By Nguyen Duc Thang, Director of Patent Department
I. The Law on Intellectual Property (IP Law)
The Ministry of Science and Technology of Vietnam in November 2020 published a draft of amended IP law (Draft) for public comments. The proposed amendments are quite comprehensive – with 67 articles amended and 13 articles added, based mainly on a project to evaluate the implementation of the IP Law over its first 10 years proceeded by the Ministry and international treaties Vietnam has recently joined. Below are the proposed main changes in patent area.
Grounds for invalidation
The current IP law provides two grounds for invalidation of patents which are the lack of a right to file the application for the applicant and failure to satisfy the requirements of patentability. A lot of grounds have been introduced to the Draft such as unity of invention requirement was not met, amendment to application went beyond the original disclosure, the claims were not supported by the original specification.
The fact that, the grounds are so broad extended and therefore it would be easier to invalidate patents, would make the patent system unstable and causes adverse effects – patent owners would proceed with their manufacture and business activities based on a patent, but be not sure whether their patent would be revoked.
Foreign filing license
Basically, this regulation has been taken from Decree 103 to introduce to the Draft. Accordingly, a foreign filing license will not be granted; but after a first filing in Vietnam, if no notification of security issues from the Intellectual Property Office of Vietnam (IPVN) is issued within six months following the filing date, the applicant can file abroad. In addition, the scope of type of inventions needed to first file has been limited to inventions which significantly affect national security, national defense.
The period of six months for filing abroad is fixed and quite long. No measure to shorten such as accelerated examinations has been specified in the Draft.
Also, it would be difficult to apply the relative provision “significantly affect national security, national defense”; how “significantly affect” would be.
Assessment of novelty
The assessment under the current IP law is based only on publications occurring before the filing date (or priority date) of the patent application in question. The scope of prior art has been extended in the Draft: an invention will also not be considered novel if its filing date (or priority date) of the application is after the respective date of another application which discloses the same invention and is published on or after said filing date (or priority date).
However, it is unclear how to deal with the case that the application and the another application are filed in the name of the same applicant.
Also, “use invention” (typically, first medical use inventions) has been rejected based on novelty. No amendment has been made to this article of novelty in the Draft to show the protection of use inventions – the issue which has been controversial for a long time.
Compensation for patent owner due to delay in pharma authorization
According to the Draft, a patent owner will not have to pay some annuities for the time delayed due to the pharma market authorization proceeding or can require third parties using the invention for a money payment to compensate for the time delayed.
For compensation of annuity, the proposal would not be expected by pharma patent owners because such compensation is quite small; while for the other, it would be difficult to receive the money payment from the third parties.
The normal mechanism which extends the period of protection of patent has not been specified in the Draft.
Patent experts have concerned about some points:
– Whether or not claims of a granted patent can be amended to restrict the scope of protection. It is clear under the current IP law that one or more claims can be deleted; however, the possibility of amending the claims to limit the scope of protection is implied in the current IP law and is not very clear.
– Whether or not errors in a granted patent can be corrected. In this regard, there is an inconsistency in legal documents.
– The scope of formalities examination is so broad, including respects of substantive examination such as clarity of claims. This results in repeated jobs in examination – a matter is dealt with by multiple office actions – and time-consuming for both the IPVN and applicants.
Nevertheless, the Draft has not shown that the above issues would be dealt with.
The definition of design has been amended to introduce a requirement that for the design of a component of a product to be registrable for protection, it needs to be visible in the state when it is assembled in the finished product.
According to the current regulations, a component of a product is considered to be a product, and therefore, it is usually visible.
II. Requirement of signature of documents
The IPVN just issued Notice No. 13822/TB-SHTT on 23 November 2020. Accordingly, power of attorney (POA) must be signed by the legal representative of the applicant/owner. If the title of the signer in the POA is such as Chairman of the Board of members, Chairman of the Board, President, General Director, Director, the IPVN will consider that it is signed by the legal representative and the requirement is satisfied. Otherwise, if the POA is signed by someone with another title (such as chief officer, director of department, etc.), it is required to further submit an additional document proving that the signer is the legal representative or is authorized to sign the document by the legal representative, or the document must be consular legalized or authenticated.
While Vietnamese patent experts consider that the requirement is not necessary and causes difficulty for applicants, the Vietnamese examiners have tended to insist on applying and also apply the same to other documents such as assignments, declarations.
III. International treaties
Recently, Vietnam has joined a number of big international treaties with various IP provisions:
. On 14 January 2019, The Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) came into effect in Vietnam.
. On 1 January 2020, The Hague Agreement (Geneva Act of 2 July 1999) was officially taken effect in Vietnam.
. On 1 August 2020, The EU-Vietnam Free Trade Agreement (EVFTA) was taken effect.
In addition, on 15 November 2020, Vietnam, together with 14 other countries, signed the Regional Comprehensive Economic Partnership (RCEP) – the biggest FTA in the world. Hopefully, the RCEP will soon take effect.
Clearly, the international treaties are directing Vietnam IP legislation forward international practice thanks to complying with such treaties.