On November 30, 2023, the Minister of Science and Technology issued Circular No. 23/2023/TT-BKHCN detailing a number of articles of the Intellectual Property Law and measures to implement Decree No. 65/ 2023/ND-CP dated August 23, 2023 of the Government detailing on several articles and implementation measures of the Law on Intellectual Property regarding industrial property rights, protection of industrial property rights, rights to plant varieties, and state management of intellectual property.
I. Legal basis and guiding viewpoint
• Pursuant to the Law on Intellectual Property dated November 29, 2005; the Law on amendments to the Law on Intellectual Property dated June 19, 2009; the Law on amendments to the Law on Insurance Business and the Law on Intellectual Property dated June 14, 2019, and the Law on amendments to the Law on Intellectual Property dated June 16, 2022;
• Pursuant to Decree No. 65/2023 dated August 23, 2023 detailing on several articles and implementation measures of the Law on Intellectual Property regarding industrial property rights, protection of industrial property rights, rights to plant varieties, and state management of intellectual property
• Pursuant to Decision No. 917/QD-TTg of the Prime Minister dated August 1, 2022 on Promulgating a List and assigning agencies to preside over the drafting of documents detailing the implementation of approved laws and resolutions. The 15th National Assembly passed it at Session 3; and
• Implement document No. 8364/VPCP-KGVX dated December 13, 2022 of the Government Office The new circular is issued according to the shortened order and procedures specified in the Law on Promulgation of Legal Documents to replace current circulars. The objectives and guiding viewpoints of the issuance of the new circular are to: Detailed regulations for the assigned contents in the revised Law on Intellectual Property 2022; Inheriting and promoting the guiding regulations of Decree 103/2006, which are still valid for practical application and appropriate adjustments to overcome arising problems that does not set out and regulate the contents of administrative procedures.
II. Layout of Circular No. 23/2023/TT-BKHCN
The Circular includes 48 Articles divided into 6 Chapters.
Chapter I: GENERAL PROVISIONS
Article 1. Scope
Article 2. Regulated entities
Article 3. Interpretation of terms
Article 4. Representation of applicants and complainants
Article 5. Authorization of representatives to carry out procedures for establishing industrial property rights
Article 6. Responsibilities of applicants, complainants and representatives
Article 7. Industrial property fees and charges
Chapter II: PROCESSING OF APPLICATIONS TO ESTABLISH INDUSTRIAL PROPERTY RIGHTS
Section 1. GENERAL PROVISIONS ON PROCESSING OF APPLICATIONS FOR REGISTRATION OF INDUSTRIAL PROPERTY RIGHTS
Article 8. Receiving applications for registration of industrial property rights
Article 9. Formal examination of application
Article 10. Publication of valid applications
Article 11. Handling of objections to industrial property registration applications
Article 12. Substantive examination of application
Article 13. Re-examination
Section 2. APPLICATION AND PROCESSING OF PATENT REGISTRATION APPLICATION
Article 14. Requirements for patent applications
Article 15. Formal examination and publication of patent application
Article 16. Substantive examination of patent application
Section 3. APPLICATION AND PROCESSING OF LAYOUT-DESIGNS REGISTRATION APPLICATION
Article 17. Requirements for layout-designs registration application
Article 18. Confidentiality of information in layout-designs registration application
Article 19. Formal examination of layout-designs registration application form
Article 20. Publication of layout-designs registration application
Section 4. APPLICATION AND PROCESSING OF APPLICATION FOR INDUSTRIAL DESIGN REGISTRATION
Article 21. Requirements for industrial design registration applications
Article 22. Formal examination and publication of industrial design registration applications
Article 23. Substantive examination of industrial design registration application
Section 5. APPLICATION AND PROCESSING OF TRADEMARK REGISTRATION APPLICATION
Article 24. Requirements for trademark registration applications
Article 25. Formal examination and publication of trademark registration applications
Article 26. Substantive examination of trademark registration application
Article 27. Recognition of well-known trademarks
Section 6. APPLICATION AND PROCESSING OF APPLICATION FOR GEOGRAPHICAL INDICATIONS REGISTRATION
Article 28. Requirements for geographical indication registration applications
Article 29. Formal examination and publication of geographical indication registration applications
Article 30. Substantive examination of geographical indication registration application
Chapter III: PROTECTION TITLES
Article 31. Refusal to grant or grant protection titles
Article 32. National register of industrial property and industrial property representation
