corrections, makes no objection or provides groundless objections, the state management agency in charge of industrial property rights shall issue a decision to refuse the acceptance of the dossier, clearly stating the reason.
Article 109. Grant, re-grant and revocation of industrial property assessor cards
1. The state management agency in charge of industrial property rights has the competence to grant, re-grant or revoke industrial property assessor cards, and draw up and announce the List of industrial property assessors according to the procedures specified in Clauses 2, 3, 4 and 5 of this Article.
2. The grant of industrial property assessor cards is as follows:
a/ An individual who fully meets the conditions specified in Clause 3, Article 201 of the Law on Intellectual Property shall be granted an industrial property assessor card by the state management agency in charge of industrial property rights if he/she applies for an assessor card and pays charges and fees under regulations. The conditions for grant of an industrial property assessor card specified in Clause 3, Article 201 of the Law on Intellectual Property are construed as follows:
a1/ “Permanently residing in Vietnam” means having a place of permanent residence in Vietnam in accordance with the law on residence;
a2/ “Having good moral qualities” means not being administratively handled for violations of the law on industrial property or for breach of professional ethics, and not being examined for penal liability, or having been convicted without having had criminal records expunged;
a3/ “Possessing a university or higher degree in the major suitable to the field in which the applicants register for assessor cards” means possessing graduate or postgraduate diploma in natural sciences or science and technology, for assessment of inventions and layout designs; or possessing graduate or postgraduate diploma in any major, for other fields of assessment;
a4/ “Having at least 5 years’ experience in the field in which the applicants apply for assessor cards” means having directly engaged in settlement of disputes and complaints, inspection, examination, legal affairs, or legal consultancy regarding industrial property, or scientific research with the title of researcher, or teaching industrial property issues with the title of lecturer with at least 5 years’ experience, or having directly engaged in the jobs regarding the interpretation and guidance on law implementation and formulation of regulations, having at least 5 years’ experience in preparation or approval of examination results of contents of applications for registration of inventions (including also utility solutions), industrial designs, marks, or geographical indications (including also appellations of origin of goods) at national or international agencies in charge of industrial property, or having at least 5 years’ experience in industrial property representation service practice.
b/ A dossier of application for an industrial property assessor card shall be submitted to the state management agency in charge of industrial property rights, which must comprise:
b1/ An application form for an assessor card (made according to Form No. 02 provided in Appendix VI to this Decree);
b2/ A copy of people’s identity card (enclosed with the original for collation, unless the copy has been certified), except case in which information on the applicant’s citizen identity card number is included in the application form for an assessor card;
b3/ Two 3cm x 4cm photos of the applicant;
b4/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
c/ Within 1 month after receiving a dossier, the state management agency in charge of industrial property rights shall process the dossier as follows:
c1/ In case the dossier is valid, to issue a decision on grant of an assessor card, stating the card holder’s full name, date of birth, permanent residence address, people’s identity card/citizen identity card number, assessor card number, and fields of assessment of the card holder; record the grant of the card in the National Register of Industrial Property and publish the information thereon on the Official Gazette of Industrial Property and its Portal within 2 months from the date of decision issuance;
c2/ In case the dossier is invalid, to send a notice of the intent of refusal to accept the dossier, clearly stating the reason, and fix a time limit of one month from the date of notice issuance for the applicant to correct errors or make objections. Past the fixed time limit, if the applicant fails to correct errors or provides unsatisfactory corrections, makes no objection or provides groundless objections, the state management agency in charge of industrial property rights shall issue a decision to refuse the grant of an assessor card, clearly stating the reason;
c3/ Assessor cards shall be made according to Form No. 04 provided in Appendix VI to this Decree.
3. The re-grant of an industrial property assessor card is as follows:
a/ In the following cases, the state management agency in charge of industrial property rights shall issue a decision to re-grant an industrial property assessor card if the assessor so requests and pays charges and fees under regulations:
a1/ The card is lost, defective, or damaged (torn, dirty, faded, etc.) to the extent that it becomes unusable;
a2/ There is a change in the information stated in the card specified at Point c1, Clause 2 of this Article.
b/ The assessor shall be obliged to request the state management agency in charge of industrial property rights to re-grant an industrial property assessor card for recording the changes specified at Point a2 of this Clause;
c/ A dossier of request for re-grant of an industrial property assessor card shall be submitted to the state management agency in charge of industrial property rights, which must comprise:
c1/ A request form for re-grant of an assessor card, made according to Form No. 03 provided in Appendix VI to this Decree;
c2/ A copy of people’s identity card (enclosed with the original for collation, unless the copy has been certified), except case in which information on the citizen identity card number is included in the request form, for the case specified at Point a2 of this Clause;
c3/ Two 3cm x 4cm photos of the applicant;
c4/ Copies of charge and fee receipts (in case charges and fees are paid via postal services or directly into the account of the state management agency in charge of industrial property rights).
d/ The processing of a dossier of request for re-grant of an industrial property assessor card is as follows:
d1/ Within 20 days after receiving a dossier of request for re-grant of an industrial property assessor card, the state management agency in charge of industrial property rights shall process the dossier according to the procedures for grant of industrial property assessor cards specified at Point c, Clause 2 of this Article.
d2/ In case the industrial property assessor card has errors made by the state management agency in charge of industrial property rights, the latter shall re-grant an industrial property assessor card within 5 working days after receiving the request from the card holder without collecting the charge.
