Blockage by Virtue of Security Control over Inventions Seeking
for Protection Overseas Will be Lifted by the Draft Amendments of IP Law?
Attorney Le Quang Vinh – Bross & Partners
The current IP Law of Vietnam does not mention the concept of confidential invention, but only stipulates that the limitation of rights to inventions belonging to state secret is implemented in accordance with the Governmental regulations. Decree 103/2006/ND-CP as revised providing guidance on implementation of the IP Law states that inventions that are determined by a competent state agency to be a state secret in the field of national defense and security are called secret inventions.
Consequences of Security Control of Invention Before Seeking for Protection Overseas
The law stipulates that no Vietnamese organization or individual is allowed to register a secret invention (including a secret utility solution) abroad as long as the following two conditions have been not yet satisfied: (a) the country in which applicant is applying for registration of such invention must have statutory provisions for confidential patent protection; and (b) it must be approved by a competent authority according to the order and procedures promulgated by the Ministry of Public Security in coordination with the Ministry of National Defense and the Ministry of Science and Technology.
The invention of “a Vietnamese organization or individual" or "created in Vietnam" of which an application for registration has been filed abroad shall be considered as a violation of regulations on security control over inventions if it falls into one of two situations:
(a) Such invention has not been filed for registration in Vietnam, or has been filed in Vietnam but has not expired 6 months from its filing date in Vietnam, provided that the invention does not belong to circumstance of being prohibited filing an application abroad (because it is determined to be a confidential invention and has been notified by a competent authority); or
(b) The above invention is determined to be a secret invention according to the law on protection of state secrets and has been notified by a competent authority.
No Circular guiding the procedures for determining confidential inventions, decoding inventions, and protecting confidential inventions issued by the Ministry of Public Security has resulted in the consequence that all inventions being created in Vietnam regardless of its creation origin belonging to a Vietnamese or foreign individual or organization, if filed abroad, may be considered contrary to regulations on security control over inventions intended to register abroad. In other words, there is unexpectedly still a high risk of being considered infringing upon the regulations on security control of all inventions before their filing abroad. The most dangerous legal consequence, if determined to be infringing the regulations on security control, is that any applicafion for registration of invention (national application) filed in Vietnam or any international patent application (PCT international applications) upon entering the Vietnamese national phase may be rejected at the formalilty examination stage.
Will the Risk of Breaching Measure of Security Control of Patent Application Seeking for Protection Overseas Be Lifted by the Draft Amendment of IP Law?
The draft amendments of IP Law, which is about to be passed by the National Assembly in June 2022, seems to have attempted to untie the hurdle of the regulations on security control of patent applications when they are intended to file abroad. Specifically, the revised IP Law will upgrade the regulations on security control, which is inherently only regulated at the subordinate provisions, to Article 89a newly included in the revised IP Law.
Article 89a stipulates that security control over inventions intended to register abroad by individual shall be applied if the following four factors are found at the same time:
(a) the invention has an impact on the field of security or national defense;
(b) the invention is created in Vietnam;
(c) entitlement to register the invention belongs to an individual who is a Vietnamese citizen and permanently resides in Vietnam;
(d) the invention has been filed for registration in Vietnam for the purpose of being examined as to security control procedure.
For an invention made by an organization, security control shall be imposed if all three factors are satisfied:
(a) the invention has an impact on the field of security and national defense;
(b) the organization is incorporated under the laws of Vietnam; and
(c) the invention has been filed a patent application in Vietnam to carry out security control procedures
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