6 New Changes in Industrial Design Protection in the IP Law of 2022
By Le Quang Vinh, Senior Partner – Bross & Partners
Email: vinh@bross.vn
To ensure compliance with international commitments after joining the new generation trade agreements including CPTPP, EVFTA and RCEP, Vietnam has revised quite a lot of regulations related to subject matters of intellectual property rights,[1] especially including industrial designs under the Third Amendment to the 2005 IP Law (the “2022 IP Law”) which has just been passed by the National Assembly on June 16, 2022. The 2022 IP Law replaces the 2009 First Amendment and Second Amendment to the 2005 IP Law (the “2005 IP Law”). The IP Law 2022 will take effect from January 1, 2023 except for provisions on sound marks that was effective since January 14, 2022 and provisions on protection of experimental data for agricultural chemical products that will be effective from January 14, 2024. Bross & Partners shall hereunder update 6 key changes concerning industrial designs.
Redefinition of Industrial Design
The 2022 IP Law adds more legal signs such as product parts, complex products and visible attributes during exploitation of a design and redefines industrial design, ie. 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.
Deferred Publication and Validity of Industrial Designs filed under the Hague Agreement
The 2022 IP Law 2022 for the first time enables a deferment period of an industrial design up to 7 months provided that the applicant’s request for deferment shall be made on filing. If no request for publication deferment is submitted, the application for registration of an industrial design shall be published in a period of 2 months after it has been accepted as to formality.
Industrial designs filed under the Hague Agreement on international registration of industrial designs designating Vietnam shall be effective from the date on which the VNIPO issues a decision on grant of protection or from the next day of the expiry date of the 6-month time limit calculated from the date on which the International Bureau publishes the international registration application of such industrial design.
Right to Registration of an Industrial Design Belonging to the State
The 2022 IP Law provides for that except for the case of industrial design in the field of national defense and security, any organizations that are assigned to manage scientific and technological tasks using State budget will have the right to register such industrial designs automatically and without reimbursement.
In the case of an industrial design in the field of national defense and security, the right to register it belongs to the State if such industrial design is created entirely by using the State budget. If an industrial design is partly funded by the State budget, the entitlement to register such industrial design would be determined in proportion to the proportion of the State budget allocated to the process of creating the industrial design.
Where an industrial design is determined to belong to the State, the design application may be filed through the representative of the state owner who is one of three subjects: (a) Committee for Management of State Capital at Enterprises (CMSC); (b) Ministries or ministerial-level agencies, People's Committees of provinces and centrally run cities; (c) State Capital and Investment Corporation (SCIC).
2 Ways for Opposition of Industrial Design Applications
The 2022 IP Law adds for the first time a new mechanism allowing a third party to oppose an industrial design application in addition to third party’s written opinion kept unchanged. It is worth noting that while the third party’s written opinion would only serve as a reference source for examining a design application, it seems that legislators seek to develop an additional mechanism to oppose an industrial design application as an independent new opposition procedure (not a reference source for the processing of a design application).
More importantly, unlike a third party’s written opinion that can be filed any time calculating from the point of time when a design application is published in the Industrial Property Official Gazette until prior to the date of decision on grant of title of protection, the new mechanism permits any third party to file an opposition to an industrial design application only within 4 months since the publication date of the design application.
5 Legal Grounds for Opposition of Industrial Design Applications
A written objection to the granting of an industrial design may invoke and prove one of the following five legal grounds:
1. Subject matter sought for registration does not fully meet the criteria for patentability
2. Applicant does not entitle to register an industrial design
3. Subject matter seeking for design patent, although having fully met the criteria for patentability, is not a design application having the earliest priority date or filing date
4. There is more than one identical or significantly different design application being filed on the same day by more than one applicant and those applicants have not yet come to an agreement to withdraw one of those filed applications
5. Design application as amended or supplemented widens the scope of disclosed subject matter described in the application or changes the nature of the subject matters seeking for registration stated in the application.
3 Legal Grounds for Cancellation of a Patent for Industrial Design
A granted patent for industrial design may be cancelled entirely or partly by any third party if one of the following 3 grounds is found:
1. Applicant has neither had entitlement to register industrial design nor been assigned such entitlement.
2. Design application does not satisfy criteria for protection, namely novelty, inventive step, and industrial applicability; or the design application is regarded contrary to social morality and public
3. Design application as revised or supplemented widens the scope of disclosed subject matter described in the application or changes the nature of the subject matters seeking for registration stated in the application.
Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, domain name, copyrights, patents, plant varieties.
Should you have any query, please contact: vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.