4. The revocation of an industrial property assessor card is as follows:
a/ An industrial property assessor card shall be revoked in the following cases:
a1/ There are evidences to believe that the card is granted in contravention of law;
a2/ The card holder no longer satisfies the conditions specified in Clause 3, Article 201 of the Law on Intellectual Property;
a3/ The card holder no longer performs assessment operations;
a4/ The card holder is sanctioned in the form of revocation of the assessor card under a decision of a competent agency.
b/ The state management agency in charge of industrial property rights shall, by itself or at the request of an organization or individual, revoke an industrial property assessor card if there are grounds to believe that the card holder falls into one of the cases specified at Point a of this Clause;
c/ A dossier of request for revocation of an industrial property assessor card shall be submitted to the state management agency in charge of industrial property rights, which must comprise:
c1/ A request form for revocation of an industrial property assessor card;
c2/ Evidences proving the grounds for request for the card revocation.
d/ The procedures for revocation of an industrial property assessor card are as follows:
d1/ In case an organization or individual submits a request the revocation of an industrial property assessor card in accordance with Point c of this Clause, within 1 month after receiving the request, the state management agency in charge of industrial property rights shall issue a notice of such request to the card holder and fix a time limit of one month from the date of notice issuance for the him/her to give opinions. The state management agency in charge of industrial property rights shall, based on the opinions of the concerned parties, issue a decision to revoke the industrial property assessor card or a decision to refuse the revocation of the industrial property assessor card;
d2/ In case there are grounds to believe that the industrial property assessor card holder no longer satisfies the conditions specified in Clause 2, Article 201 of the Law on Intellectual Property, the state management agency in charge of industrial property rights shall issue a notice of the intent of revocation of the card to the card holder and fix a time limit of one month from the date of notice issuance for him/her to give opinions. The state management agency in charge of industrial property rights shall, based on the opinions of the card holder, issue a decision to revoke the industrial property assessor card or issue a notice not to revoke the industrial property assessor card to the card holder;
d3/ In case a competent state agency issues a decision to revoke the industrial property assessor card, within 1 month after receiving such decision, the state management agency in charge of industrial property rights shall issue a decision to revoke the industrial property assessor card;
d4/ The state management agency in charge of industrial property rights shall record a decision on the revocation of the industrial property assessor card in the National Register of Industrial Property Assessment and publish it on the Official Gazette of Industrial Property and its Portal within 2 months from the date of decision issuance.
5. The making and posting of the List of industrial property assessors are as follows:
a/ The state management agency in charge of industrial property rights shall make the List of industrial property assessors, including the information stated in decisions on grant, re-grant and revocation of industrial property assessor cards, and annually publish or update it on its Portal;
b/ The state management agency in charge of industrial property rights shall notify the local state management agency in charge of industrial property of information on changes in assessor cards of assessors practicing in the name of the corresponding local industrial property assessment organization to serve the grant, re-grant or revocation of certificates of local assessment organizations within 2 months from the date of decision issuance.
Article 110. Grant, re-grant and revocation of certificates of industrial property assessment organization
1. The competence to grant, re-grant and revoke certificates of industrial property assessment organization is as follows:
a/ The state management agency in charge of industrial property rights is competent to grant, re-grant and revoke certificates of industrial property assessment organization specified in Clauses 2, 3, 4 and 5 of this Article for non-business units being science and technology organizations registering science and technology activities at the Ministry of Science and Technology;
b/ Local state management agencies in charge of industrial property are competent to grant, re-grant and revoke certificates of industrial property assessment organization specified in Clause 2, 3, 4 and 5 of this Article for the organizations specified in Clause 2, Article 201 of the Law on Intellectual Property, that make business registration or operation registration at local competent state agencies.
2. Certificates of industrial property assessment organization shall be granted as follows:
a/ An organization meeting the conditions specified in Clause 2, Article 201 of the Law on Intellectual Property shall be granted a certificate of industrial property assessment organization by the state management agency in charge of industrial property rights or a local state management agency in charge of industrial property if it so requests and pays charges and fees in accordance with law;
b/ A dossier of application for a certificate of industrial property assessment organization submitted to the state management agency in charge of industrial property rights or a local state management agency in charge of industrial property must comprise:
b.1/ An declaration form for grant of a certificate of industrial property assessment organization, made according to Form No. 05 provided in Appendix VI to this Decree;
b.2/ Copy(ies) of recruitment decision(s) or labor contract(s) between the organization and its industrial property assessor(s) (the original(s) must be produced for collation, unless the copy(ies) has/have been certified);
b.3/ Copies of charge and fee receipts (in case charges and fees are paid via the postal service or directly into the account of the agency competent to perform the procedures).
c/ Within 1 month after receiving the dossier, the state management agency in charge of industrial property rights or local state management agency in charge of industrial property shall:
c.1/ If the dossier is valid, issue a decision on grant of a certificate of industrial property assessment organization, clearly stating the name, transaction name, address, and identification number of the organization and its fields of expertise corresponding to the fields of expertise of its assessors and the list of industrial property assessors being its members; record in the National Register of Industrial Property Assessment and publish the decision in the Official Gazette of Industrial Property and Portal of the state management agency in charge of industrial property rights within 2 months from the issuance date of the decision;
c.2/ If the dossier contains errors, issue a notice of intent to reject the dossier, clearly stating the reason, and set a 1-month time limit from the date of issuance of the notice for the applicant to correct the errors or make objection. Past the set time limit, if the applicant fails to correct the errors, corrects the errors but the result is unsatisfactory or does not make objection or makes an objection, which, however, is implausible, issue a decision on refusal to grant a certificate of industrial property assessment organization, clearly stating the reason;
c.3/ Certificates of industrial property assessment organization shall be made according to Form No. 07 in Appendix VI to this Decree.
