Procedure and Timeframe for Nullifying Patent for Design in Vietnam

Email: vinh@bross.vn

One of the most effective ways to defend against another’s accusation of infringement of a registered industrial design is to seek to nullify this patented design because the law allows you to revoke the validity in whole or in part[1] of a patent for design in 2 circumstances: (a) the applicant had neither entitlement to register nor had been assigned the entitlement to register that design; or (b) the patented design failed to satisfy one of three mandatory conditions for protection at the time of grant.

Who has standing to cancel and what are the legal grounds, required documents and relevant evidences?

By the laws, any third party[2] may submit a request for revocation of a patented design with the Vietnamese Intellectual Property Office (VNIPO[3]) provided that a petition must append and satisfy the followings:

1. To affirm one of two or both legal bases[4]: (i) the patentee had not entitlement to file an industrial design application (in practice also known as dishonest act or bad faith) at the filing time, or (ii) at the time patent was granted, industrial design failed to satisfy one of three criteria for patentability: (a) lack of novelty, (b) inventive step (non-obviousness), and (c) industrial applicability;
2. Related evidences, documents and arguments proving the applicability of the above legal grounds;
3. A simply signed Power of Attorney (eg. in favor of Bross & Partners);
4. Government charge of VND920,000 (39,44USD) per one patented design per one embodiment (each further alternative of VND480,000).

Procedure for Settlement of a Cancellation Action

After receiving the request for validity cancellation, the VNIPO within 1 month, will serve the petition (the first time) to the registrant (patentee) notifying that there is a request for annulment by third party (petitioner) who petitioned to annul the patentee’s design, and demanding that the response by the patentee must be made in 2 months.

The VNIPO may, on a case by case basis, repeat the aforesaid procedure one more time for both parties with the same prescribed time limit. Only in complicated cases, the VNIPO may organize an in-person hearing⁵ (materially means a direct dialogue) between the patentee and petitioner.

Within 3 months from the expiry of two-month period that the patentee does not respond, or  in a period of 6 months from the expiry of two-month period to which the patentee presents its counter-statement then the VNIPO shall issue a Decision on revocation in part or in whole, or release a Notice of rejection of such petition.

Accordingly, in theory, a cancellation action may take about 7-10 months or may last for a year even a few years depending on the VNIPO’s overload, or on the fact that the patented did or did not submit its well-reasoned counter-arguments along with relevant evidence.

In case of disagreement with the VNIPO's decision, the unsatisfactory party can lodge a second-time complaint to the Minister of Science and Technology (MoST), or initiate an administrative lawsuit to the Hanoi People's Court. Where disagreed with the VNIPO's notice of rejection, the unsatisfactory party can submit a first-time complaint to the VNIPO’s General Director.

Comments

1. The number of revocation action of patented design annually filed with the VNIPO is very few. Nullifying a registered industrial design is an inter partes legal dispute but only happens after the exclusive right ascribing to a design has been established. Therefore, in order to successfully cancelling a patented design, it is essential for you to search and provide strong evidences, especially those of loss of novelty prior to the filing date of the design at issue because you have to fight, at the same time, with both the patentee and the VNIPO

2. According to Decision No. 2297/QD-SHTT of June 19, 2020, for example, the VNIPO decided in favor of the petitioner and nullified patent for design no. 26031 (see the picture shown at the beginning of article) by reason of: (a) before May 31, 2017 (the filing date), the two-dimensional design sought for registration appearing in the toilet paper product is deemed as significant indifferent from the industrial designs embodied in the toilet paper labels publicly disclosed[5] on a lot of the online newspapers since January 9, 2017, and (b) the patented design no. 26031 copycatted almost completely the marks “TIE & shape”, the stylized words “HANOI with A-shaped Khue Van pavilion” which belong to the pre-existing registered trademark rights “TIE TIEN HIEU CO. LTD HANOI SILK & Pictures ” under Trademark Registration No. 120898.

Should you have specific needs, please contact: vinh@bross.vn; cellphone 84-903 287 057, 84-4-3555 3466; Wechat: wxid_56evtn82p2vf22; Skype: vinh.bross.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.