No.

Issues

Circular 01 as amended

Circular 16/2016

General provisions

1

Industrial property representative

1.1

Agent

representing applicant

 Nil

Point 3.4 as added:  authorizing in favor of an organization or individual that is unregistered agent, or at the same point of time, authorizing multiple organizations or persons wherein any of these organizations or persons that are unqualified would be deemed null and void.

1.2

Authorizing a qualified representative and performing authorized duties

 Nil

More detailed on procedures for authorization and re-authorization

(Point 4.1)

1.3

Power of Attorney

Nil

Supplementing the provisions on the time limit for late submission of Power of Attorney without incurring expenses: Power of attorney may be not submitted on filing but no later than 01 month from the filing date PoA must be received by the NOIP; individually for request for complaint such  time limit is 10 working days.

(Point 4.3.d)

2

Opposition

Handling the third party’s objection prior to issuing a decision to grant a title of protection

Point 6.4: The third person as the opposing party, where he/she already brought action at a court within the prescribed time limit, only written notice to the NOIP is enough NOIP.

Point 6.5: the NOIP organizes a direct dialogue between the third party and the applicant to clarify issues of opposition if it finds necessary and upon request by both parties.

The following provisions are revised, supplemented:

- Opposer against grant of title of protection must pay a fee for settling the opposition as provided by the laws - Point 6.1

Point 6.4 as revised: The opposer, if within the prescribed time limit, instituted a lawsuit at a court, must send the NOIP a copy of notice of acceptance of the case by the court. Only upon receipt of the court’s document, the NOIP suspends all relevant procedure pending the outcome heard by the court

Point 6.5 as amended: The NOIP would hold a direct dialogue between the disputed parties to make clear the issues of the opposition where necessary or requested by both parties.

3

General requirements for all industrial property applications

3.1

Documents, samples, information showing the subject matter sought registration in the form of geographical indication registration application

A description of the specific properties and quality of products bearing geographical indications and a map of the geographical area corresponding to the geographical indication.  Point 7.1.a (ii)

- Name of the product bearing the geographical indication (required to be included in the declaration/request) and a description of the nature, quality and reputation of the product bearing the geographical indication and a map of the geographical area corresponding to the geographical indication (Point 7.1.a)

- Point 7.1.b(iv) as supplemented: an official letter by the provincial People's Committee or cities directly under the central authority permitting the use of geographical names or other signs indicating the geographical origin of local specialties to register the trademark according to the provisions of Point 37.7.a of this Circular (if applied-for trademark is  collective mark or certification mark containing a place name or other signs indicating the geographical origin of local specialties).

3.2

Formality requirements

Point 7.2.b (iii)

Point 7.2.b (iii) as added: an additional requirement in terms of formality is required, ie. a geographical map

3.3

Document proving priority claim

Confirmation by the receiving authority of the first application(s) for copies of them; list of goods and services included in the first application for trademark registration; assignment of priority right if that right is enjoyed by another person - Point 7.3.c

The section of confirmation by the receiving authority for the first application(s), except for international invention filed under the Patent Cooperation Treaty - PCT; list of goods and services included in the first application for trademark registration; assignment of the priority right, if that right is enjoyed by another person - Point 7.3.c

4

Governmental charges and fees

Refund of fees and charges

Under which circumstances charges and fees are refunded:

- Fees and charges have been paid in excess of the prescribed level;

- Fees and charges have been paid, but the corresponding work is not carried out because there is no situation to be performed.Point 8.3

Fees and charges paid for each procedure of the application process will not be refunded when the time limit commencing such procedure has been due. Application filing fees are not refundable under any circumstances, except for the followings:

- Charges and fees are refunded at the request of the applicant in cases where the NOIP has collected improperly (wrongly collected, overpaid ...)Point 8.3

5

Time limit

Time limit for applicants and related parties to submit, amend, supplement documents or make opinions

Nil

Points 9.3, 9.4, 9.5 as supplemented: Not counting the delayed time to the time limit when occurring a force majeure event or an objective obstacle making an organization or individual with rights and obligations unable to perform his/her rights and obligations within the time limit, provided that that organization or individual so requests and there is reasonable evidence to prove that situation. (For specific cases, see in details at the Circular 16/2016