3. Certificates of industrial property assessment organizations shall be re-granted as follows:
a/ The state management agency in charge of industrial property rights or a local state management agency in charge of industrial property shall issue a decision on re-grant of a certificate of industrial property assessment organization for an industrial property assessment organization if the latter so requests and pays charges and fees according to regulations in the following cases:
a.1/ The certificate is lost, mistaken, or damaged (torn, dirty, faded, etc.) to an extent that is is unusable;
a.2/ There is a change in the information stated in the certificate under Point c.1, Clause 2 of this Article.
b/ The industrial property assessment organization is obliged to carry out the procedures for requesting the agency that has granted the certificate to re-grant such certificate for recording the changes specified at Point c.1, Clause 2 of this Article;
c/ A dossier of request for re-grant of a certificate of industrial property assessment organization submitted to the state management agency in charge of industrial property rights or local state management agency in charge of industrial property must comprise:
c.1/ A declaration form for re-grant of a certificate of industrial property assessment organization, made according to Form No. 06 in Appendix VI to this Decree;
c.2/ A copy of the modified certificate of business registration or certificate of operation registration of the industrial property assessment organization in case there is a change in the organization’s information (the original must be produced for collation, unless the copy has been certified), except the case where the declaration form contains information on the enterprise identification number;
c.3/ Copy(ies) of the recruitment decision(s) , labor contract(s) or decision(s) on labor contract termination between the organization and its assessor(s) in case there is a change in the organization’s industrial property assessor(s) (the original must be produced for collation, unless the copy(ies) has/have been certified);
c.4. Copies of charge and fee receipts (in case charges and fees are paid via the postal service or directly into the account of the agency competent to perform the procedures).
d/ A dossier of request for re-grant of a certificate of industrial property assessment organization shall be processed as follows:
d.1/ Within 20 days after receiving the dossier, the state management agency in charge of industrial property rights or local state management agency in charge of industrial property shall consider the dossier according to the same procedures as those for granting a certificate of industrial property assessment organization specified at Point c, Clause 2 of this Article;
d.2/ In case the certificate contains mistakes due to the fault of the state management agency in charge of industrial property rights or local state management agency in charge of industrial property that has granted the certificate, the agency that has granted the certificate shall re-grant the certificate within 5 working days after receiving the request of the industrial property assessment organization without collecting any charge.
4. The revocation of certificates of industrial property assessment organization is as follows:
a/ A certificate of industrial property assessment organization shall be revoked in the following cases:
a.1/ There is evidence confirming that the certificate has been granted in contravention of law;
a.2/ The industrial property assessment organization no longer satisfies the conditions specified in Clause 2, Article 201 of the Law on Intellectual Property;
a.3/ The industrial property assessment organization terminates its assessment operations;
a.4/ The industrial property assessment organization commits violations and is subject to the handling measure of revocation of certificate at the proposal of a competent state agency.
b/ The state management agency in charge of industrial property rights or local state management agency in charge of industrial property shall, proactively or at the request of an organization or individual, revoke the certificate of industrial property assessment organization if there are grounds to affirm that the industrial property assessment organization falls into one of the cases specified at Point a of this Clause;
c/ A dossier of request for revocation of a certificate of industrial property assessment organization submitted to the agency that has granted such certificate must comprise:
c.1/ A request for revocation of the certificate of industrial property assessment organization;
c.2/ Evidence proving the grounds for requesting the revocation of the certificate;
d/ The procedures for revoking a certificate of industrial property assessment organization are as follows:
d.1/ In case an organization or individual requests the revocation of a certificate of industrial property assessment organization under Point c of this Clause, within 1 month from the date of receiving the request, the agency that has granted the certificate shall issue a written notice of such request for the organization granted the certificate, and set a 1-month time limit from the date of issuance of the notice for the organization to give its opinions. Based on the opinions of related parties, the agency that has granted the certificate shall issue a decision on revocation of the certificate or decision on refusal to revoke the certificate and send it to related parties;
d.2/ In case there are grounds to affirm that the organization granted the certificate no longer satisfies the conditions specified in Clause 2, Article 201 of the Law on Intellectual Property, the agency that has granted the certificate shall issue a written notice of intent to revoke the certificate and set a 1-month time limit from the date of issuance of the notice for the organization to give its opinions. Based on the opinions of the organization, the agency that has granted the certificate shall issue a decision on revocation of the certificate or a notice of non-revocation of the certificate to the organization;
d.3/ In case there is a decision on revocation of the certificate of industrial property assessment organization from a competent agency, within 1 month after receiving the decision, the agency that has granted the certificate shall issue a decision on revocation of the certificate;
d.4/ The state management agency in charge of industrial property rights shall record the decision on revocation of the certificate of industrial property assessment organization to the National Register of Industrial Property Assessment and publish it on the Official Gazette of Industrial Property and its Portal within 2 months from the date of issuance.
5. The formulation and publicization of the List of industrial property assessment organizations are as follows:
a/ The state management agency in charge of industrial property rights shall formulate the List of industrial property assessment organizations, including the information recorded according to decisions on grant, re-grant and revocation of certificates of industrial property assessment organization and annually publish and update it on its Portal;
b/ Local state management agencies in charge of industrial property shall notify the state management agency in charge of industrial property rights of information on the grant, re-grant and revocation of every certificate of industrial property assessment organization within 1 month after issuing the decision thereon to serve the formulation of the List of industrial property assessment organizations under in this Clause.
Section 3
CONTENTS OF STATE MANAGEMENT OF ASSESSMENT OF PLANT VARIETY RIGHTS
Article 111. Competency testing on assessment of plant variety rights
1. Competency testing on assessment of plant variety rights shall be carried out to evaluate the capacity of using professional knowledge and skills to evaluate and make conclusions on matters related to plant variety rights.
