The Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act of 2 July 1999 – “1999 Act”) took effect in Vietnam on 30 December 2019. Under Rule 18(1)(a) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement (Common Regulations), if the Intellectual Property Office of Vietnam (IPVN) does not issue a notification of refusal on an application within six months from its publication date, the application is considered patentable.
The records on the WIPO website indicate that there are 154 applications of which the period of time from their publication date to 7 May 2021 is over said period of six months (and therefore, it can now investigate these applications to see whether a notification of refusal is issued). Our study shows that 122 applications (79%) of the 154 applications were refused (notifications issued) and the rest 32 applications (21%) were patentable.
These 122 applications were refused for the following specific reasons (the applications might be refused for one or more reasons below). Responses to the notifications are to be filed with the IPVN.
95/122 applications (78%) were refused for this reason. An application designating Vietnam must contain a brief description of the characteristic features of the design, according to Article 5(2)(b)(ii) of the 1999 Act. The normal reason set forth in the notifications of the IPVN is that “The description does not fully disclose characteristic features of the design as required in Article 103(2)(a) of the Intellectual Property Law of Viet Nam.“
Accordingly, the IPVN has objected to the descriptions based on Article 103(2)(a) of the IP Law which along with its guides set a lot of regulations on a description – it is difficult for people who are not familiar with these regulations to prepare such a description. As a result, many applications have been objected to for this reason.
35/122 applications (28%) were refused for this reason. For a normal three-dimensional design application in Vietnam, a perspective view and six orthogonal views are required. For an international application designating Vietnam, a perspective view is required under Rule 9(3)(a) of the Common Regulations; for other views, a lack of one or more of six orthogonal views would result in an objection under Rule 9(4) of the Common Regulations which allows a Contracting Party to refuse the reproductions of an international registration as not being sufficient to disclose fully the industrial design. An example of such a refusal of the IPVN is “The reproductions are not sufficient to disclose fully the industrial design according to Article 103(4) of the Intellectual Property Law of Viet Nam, since the reproductions do not include the back view and the bottom view of the industrial design.“
As no many countries require all the basic seven views, and therefore, applicants do not often file all such seven views, many international applications designating Vietnam as reported above have been refused for this reason.
Unity of designs
31/122 applications (25%) were refused for this reason. Under Article 13(1) of the 1999 Act, Vietnam requires that only one independent and distinct design may be claimed in a single application, except that:
(i) designs that are the subject of the same international application must belong to the same set or composition of items and conform to a requirement of unity of design, unity of use or accompaniment of each other in use, or
(ii) a design may be accompanied by a single or multiple options, that are variations, of that design, which must conform to a requirement of unity of design and be insignificantly different from that design.
However, said exceptions provide little room for an international application to include multiple designs.
For exception (i), in general, the articles in a set of articles are limited to those that show a single general inventive concept, are used together with each other or are to perform a common purpose.
For exception (ii), for similar designs of the same product to be included in a single application as embodiments (variations), they are limited to those that are insignificantly different from each other.
As a result, although there are not a lot of multiple applications among the 122 applications in question, 25% of the 122 applications were refused for the unity of design reason.
17/122 applications (14%) were refused for this reason. Partial designs are not permissible in Vietnam. In fact, the partial designs in these applications are described:
– by broken lines (the design of a product depicted by both continuous lines and broken lines, in which parts depicted by continuous lines are to be claimed); and/or
– by a disclaim noted in the description.
The IPVN has objected to said applications based on Article 33(2)(b) of Circular No. 01/2007/TT-BKHCN which specifies that the design of a product is accepted if the product can independently be circulated – while only recognizing the claimed parts (defined by continuous lines for instance); without the disclaimed parts, the claimed parts cannot independently be circulated. In other words, if we destroy the product by breaking the product for instance to separate a claimed part and a disclaimed part, then the claimed part does not constitute “a product to be sold”.
6/122 applications (5%) were refused for subject-matter reasons. An example is a surface pattern design, it will be objected to because it cannot be independently circulated (mentioned in Item “Partial designs” above): a surface pattern cannot be independently circulated without an article bearing it.
Only 11/122 applications (9%) were considered as lacking novelty and only 3/122 applications (2%) were not considered as inventive – two of the requirements of patentability in Vietnam. The rest requirement is the requirement of industrial applicability.
Nguyen Duc Thang & Dinh Thi Thuy Trang
INVESTIP IP LAWFIRM