 6

Examination of formality of applications

6.1

Case of

an invention is deemed illegitimate

Nil

Circumstances as added:  as-filed application is incompliance with of the provisions on security control of inventions before registration abroad in Clause 2, Article 23b of Decree No. 103/2006/ND-CP, including internationally filed ones with the International Bureau - Point 13.2.h

6.2

Deadline for applicants to give opinions or correct irregularities or omissions

01 month from the date of notification - Point 13.6.a

- 02 months from the date of notice

- Particularly for documents proving the basis of claiming the priority right, the applicant is allowed to make additional submission within 03 months from the date of filing the application.

6.3

Acceptance of legitimate application with respect to priority date claimed

 Nil

Where claiming a priority right is not accepted, the application is still regarded legitimate, unless the application has other deficiencies that affect the legitimacy of the application, decision on rejection of priority right must clearly state the reason for not accepting the priority date”- Point 13.6.b

7

Substantive examination of the applications

7.1

Time limit for correcting errors, explaining the content of the application and providing information

Nil

03 months from the date of issuance of a notice by the NOIP addressing the applicant to overcome. - Point 15.3.a

7.2

Time limit for applicants to respond or correct shortcomings upon receipt of a notice rejection of title of protection (non-final office action)

02 months from the date of notification - Point 15.7.a (i)(ii)

03 months from the date of notification - Point 15.7.a(i)(ii)

7.3

The time limit for the applicant to pay grant fees, for making opinion against the element(s) under the applied-for mark subject to possible disclaimer statement

01 month from the date of notice of allowance - Point 15.7.a (iii)

03 months from the date of notice of allowance – Point 15.7.a (iii)

7.4

Revoke the decision on rejection of grant and recover the examination

Nil

Point 15.7.b as supplemented: Where an applicant has discovered or provided a new instance (which has not been considered during the examination process) but is likely to affect the examination result, at the request of the applicant, the NOIP will consider withdrawing its decision on refusal and resume examining the application.

7.5

Re-examination

- Time limit for re-examination of applications is two-thirds of the time spent on the first-time examination - Point 16.1.b

- Re-examination of the application would be made only once - Point 16.1.d-

- Time limit for re-examination of applications: For inventions, not more than 12 months; for trademarks, not more than 06 months; For industrial designs, not more than 04 months and 20 days; for geographical indications, no more than 04 months. - Point 16.1.b

- The re-examination of an application is made only once for the applicant and for every third person – Point 16.1.d

8

Amendment, additional submission

8.1

Charges, fees

Nil

Point 17.1.a: Types of fees and charges are specified to be paid when amending or supplementing the application.

As added: "In case of requesting the correction of errors caused by the NOIP's errors, the requester shall not have to pay the above-mentioned charges"

8.2

Documents in support of amendment

No specific provisions

(ii) 04 sets of photos, etc., for lay-out design registration applications;

(iii) 04 sets of drawings, etc., for an industrial design registration application;

(iv) 05 samples of trademark

Point 17.1.b

8.3

Re-examining the application in case of a request for amendment filed but after issuance of a notice of allowance

Nil

Cases subject to re-examination of an application in case of as filed request for amendment upon the NOIP’s issuance of notice of grant: (i) as filed request for change in information has changed the nature of subject matter; (ii) applicant of the application has been occurred - Point 17.1.g

9

Division of application

In case of divided application required to pay fee for examination of priority right claimed

Nil

In case of dividing an industrial design due to a lack of unity - Point 17.2.c

10

Request for change in applicant (including transfer of application)

10.1

Cases requiring the change in applicant

General rule - Point 17.4

Specific provisions on cases of request for recordal of change in applicant on the basis of transfer, inheritance or under a decision of a competent authority - Point 17.4

10.2

Assigning the application after receiving notice of allowance

Nil

Where a request for assignment of a trademark application is filed after a notice of grant is released, the application subject to such assignment must be re-examined and re-published together with that assignment. The requester must pay an application examination and publication fee as prescribed. - Point 17.4 (iii)