2. The organization of a competency test on assessment of plant variety rights is as follows:
a/ The state management agency in charge of plant variety rights is the agency competent to organize competency tests on assessment of plant variety rights;
b/ The state management agency in charge of plant variety rights shall publicize on its Portal an announcement stating conditions for participation in the test, procedures for submission of dossiers, content of the test and scheduled time and place of the test;
c/ The test must be organized within 3 months from the date when at least 5 persons who register for participation in the test have their dossiers accepted under Clause 3 of this Article;
d/ Test results shall be notified to test participants by the state management agency in charge of plant variety rights. Test participants may request the state management agency in charge of plant variety rights to review test results;
dd/ Test results shall be valid for 5 years for use for requesting provincial-level People’s Committees to grant plant variety rights assessor cards.
3. The council for competency testing on assessment of plant variety rights shall be established by the state management agency in charge of plant variety rights and tasked to organize competency testing on assessment of plant variety rights according to the Regulation on competency testing on assessment of plant variety rights promulgated by the state management agency in charge of plant variety rights.
The registration for participating in a competency test on assessment of plant variety rights is as follows:
a/ A person fully satisfying the following conditions shall be eligible for registering for participating in the test under this Article:
a.1/ Being a Vietnamese citizen with full civil act capacity;
a.2/ Permanently residing in Vietnam;
a.3/ Having good moral qualities;
a.4/ Possessing a university or higher degree in majors suitable to the field of expertise in which he/she registers for testing;
a.5/ Having at least 5 years’ experience in the above-mentioned field of expertise.
b/ A dossier of registration for participation in a competency test of assessment of plant variety rights submitted to the state management agency in charge of plant variety rights must comprise:
b.1/ A declaration form for registration for participation in a competency test on assessment of plant variety rights, made according to Form No. 08 provided in Appendix VI to this Decree;
b.2/ A certified copy of the registrant’s university degree or postgraduate degree;
b.3/ A certified copy of the registrant’s recruitment decision, labor contract, or another document proving his/her professional experience;
b.4/ Two 3cm x 4cm photos of the registrant;
b.5/ Charge and fee receipts (in case charges and fees are paid via the postal service or directly into the account of the agency competent to perform the procedures).
c/ Within 15 days after receiving the dossier, the state management agency in charge of plant variety rights shall process the dossier according to the following regulations:
c.1/ In case the dossier is valid, the state management agency in charge of plant variety rights shall issue a notice of dossier acceptance, clearly stating whether the test has been scheduled or yet to be scheduled as the number of registrants remains not sufficient as specified in Clause 2 of this Article;
c.2/ In case the dossier has errors, the state management agency in charge of plant variety rights shall issue a notice of intent to reject the dossier, clearly stating the reason, and set a 1-month time limit from the date of issuance of the notice for the registrant to correct the errors or make objection. Past the set time limit, if the registrant fails to correct the errors or corrects the errors but the result is unsatisfactory or does not make any objection or make an objection which, however, is implausible, the state management agency in charge of plant variety rights shall issue a decision on rejection of the dossier, clearly stating the reason.
Article 112. Grant, re-grant and revocation of plant variety rights assessor cards
1. Provincial-level People’s Committees are competent to grant, re-grant and revoke plant variety rights assessor cards according to the procedures specified in Clauses 2, 3 and 4 of this Article.
2. A plant variety rights assessor card shall be granted as follows:
a/ A person who fully satisfies the conditions specified in Clause 3, Article 201 of the Law on Intellectual Property shall be granted a plant variety rights assessor card by the concerned provincial-level People’s Committee if he/she so requests and pays charges and fees according to regulations. Conditions for grant of a plant variety rights assessor card specified in Clause 3, Article 201 of the Law on Intellectual Property shall be understood as follows:
a.1/ “Being permanently residing in Vietnam” means having a place of domicile in accordance with the law on residence;
a.2/ “Having good moral qualities” means not being subject to any administrative handling measures for violations of the law on plant varieties or violations of professional ethics and not being subject to examination of penal liability or having been convicted but not yet had the convictions expunged;
a.3/ “Possessing a university or higher degree of the major suitable to the field of expertise in which he/she applies for an assessor card” means having a university or postgraduate degree in the major of horticulture, agronomy, plant science or another major related to plant varieties;
a.4/ “Having at least 5 years’ experience in professional operations in the field in which he/she applies for an assessor card” means having personally engaged in compiling, and guiding the implementation of, legal documents on plant varieties, settling plant variety-related disputes, complaints and denunciations, and inspection of plant variety-related issues at state management agencies on protection of plant varieties, researching and teaching on protection of plant varieties at lawfully established and operating research or training organizations, or providing legal consultancy on plant variety protection in the capacity of representatives of plant variety rights.
b/ A dossier of application for a plant variety rights assessor card must comprise:
b.1/ A declaration form for grant of an assessor card, made according to Form No. 09 in Appendix VI to this Decree;
b.2/ The original or a certified copy of the certificate of passing a competency test on assessment of plant variety rights;
b.3/ A copy of the university or postgraduate degree in horticulture, agronomy or a major related to plant varieties;
b.4/ A competent agency’s certification that the applicant has at least 5 years’ experience in professional operations in the field of plant varieties;
b.5/ Two 3cm x 4cm photos of the applicant;
b.6/ Charge and fee receipts (in case charges and fees are paid via the postal service or directly into the account of the agency competent to perform the procedures).
c/ Within 1 month from the date of receiving the dossier, the provincial-level People’s Committee shall consider the dossier as follows:
c.1/ In case the dossier is valid, the provincial-level People’s Committee shall issue a decision on grant of the assessor card, clearly stating the card holder’s full name, address of permanent residence, number of people’s identity card/citizen identity card, and field of assessment expertise;
c.2/ In case the dossier is invalid, the provincial-level People’s Committee shall issue a notice of intent to reject the dossier, clearly stating the reason, and set a 1-month time limit from the date of issuance of the notice for the applicant to correct the errors or make objection. Past the set time limit, if the applicant fails to correct the errors or corrects the errors but the result is unsatisfactory or does not make any objection or makes an objection which, however, is implausible, the provincial-level People’s Committee shall issue a decision on refusal to grant the assessor card, clearly stating the reason.
c.3/ A plant variety rights assessor card shall be made according to Form No. 10 in Appendix VI to this Decree.
