Understanding of Vietnam Intellectual Property Law of 2022

                                                           Attorney Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

In order to comply with the CPTPP, EVFTA and RCEP, Vietnam amended its IP Law the third time which took effect from January 1, 2023 (“IP Law 2022”). The IP Law 2022 aims at protecting exclusive rights to exploit technical creations (eg. inventions, industrial designs, plant varieties) and exclusive rights to use commerical identifiers (eg. trademarks, geographical indications). Below is a summary of the IP Law 2022 prepared by Bross & Partners.

Patent for Invention, Patent for Utility Solution

Vietnam does not accept “use” claims (Swiss-type claim, second or further medical use claim) but only grants patents for technical innovations in one of three forms: substances, products, or process. An invention patent with a 20-year term of protection would be granted if such invention satisfies all three conditions: novelty, inventive step, and industrial applicability. In case a technical solution does not have an inventive level (but is not common knowledge), it can be protected in the form of a patent for utility solution valid for 10 years.

The IP Law 2022 provides for the first time exceptions to one-year lack of novelty of invention (but not applicable to industrial designs). That means that an invention applied-for shall be not considered lack of novelty if it has been filed in 12 months counting from the date of public disclosure by the applicant or other person who has directly or indirectly obtained that invention.

The applicant may file a national application (filed directly with the NOIP) no later than 12 months from the date of filing of the respective application abroad, or an international application (enter the national phase based on the PCT application within 31 months (non-renewable) from the priority date.

An applicant may file a national application (filed directly with the VNIPO) no later than 12 months from the date of respective application filed abroad, or an international application (eg. entry into national phase based on the PCT application within 31 months (non-extendable) from the earliest priority date.

Patent applications, whether PCT applications or Paris convention applications, are to be examined as to formality within 1 month before its being published in the 19th month (unless a request for early publication is made). Patent/utility solution applications are only subject to substantive examination within 18 months after the applicant has submitted a request for substantive examination within 42 months and 36 months respectively from the earliest priority date.

An applicant should proactively provide the status of patent families issued by foreign patent offices (eg. USPTO, EPO, JPO, CNIPA, KIPO) to help shorten the time for substantive examination because the VNIPO usually grants patents for inventions on the ground of foreign patents granted for same inventions.

A patentee must pay the 1st year validity maintenance fee together with the grant fee according to the VNIPO's notice of allowance. From the 2nd year onwards, annuity patent payment must be made annually counting from the date of issuance of decision on grant shown on the patent.

Patent for Industrial Design

External appearance of a product can be protected as a patent for industrial design, valid for 5 years and renewable twice 5 years for each time, provided that an applied-for industrial design must meet all three conditions: novelty, inventiveness, and industrial applicability.

Vietnam has not yet accepted patentability of partial designs, although it included new legal elements in the IP Law 2022: product parts, complex products and visible attributes during exploitation. Article 4.14 of the IP Law 2022 redefines that an industrial design is the external appearance of a product or part thereof to be assembled into a complex product, represented by shapes, lines, colors or a combination thereof and visible in the process of exploiting the utility of the product or complex product.

Unlike inventions/utility solutions whose one-year grace period for non-loss of novelty is granted, novelty requirement for industrial designs in Vietnam is worldwide and absolute.[1]

An applicant may choose to file a national application (filed directly with the VNIPO) or an international application (filed under the Hague Agreement) when wishing to register an industrial design in Vietnam. Furthermore, the applicant can request for deferment of design publication up to 7 months on the condition that he/she has submitted a deferment request at the time of filing. If there is no such request, design application will be automatically published within two months from the date of formality acceptance. An industrial design applied for registration is subject to substantive examination within 7 months from the date of publication.

Plant Variety Protection Certificate

A selected, discovered and developed plant variety can be protected in the form of a Plant Variety Protection Certificate if an applied-for application simultaneously satisfies five conditions for protection: novelty, distinctness, uniformity, stability and proper name. Compared with the 2005 IP Law, the IP Law 2022 has removed the sixth protection condition saying that the plant variety applied for registration must belong to the list of plant species promulgated by the Ministry of Agriculture and Rural Development.

A plant variety protection certificate is valid for 25 years for woody and climbing plant varieties, or 20 years for other plant varieties from the date of issuance, provided that the maintenance fee for the first year is paid 3 month after the date of grant and within the first month of each subsequent year of validity counting from the second effective year onwards.

An application for plant variety registration is examined in term of formality by the Plant Variety Protection Office within 15 days and examined as to substance, ie. assessment of novelty, appropriate name, evaluation of technical test results (DUS) within 90 days of receipt of DUS.[2]

Certificate of Trademark Registration

A sound mark is registrable as a trademark in Vietnam in addition to visible signs including 3D trademarks (shape marks) as long as they function as trademarks and do not conflict with other’s prior trademarks, industrial designs or copyrights. Please keep in mind that signs represented exclusively in Chinese, Japanese, Korean or non-Latin characters are generally rejected.

