New Circular No. 16/2016/TT-BKHCN amending and supplementing Circular No. 01/2007/TT-BKHCN
Vietnam – Circular No. 16/2016/TT-BKHCN (hereafter called as “Circular No. 16”) amending and supplementing Circular No. 01/2007/TT-BKHCN (hereafter called as “Circular No. 01”), a critical guidance for the implementation of Law on Intellectual Property of Vietnam will take effect on January15,2018.
The amended Circular includes only 03 Articles, but modifies up to 49 of 67 points of current Circular No. 01/2007. It has a great impact on Intellectual Property practice in Vietnam as its amendments and supplements aim at certain issues and eventually push laws and regulations on Intellectual Property of Vietnam closer to international practice. It also creates more stringent requirements for related parties such as IP rights holders, applicants etc.
Below is the most important amendments and supplements regarding procedures of examination of trademarks, patents and utility solutions according to Circular No. 16:
I. GENERAL REGULATIONS:
1. Application procedure:
1.1. Time frame for response to office action – Points 13.6.a1 and Point 15
| New regulations | Former regulations | |
| Formality examination: | 02 months | 01 month |
| Substantive examination: | 03 months | 02 months |
| Paying registration fee: | 03 months | 01 month |
| These deadlines can be extended once. | ||
Comment: The former time frames are quite short so the amended provisions would provide a more practical timeline for the applicant to make responses/payment.
1.2. Excuses for missing deadlines – Points 9.3-5
| New regulations | Former regulations |
| New concepts have been introduced, particularly:
“A force majeure event is an event which occurs in an objective and unforeseeable manner (for example, natural disasters, enemy-inflicted destruction, etc.) and cannot be surmounted despite all necessary and possible measures having been taken. Objective obstacles are obstacles caused by objective circumstances (for example: sickness, going on a business trip, learning at a distant place, etc.) that make a person with rights or obligations unable to know that his/her legal rights or interests have been violated, or unable to carry out his/her legal rights or obligations”. |
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Comment: Late submissions can be excused if the applicant submits a petition and proper evidence demonstrating said events and after consideration, the NOIP might approve.
1.3. Decisions on refusal – Points 15.7.b and 9.3-5
| New regulations | Former regulations |
| There is an alternative for overcoming decisions on refusal
that are issued after considering responses to office actions regarding substantive examination. Instead of lodging an appeal, if the applicant submits newfacts/details (which have not been considered in the examination) which can affect the examination results, the NOIP will consider withdrawing the decision on refusal and re-examining the case. |
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Comment: This should be the cases that belong to Excuses for missing deadlines – Points 9.3-5 above mentioned!?
2. Opposition procedure:
2.1. Settlement of third-party’s opposition – Point 6.2
| New regulations | Former regulations |
| The NOIP’s obligation to inform the opposing party of the examination results of an opposed application, if the NOIP considers the opposition to be grounded. | The NOIP is only required to inform the opposing party of the results of an opposition. |
Comment: The opposing party may both follow up the case more easily and get final result of the same.
2.2. Settlement of third-party opposition relating to the registration rights – Point 6.4
| New regulations | Former regulations |
If opinions of the third party are related to the registration rights, when finding it impossible to determine whether or not such opinions are grounded, the NOIP shall notify the opposing party for initiating a lawsuit at the court for handling.
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If opinions of the third party are related to the registration rights, when finding it impossible to determine whether or not such opinions are grounded, the NOIP shall notify the opposing party so that the opposing party could initiate a lawsuit at the court for handling. |
Comment: This new regulation quite clearly reflect the trend of settlement of Opposition in relation to the rights to file application by civil court instead of the NOIP.
3. Appeal & Termination/Cancellation of a granted protection title:
- Appeal and appeal settlement – Point 22
| New regulations | Former regulations |
| Amended circular clarifies certain points according to general regulations on Law on Appeal, particularly:
– Defines persons with the right to appeal, appeal objects;
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| Amendments or newfacts/details will not be accepted at the appeal stage. If there are new facts/details, the NOIP may re-examine the application upon the applicant/appellant’s request.
Example: If a trademark is refused by an official decision by the NOIP due to confusingly similar to other’s mark, then the applicant obtains a Letter of consent from the cited mark’s owner, an appeal based on said Letter is not acceptable under this new Circular. |
There is no regulation whether appeals may be submitted with new facts/details. In practice, the NOIP often accepts such appeals. |
Comment: The concept “new facts/ details” is not yet duly construed by either the NOIP or IP experts/representatives. At the moment, there has been not any specific provision on the procedure for re-examination in case of “new facts/ details”.