3. A plant variety rights assessor card shall be re-granted as follows:
a/ The provincial-level People’s Committee shall issue a decision on re-grant of the plant variety rights assessor card if the concerned assessor so requests and pays charges and fees under regulations in the following cases:
a.1/ The card is lost, mistaken or damaged (torn, dirty, faded, etc.) to an extent that it is unusable;
a.2/ There is a change in the information recorded in the card specified at Point c.1, Clause 2 of this Article.
b/ An assessor is obliged to request the provincial-level People’s Committee to re-grant his/her plant variety rights assessor card for recording the changes specified at Point a.2 of this Clause.
c/ A dossier of request for re-grant of a plant variety rights assessor card submitted to the provincial-level People’s Committee must comprise:
c.1/ A declaration form for re-grant of an assessor card, made according to Form No. 09 in Appendix VI to this Decree;
c.2/ Two 3cm x 4cm photos of the applicant;
c.3/ Charge and fee receipts (in case charges and fees are paid via the postal service or directly into the account of the agency competent to perform the procedures).
d/ A dossier of request for re-grant of a plant variety rights assessor card shall be processed as follows:
d.1/ Within 15 days after receiving the dossier, the provincial-level People’s Committee shall consider the dossier according to the same procedures as those for grant of a plant variety rights assessor card specified at Point c, Clause 2 of this Article;
d.2/ In case the plant variety rights assessor card contains mistakes due to the fault of the provincial-level People’s Committee, it shall re-grant the plant variety rights assessor card within 5 working days after receiving the request from the card holder without collecting any charge.
4. The revocation of a plant variety rights assessor card is as follows:
a/ A plant variety rights assessor card shall be revoked in the following cases:
a.1/ There is evidence confirming that the card has been issued in contravention of law;
a.2/ The card holder no longer satisfies the conditions specified in Clause 3, Article 201 of the Law on Intellectual Property;
a.3/ The card holder discontinues assessment operations;
a.4/ The card holder is subject to sanctioning in the form of revocation of assessor card under a competent agency’s decision.
b/ The provincial-level People’s Committee shall, proactively or at the request of an organization or individual, revoke an assessor card if there are grounds to affirm that the card holder falls into one of the cases specified at Point a of this Clause;
c/ A dossier of request for revocation of a plant variety rights assessor card must comprise:
c.1/ A written request for revocation of the plant variety rights assessor card;
c.2/ Evidence proving the grounds to request the revocation of the plant variety rights assessor card.
d/ A plant variety rights assessor card shall be revoked according to the following order ad procedures as follows:
d.1/ In case an organization or individual requests the revocation of a plant variety rights assessor card specified at Point c of this Clause, within 1 month after receiving the request, the provincial-level People’s Committee shall issue a notice of such request to the card holder and set a 1-month time limit from the date of issuance of the notice for him/her to give opinions. The provincial-level People’s Committee shall, in consideration of the opinions of related parties, issue a decision on revocation of the plant variety rights assessor card or decision on refusal to revoke the plant variety rights assessor card to the related parties;
d.2/ If there are grounds to affirm that the card holder no longer satisfies the conditions specified in Clause 2, Article 201 of the Law on Intellectual Property, the provincial-level People’s Committee shall issue a notice of intent to revoke the plant variety rights assessor card to the card holder and set a 1-month time limit from the date of issuance of the notice for him/her to give opinions. The provincial-level People’s Committee shall, in consideration of the card holder’s opinions, issue a decision on revocation of the plant variety rights assessor card or a notice of non-revocation of the plant variety rights assessor card to such person;
d.3/ In case a competent agency issues a decision on revocation of the plant variety rights assessor card, within 1 month after receiving such decision, the provincial-level People’s Committee shall issue a decision on revocation of the plant variety rights assessor card.
5. The formulation and publicization of the List of plant variety rights assessors and notices of changes in information on plant variety rights assessor cards are as follows:
a/ The provincial-level People’s Committee shall formulate the List of plant variety rights assessors according to decisions on grant and re-grant of plant variety rights assessor cards and publicize the list on its Portal within 2 months from the decision issuance date;
b/ The provincial-level People’s Committee shall notify the state management agency in charge of plant variety rights of the List of assessors and changes in plant variety rights assessor cards of assessors working for the corresponding plant variety rights assessment organization in its locality to serve the grant, re-grant or revocation of certificates of assessment organization in the locality.
Article 113. Grant, re-grant and revocation of certificates of plant variety rights assessment organization
1. Provincial-level People’s Committees have the competence to grant, re-grant and revoke certificates of plant variety rights assessment organization, make and publicize lists of plant variety rights assessment organizations as specified in Clauses 2, 3, 4 and 5 of this Article.