Except where distinctiveness has been acquired through use prior to the filing date,

a three-dimensional trademark (shape mark) may be protected in Vietnam as long as it does not fall into one of three circumstances: generic configuration of the goods/common configuration of a part of the goods; or merely consisting of the shape of the commodity necessary for obtaining technical effects; or the needs to give the goods substantive value

Vietnam only grants protection to the earliest filed trademark, and also only protection after it has been granted a certificate of trademark registration, unless the said trademark is considered a well-known trademark. In general, any individual or organization can file a trademark application in Vietnam through the Madrid System (international registration) or directly with the VNIPO (national registration).

A trademark application may designate one or more classes according to the Nice Classification. An applied-for trademark shall be examined as to formality within 1 month and examined in term of substance within 9 months from the date of publication (after formality acceptance).

For the first time, Vietnam introduced a procedure for trademark suspension (same as in the United States). In particular, an applicant can proactively request a examination suspension of his/her rejected trademark application pending final decisions on settlement of requests for invalidation or for cancellation of cited trademarks (that were used as ground of refusal against rejected trademark)

A registered trademark is valid for 10 years from the filing date and can be perpetually renewed (no proof of use required at renewal) every 10 years within 6 months prior to the expiration date. A granted trademark cannot be automatically terminated unless a third party’s non-use invalidation action filed with the VNIPO and successfully proved that such trademark has not been used for 5 consecutive years.

Authors’ Rights (Copyright)

Literary and artistic works such as books, films, fine arts, applied arts, software, computer programs, etc. are all protected under copyright legislation as long as they were fixed in a tangible medium of expression and had originality.

Vietnam does not recognize those who support, give comments, or provide materials for other persons to create literary and artistic works as authors or co-authors, but only recognizes those who directly create the works as authors/co-authors. Vietnam also does not recognize the author as a legal entity, hence, Vietnam has no the so-called “work made for hire” like US copyright law.[3]

Three types of moral rights (droit moral) are protected indefinitely and cannot be assignable: right to name the work; right to be credited (right of attribution); right to preserve the integrity of the work (right of integrity). The last moral right (right of publication) and economic rights pertaining to most works are protected for 50 years after the author's death. Economic rights comprise: right of reproduction; right of distribution; right of public performance; right of broadcasting or other communications of the work to the public; right of rental; right of creating derivative works.

Derivative works are redefined in an open-ended manner in the IP Law 2022 (instead of closed-ended approach in the 2005 IP Law), whereby a derivative work is a work created based on one or more existing works through translation from one language to another, adapting, compiling, annotating, selecting, arranging, adapting music and other adaptations.

The IP Law 2022 included non-infringement exceptions (neither permission nor royalties are required) for published works, for example, it shall not be regarded as an infringement of rights of distribution or rights of reproduction if copy is made temporarily merely for technical reasons, or reproduction required to exercise other rights under the law, or subsequent distribution of the original/copy of the work distributed or authorized by the copyright owner (exhaustion of copyright)

The IP Law 2022 also elaborated other multiple exceptions to copyright infringement for published works, provided that the three-step test is complied with and information about the author's name and origin of the work required to be credited.

Enforcement of Intellectual Property Rights

Rights holders can protect their intellectual property rights by administrative measures, civil remedies (initiating a civil lawsuit before a court) or even petitioning to prosecute criminal cases.

Where administrative measures are required, an IP infringement may be subject to the monetary fine: a maximum fine of VND 500 million; possibly accompanied by additional sanctions: temporary suspension of production and business for 1-3 months.

Regardless of whether the IP infringement has been or is being administratively handled or prosecuted for criminal liability, stakeholder still has the right to sue against that IP infringement along with a claim for material damage and mental damages on the ground of actual damage caused by the infringement. Depending on the severity of the infringement, the court may determine the maximum material compensation up to VND 500 million and/or for mental damage from VND 5 million to 50 million.

Criminal prosecution may be made against intentionally forging trademarks or geographical indications under Article 226 of the Penal Code, or against deliberately reproducing works, sound recordings, video recordings, or distributing to the public copies of works, phonograms or video recordings in accordance with Article 225 of the Penal Code, provided that these acts are carried out on a commercial scale. Independent of the criminal liability of individuals, commercial legal entities can also be criminally prosecuted if they commit some of the above-mentioned acts of infringing upon intellectual property rights on a commercial scale.

Enterprises providing intermediary services (“OSP” or “ISP”) are not automatically exempt from liability for copyright infringement in the digital environment. According to Article 198b of the IP Law 2022, OSP is only exempt from legal liability with conditions, specifically 3 types of service provision including information transmission (mere conduit), automatic and temporary storage (caching), and hosting users' digital information content at their request (hosting) is only enjoyed "safe harbor" mechanism if the OSP is deemed to satisfy the conditions. For example, a hosting service must ensure that both conditions are satisfied: (a) ISP or OSP does not know that digital information content infringes copyright and related rights; (b) ISP or OSP takes prompt action to remove or prevent access to such digital content when it becomes aware that such digital content infringes copyright or related rights.[4]

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has litigation experience against IP infringement before Vietnamese courts.

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.