3.2. Termination/cancellation of a granted protection title – Point 21.3.a
| New regulations | Former regulations |
| As the first step in a termination/cancellation proceeding,
the NOIP will send a notice of request for termination/cancellation to the rights holder within 01 month from the date of the request is received. |
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Comment: This may help to expedite the process of settlement of the request for termination/cancellation more quickly.
II. TRADEMARKS
1. Trademark applications as filed via national filing system – Rights to object to disclaimers – Point 15.a (iii)
| New regulations | Former regulations |
| The NOIP shall clearly state an/some elements of the mark that is/are not separately protected on Notification of provisional grant protection. If the applicant does not agree with such disclaimers, he/she is entitled to file an objection within 03months from the notification date. |
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2. Trademark applications as filed via Madrid system designating Vietnam
| New regulations | Former regulations |
| Response to office action regarding international application – Point 41.6 | |
| 41.6.b. If the applied mark meets all protection requirements, after 12-month examination period, the NOIP shall issue a Decision on granting protection, record it in the national register of marks (international trademarks), inform WIPO under Model Form 4 and publish on IP Official Gazette within 02months from the date of Decision;
41.6. c, d, đ. If the applied mark does not meet protection requirements, after 12-month examination period, the NOIP shall issue a Notification of provisional refusal under Model Form 3 of WIPO. Within 03 months from the refusal date, the applicant is entitled to respond to the said refusal. This response will be considered by the Geographical Indication Division of the NOIP, while the response for national applications will be handled by Trademark Divisions. If the response is not justified, the NOIP will issue a final decision on refusal and the applicant can appeal against such decision within 90 days according to appeal procedure. |
If the applied mark meets all protection requirements, the NOIP shall issue a decision on protection of internationally registered mark, publish it in the Industrial Property Official Gazette, and record it in the national register of marks within 01month from the date of its issuance.
If the applied mark does not meet protection requirements, the NOIP shall issue a Decision on refusal, and the applicant has only 90 days toappeal against the said Decision. |
Comment: Trademark applicants via Madrid System designating Vietnam now have more chances to overcome a provisional refusal.
3. Recognition of well-known marks – Point 42.3,4
| New regulations | Former regulations |
| 42.3 The document proving the ownership of the mark and proving the well-known trademark may include information on the scope, scale, degree and continuity of the use of the mark, including the description. of origin…
42.4 When a well-known mark is recognized in the course of a decision on settlement of infringement of such well- known mark, or a decision on refusal of another mark, such well-known mark will be recorded in the list of well-known marks kept at the NOIP, for reference for registration/protection of IP rights. |
A mark couldbe recognized as well-known according to civil procedures or under a recognition decision of the NOIP, and that well-known mark would be recorded in the list of well-known marks kept at the NOIP. |
Comment: Evidence/documents to prove status of a mark as well-known now is more flexible on case by case basis. It also can be understood as a mark can only be recognized as a well-known mark through the settlement of enforcement or opposition/examination of a mark being identical/confusingly similar to such well-known mark.
III. PATENTS AND UTILITY SOLUTIONS:
1. Time limit for PCT applications enter Vietnamese national phase – Point 27.4, 5:
| New regulations | Former regulations |
| Not allow to enter Vietnamese National Phase late within 6 months.
A Vietnamese translation of the specification is required at the time of entry. |
Allow to enter Vietnamese National Phase late within 6 months with an extra fee. |
2. Requirement of paying annuity fee and fee for using of granted patent for 1st year – Point 7.c
| New regulations | Former regulations |
| If only patent grant and publication fees are submitted without annuity fee and fee for using of granted patent for 1st year, the patent certificate will be granted, and will be terminated the validity at the grant date. |
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3. Requirements for applications of inventions concerning biotechnologies – Point 23.8.a
| New regulations | Former regulations |
| For applications of inventions concerning genetic sequences of part of genetic sequences, a list of genetic sequences must be placed in the last of the specification. |
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4. Assessment of compatibility of the object stated in the application with the type of invention protection title, regarding “technical solutions” – Point 25.3.b
| New regulations | Former regulations |
| In definition of technical solutions adding the phrase “applied the natural laws”. |
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5. Features of function or purpose – Point 25.d (i)
| New regulations | Former regulations |
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6. Annuity payment – Point 20.3.a, b
| New regulations | Former regulations |
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7. Adding invalid patent applications – Point 13.2.h
| New regulations | Former regulations |
| Adding new circumstance:
If an invention belongs to a Vietnamese entity or iscreated inVietnam and is not filed in Vietnam first before being filed outside Vietnam, such patent application for the invention will be rejected. |
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This summary consists of 07 pages./.