2. A certificate of plant variety rights assessment organization shall be granted as follows:
a/ An organization meeting the conditions specified in Clause 2, Article 201 of the Law on Intellectual Property will be granted a certificate of plant variety rights assessment organization by a provincial-level People’s Committee if it so requests and pays charges and fees under regulations;
b/ A dossier of application for a certificate of plant variety rights assessment organization must comprise:
b1/ A declaration form for grant of a certificate of plant variety rights assessment organization, made according to Form No. 11 provided in Appendix VI to this Decree;
b2/ Certified copies of recruitment decisions or labor contracts signed by the organization and assessors conducting professional practice under the organization;
b3/ Charge and fee receipts (in case charges and fees are paid via the postal service or directly into the account of the agency competent to perform this procedure).
c/ Within 1 month after receiving a dossier, the provincial-level People’s Committee shall process the dossier as follows:
c1/ In case the dossier is valid, the provincial-level People’s Committee shall issue a decision on grant of a certificate of plant variety rights assessment organization, clearly stating the full name, transaction name and address of the organization and a list of plant variety right assessors being members of the organization; record information on the organization in a list of plant variety rights assessment organizations and publicize the list on its Portal within 5 working days after issuing the decision;
c2/ In case the dossier has errors, the provincial-level People’s Committee shall issue a notice of intent to reject the dossier, clearly stating the reason, and set a time limit of 1 month from the date of issuance of the notice for the applicant to rectify the errors or make objection. Past such time limit, if the applicant fails to rectify the errors or rectifies the errors but the result is unsatisfactory, the provincial-level People’s Committee shall issue a decision on refusal to grant a certificate of plant variety rights assessment organization, clearly stating the reason.
c3/ The certificate of plant variety rights assessment organization shall be made according to Form No. 12 provided in Appendix VI to this Decree.
3. A certificate of plant variety rights assessment organization shall be re-granted as follows:
a/ In the following cases, a provincial-level People’s Committee shall issue a decision on re-grant of a certificate of plant variety rights assessment organization if the organization so requests and pays charges and fees under regulations:
a1/ The certificate is lost, defective or damaged to an extent that it is unusable (torn, soiled, faded, etc.);
a2/ There is a change in the information recorded in the certificate as specified at Point c1, Clause 2 of this Article.
b/ If wishing to continue its operation, the plant variety rights assessment organization shall be obliged to carry out procedures to request the agency that has issued its certificate of plant variety rights assessment organization to re-grant the certificate;
c/ A dossier of request for re-grant of a certificate of plant variety rights assessment organization must comprise:
c1/ A declaration form for re-grant of a certificate of plant variety rights assessment organization, made according to Form No. 11 provided in Appendix VI to this Decree;
c2/ A certified copy of the modified business registration certificate or operation registration certificate of the plant variety rights assessment organization in case there are changes in its information, unless information on the organization’s enterprise identification number is available in the above-said declaration form;
c3/ Certified copies of recruitment decisions, labor contracts or decisions on termination of labor contracts signed by the organization and its member assessors, in case of change of plant variety rights assessors;
c4/ Charge and fee receipts (in case charges and fees are paid via the postal service or directly into the account of the agency competent to perform this procedure).
d/ A dossier of request for re-grant of a certificate of plant variety rights assessment organization shall be processed as follows:
d1/ Within 15 days after receiving the dossier, the provincial-level People’s Committee shall review the dossier according to the same procedure like that for grant of a certificate of plant variety rights assessment organization specified at Point c, Clause 2 of this Article.
d2/ In case the certificate of plant variety rights assessment organization is defective due to the fault of the provincial-level People’s Committee that has granted the certificate, the certificate-granting agency shall re-grant the certificate within 5 working days after receiving a request from the plant variety rights assessment organization without collecting any charge.
4. A certificate of plant variety rights assessment organization shall be revoked as follows:
a/ A certificate of plant variety rights assessment organization shall be revoked in the following cases:
a1/ There is evidence confirming that the certificate of plant variety rights assessment organization was granted in contravention of law;
a2/ The organization no longer meets the conditions specified in Clause 2, Article 201 of the Law on Intellectual Property;
a3/ The organization terminates its assessment activities;
a4/ The organization commits violations of law and is subject to the handling measure of revocation of certificate of plant variety rights assessment organization as proposed by a competent agency.
b/ A provincial-level People’s Committee shall proactively or at the request of an organization or individual revoke the certificate of plant variety rights assessment organization if having grounds to affirm that the concerned plant variety rights assessment organization falls in one of the cases specified at Point a of this Clause;
c/ A dossier of request for revocation of a certificate of plant variety rights assessment organization must comprise:
c1/ A request for revocation of a certificate of plant variety rights assessment organization;
c2/ Evidence proving the grounds for requesting revocation of the certificate of plant variety rights assessment organization;
d/ The procedure for revocation of a certificate of plant variety rights assessment organization is as follows:
d1/ In case an organization or individual requests revocation of the certificate of plant variety rights assessment organization as specified at Point c of this Clause, within 1 month after receiving the request, the certificate-granting agency shall issue of a notice of such request to the concerned organization and set a time limit of 1 month from the date of issuance of the notice for the organization to give its opinion. After considering opinions of the parties, the certificate-granting agency shall issue a decision on revocation of the certificate of plant variety rights assessment organization or a decision on refusal to revoke the certificate of plant variety rights assessment organization;
d2/ In case of having grounds to affirm that the organization granted the certificate of plant variety rights assessment organization no longer meets the conditions specified in Clause 2, Article 201 of the Law on Intellectual Property, the certificate-granting agency shall issue a notice of intent to revoke the certificate to the organization and set a time limit of 1 month from the date issuance of the notice for the latter to give its opinion. After considering opinions of the organization, the certificate-granting agency shall issue to a decision on revocation of the certificate or a notice of non-revocation of the certificate;
d3/ In case a competent state agency issues a decision on revocation of the certificate of plant variety rights assessment organization, within 1 month after receiving the decision, the certificate-granting agency shall issue a decision on revocation of the certificate;
d4/ The decision on revocation of the certificate of plant variety rights assessment organization must be publicized by the provincial-level People’s Committee on its Portal within 2 months from the date of issuance of the decision.