Article 33. Publication of decision to grant protection title
Article 34. Grounds for invalidation of protection titles
Chapter IV: COMPLAINTS AND RESOLUTION OF COMPLAINTS RELATED TO INDUSTRIAL PROPERTY PROCEDURES
Article 35. Person with the right to complain, subject of complaint, statute of limitations for complaints and person resolving complaints
Article 36. Complaint application
Article 37. Withdrawal of complaint and suspension of complaint resolution
Article 38. Order and procedures for resolving complaints
Article 39. Publication of complaint settlement decisions
Article 40. Effect of complained decisions and notices and complaint settlement decisions
Article 41. Measures to limit complaints
Chapter V: GUARANTEE OF INDUSTRIAL PROPERTY INFORMATION
Article 42. Building and managing the national database on industrial property
Article 43. Accessing and exploiting information in the national database on industrial property
Article 44. Information lookup and document provision services
Article 45. Ensuring industrial property information in localities
Article 46. Issuing copies of documents and certifying the first application to enjoy priority rights
Chapter VI: IMPLEMENTATION PROVISIONS
Article 47. Transitional regulations
Article 48. Entry into force
III. Main amendments in Circular No. 23/2023/TT-BKHCN
Carrying out assigned tasks in the Intellectual Property Law 2022, the Circular stipulates in more detail:
• Regarding invalidation of protection titles:
Article 34, Clauses 2 and 3, provide guidance on grounds for determining whether a trademark application registered with bad faith/bad intentions, with provisions that also apply during the processing of patent and trademark applications.
• Regarding opposition against industrial property registration applications
Article 11 stipulates on handling opposition application against industrial property registration applications, main points as follows:
1. Time limit (02 months) for the applicant to respond in opposition application, except for several cases.
2. IP Vietnam handles objections during the substantive examination of the trademark application and notifies the objectors of the results of handling the objections along with the results of the substantive examination of the application for specific cases.
3. If deemed necessary, IP Vietnam shall notify the objector of response and set a period of 02 months from the date of notification for the objector to respond in writing to the said response.
4. Direct dialogue between the parties when necessary.
5. Resolve specific cases when a dispute arises as the objector’s opinion is related to the right to registration; the provisions set out to suspend the examination process of the application to wait for the results of the dispute resolution by the Court.
…
• Regarding the use of results of substantive examination of patent applications
Article 16.9 on examination of patent application guides:
“9. The use of information search results and results of examination of patent applications by foreign patent offices is carried out as follows:
a) During the appraisal of the content of the patent application, IP Vietnam can refer to the information search results and the appraisal results of the corresponding applications filed abroad;
b) Search results and appraisal results mentioned in point a of this clause include one of the following documents:
(i) Search report, examination report and notification of examination results;
(ii) Publication of patent or protection certificate.c) Before IP Vietnam issues a notice of substantive examination results, the applicant can request IP Vietnam to use the results of substantive examination of a patent application filed abroad to evaluate the content; if the following conditions are met:…”
Article 34, Clause 1, detailed instructions for determining whether a patent is granted beyond the scope disclosed in the original specification
• Notably, to be consistent with the Law on Promulgation of Legal Documents, the Circular also does not stipulate procedures.
The administrative procedures of the prior Circular have been posted to Decree No. 65/2023 dated August 23, 2023, including: procedures for establishing industrial property rights, procedures for repair/separation/conversion/change of owner application, withdrawal of application, procedures for amending and changing title holders, narrowing the scope of protection, procedures for maintaining and extending protection titles; Procedures for termination and cancellation of protection titles, procedures for handling international trademark applications, procedures for handling international applications for inventions, procedures for registering transfer contracts, licensing, procedures related to issuance and revocation of intellectual property representation service practice certificates, procedures for recording, amending and deleting the name of intellectual property representation service organizations.
Circular No. 23/2023/TT-BKHCN takes effect as from November 30, 2023.
Vu Le Vy
Enforcement Department