5. Provincial-level People’s Committees shall make lists of plant variety rights assessment organizations specified in this Article according to decisions on grant, re-grant and revocation of certificates of plant variety rights assessment organization. The lists of plant variety rights assessment organizations shall be publicized on portals of provincial-level People’s Committees. Provincial-level People’s Committees shall update the lists of plant variety rights assessment organizations and changes related to plant variety rights assessment organizations in their localities to the state management agency in charge of plant variety rights in order to serve the recording of information in the National Register of the List of Plant Variety Rights Assessment Organizations.
Section 4
INDUSTRIAL PROPERTY ASSESSMENT AND PLANT VARIETY RIGHTS ASSESSMENT
Article 114. Contents and fields of industrial property assessment and plant variety rights assessment
1. Industrial property assessment and plant variety rights assessment cover the following contents:
a/ Determining the scope of protection of subject matters of industrial property rights and plant variety rights;
b/ Determining whether a subject matter in question fully meets the conditions for being treated as an element infringing industrial property rights or plant variety rights under Articles 74 thru 80 of this Decree;
c/ Determining whether there exists an identicalness, equivalence, similarity, confusability, indistinctness or duplicability between a subject matter in question and a protected subject matter;
d/ Determining the value of industrial property rights and plant variety rights under the pricing method specified in the law on price; and determining the value of damage under Articles 204 and 205 of the Law on Intellectual Property.
2. Industrial property assessment and plant variety rights assessment according to fields specified in the Law on Intellectual Property cover the following contents:
a/ Industrial property assessment, including:
a1/ Assessment of inventions and layout designs;
a2/ Assessment of industrial designs;
a3/ Assessment of marks and geographical indications;
a4/ Assessment of other industrial property rights.
b/ Assessment of plant variety rights.
Article 115. Rights and obligations of persons requesting industrial property assessment and plant variety rights assessment
1. Persons requesting industrial property assessment and plant variety rights assessment are entitled to:
a/ Request assessment organizations and assessors to make assessment conclusions according to the contents and within the time limit as requested;
b/ Request assessment organizations and assessors to explain assessment conclusions;
c/ Request additional assessment or re-assessment as specified in Article 120 of this Decree;
d/ Negotiate on assessment service prices.
2. Persons requesting assessment are obliged to:
a/ Fully and honestly provide documents, evidence and information relating to to-be-assessed subject matters at the request of assessment organizations and assessors;
b/ Clearly and specifically present issues of which assessment is requested;
c/ Pay assessment expenses as agreed upon; make advance payment of assessment expenses at the request of assessment organizations and assessors;
d/ Receive back the assessed subject matters when requested by assessment organizations and assessors.
Article 116. Request for industrial property assessment and plant variety rights assessment
1. Organizations and individuals entitled to request industrial property assessment and plant variety rights assessment include:
a/ Holders of industrial property rights and plant variety rights;
b/ Organizations and individuals that are subjects of requests for handling of acts of infringement upon, or complaints or denunciations about, industrial property rights and plant variety rights;
c/ Other organizations and individuals with rights and interests related to disputes over, infringements upon, or complaints or denunciations about, industrial property rights and plant variety rights.
2. The organizations and individuals specified in Clause 1 of this Article may directly request or authorize other organizations or individuals to request industrial property and plant variety rights assessment organizations and industrial property and plant variety rights assessors to perform assessment.
3. Independent assessors or assessment organizations shall receive dossiers of request for assessment, estimate costs for performance of assessment, negotiate and conclude assessment contracts with assessment requesters, except cases of refusal to perform assessment under regulations.
4. A request for assessment must be made in the form of an assessment service contract between an assessment requester and an assessment organization or assessor.
5. An assessment service contract must contain the following contents:
a/ Name and address of the assessment requester;
b/ Name and address of the assessment organizations or assessor;
c/ Contents of the assessment;
d/ Relevant evidence, documents and exhibits;
dd/ Time limit for notifying assessment conclusions;
e/ Rights and obligations of the parties;
g/ Place and time for performance of assessment;
h/ Expenses for assessment and mode of payment;
i/ Pre-acceptance and liquidation of the contract;
k/ Liabilities for damage compensation; methods of dispute settlement.
Article 117. Delivery, receipt and return of subject matters of industrial property assessment and plant variety rights assessment
In case the assessment request is enclosed with an assessment subject matter, the delivery, receipt and return of the subject matter must be recorded in writing. Such a record must have the following principal contents:
1. Time and place of delivery, receipt and return of the subject matter of assessment;
2. Names and addresses of the deliverer and recipient of the assessment a subject matter or of their representatives;
3. Name of the assessment a subject matter; related documents or items.
4. State of the subject matter of assessment and method of preservation of the subject matter of assessment upon delivery, receipt and return.
5. Signatures of the deliverer and recipient of the subject matter of assessment or of their representatives in case of authorizing to the third party to request the assessment.
Article 118. Taking of samples for industrial property assessment and plant variety rights assessment
1. Assessment organizations or assessors may themselves take samples for assessment (particular exhibits that are infringing elements or protected subject matters of industrial property and plant variety rights) or request assessment requesters to provide samples for assessment. The taking of samples for assessment must be recorded in writing to the witness of the involved parties who shall sign this record for certification.
2. The delivery, receipt and return of assessment samples are carried out similar to those specified in Article 117 of this Decree.
Article 119. Performance of industrial property assessment and plant variety rights assessment
1. Industrial property assessment and plant variety rights assessment may be performed by one or jointly performed by more than one industrial property or plant variety rights assessor. Individual assessment means assessment performed by one assessor. Collective assessment means assessment performed by two or more assessors.
2. In case of individual assessment, the assessor shall perform the whole assessment and take responsibility for his/her assessment conclusion. In case of collective assessment of issues in a field of expertise, the assessors shall jointly perform the assessment, jointly sign the assessment report and take joint responsibility for the assessment conclusion; if holding divergent opinions, each assessor shall write his/her own opinion in the joint assessment report and take responsibility for that opinion. In case of collective assessment of issues in different fields of expertise, each assessor shall perform his/her assessment job and take responsibility for his/her assessment conclusion.
Article 120. Additional assessment and re-assessment of industrial property and plant variety rights
1. Additional assessment shall be performed in case assessment conclusions on the contents subject to assessment are insufficient and unclear or there arise new circumstances that need to be clarified. The request for additional assessment and performance of additional assessment must comply with the regulations applicable to first-time assessment.
2. Re-assessment shall be performed in case the assessment requester disagrees with the assessment result or assessment conclusions on an issue subject to assessment are contradictory. Re-assessment may be performed by the assessment organization or assessor that has performed the previous assessment or by another assessment organization or assessor as requested by the assessment requester.
3. In case there are differences between assessment conclusions or between the assessment conclusion and professional opinion of the state management agency in charge of industrial property or plant variety rights on the same issue subject to assessment, the assessment requester may further request another assessment organization or assessor to perform re-assessment.
4. In case of necessity, when performing industrial property rights assessment or plant variety rights assessment, the assessment organization may establish an advisory council for industrial property rights assessment or plant variety rights assessment in order to solicit opinions on issues subject to assessment. Issues related to the advisory council must comply with the following regulations:
a/ The assessment organization shall select the advisory council’s members whose fields of expertise are related to assessment and issue a decision on the establishment of the advisory council. An advisory council for industrial property assessment or plant variety rights assessment shall be composed of a chairperson and members. The number of members of the advisory council must be an odd number and at least 3.
b/ The advisory council shall operate on the principle of democracy, taking public voting on professional opinions. Members of the advisory council shall conduct collective discussions on professional issues and members’ opinions must be written in the minutes of the advisory council’s meetings.
c/ The entire advisory process of the advisory council must be fully and honestly expressed in a minutes which must be signed by the chairperson and members of the council and filed in the assessment dossier.
Article 121. Industrial property assessment and plant variety rights assessment reports
1. Conclusions of industrial property assessment and plant variety rights assessment specified in Clause 5, Article 201 of the Law on Intellectual Property must be recorded in a written report.
2. An industrial property assessment or plant variety rights assessment report must have the following principal contents:
a/ Name and address of the assessment organization or assessor;
b/ Name and address of the assessment requester;
c/ Object, contents and scope of assessment;
d/ Mode of assessment;
dd/ Assessment conclusion;
e/ Time and place of performance and completion of the assessment.
3. Independent assessors and assessment organizations shall send assessment reports to assessment requesters within the time limit as agreed in assessment contracts. In case the assessment is performed by an independent assessor, the assessor shall sign the assessment report and take responsibility for such assessment conclusion. In case the assessment is performed by an assessment organization, the assessor performing assessment and legal representative of the assessment organization shall together sign and affix their seals on the assessment report, and take joint responsibility for, the assessment conclusion.
4. In case of necessity to have more time to perform assessment, independent assessors and assessment organizations shall promptly notify assessment requesters thereof in writing.
Article 122. Prices of industrial property assessment and plant variety rights assessment services
Prices of industrial property assessment and plant variety rights assessment services shall be agreed upon by the involved parties.
Part Five
IMPLEMENTATION PROVISIONS
Article 123. Transitional provisions
1. The processing of an application for registration of a classified invention that is submitted before the effective date of this Decree but for which the decision on grant of protection tile or refusal to grant protection title has yet to be issued must comply with Articles 48 thru 52 of this Decree.
2. The processing of a Hague application that designates Vietnam and is announced by the International Bureau before the effective date of this Decree but for which the decision on acceptance of protection or refusal to accept protection has yet to be issued must comply with this Decree and the Hague Agreement.
3. The processing of a Hague application that originates in Vietnam and is submitted to the state management agency in charge of industrial property rights before the effective date of this Decree but has yet to be sent to the International Bureau must comply with this Decree and the Hague Agreement.
Article 124. Effect
1. This Decree takes effect on August 23, 2023.
2. This Decree replaces Decree No. 103/2006/ND-CP of September 22, 2006, detailing and guiding the implementation of a number of articles of the Law on Intellectual Property regarding industrial property, the regulations on protection of rights in the field of industrial property rights, plant variety rights and state management of intellectual property under Decree No. 105/2006/ND-CP of September 22, 2006, detailing and guiding the implementation of a number of articles of the Law on Intellectual Property regarding protection of intellectual property rights and state management of intellectual property, Decree No. 119/2010/ND-CP of December 30, 2010, amending and supplementing a number of articles the Government’s Decree No. 105/2006/ND-CP of September 22, 2006, detailing and guiding a number of articles of the Law on Intellectual Property regarding protection of intellectual property rights and state management of intellectual property, Decree No. 122/2010/ND-CP of December 31, 2010, amending and supplementing a number of articles of the Government’s Decree No. 103/2006/ND-CP of September 22, 2006, detailing and guiding a number of articles of the Law on Intellectual Property regarding industrial property, and Article 1 of Decree No. 154/2018/ND-CP of November 9, 2018, amending, supplementing or annulling a number of regulations on investment and business conditions in the fields under the state management by the Ministry of Science and Technology, and a number of regulations on specialized inspection.
Article 125. Implementation responsibility
Ministers, heads of ministerial-level agencies, heads of government-attached agencies, and chairpersons of provincial-level People’s Committees shall implement this Decree.-
On behalf of the Government
For the Prime Minister
Deputy Minister
TRAN LUU QUANG
For the Prime Minister
Deputy Minister
TRAN LUU QUANG
* The Appendices to this Decree are not translated.
[1] Công Báo Nos 997-998 (08/9/2023)
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