The National Assembly has just passed the amended Law on Intellectual Property (amended IP Law) which will take effect from 1 January 2023. The IP Law was issued in 2005 and amended several times. This time, the amendments are quite broad. Below are the main patent and design amendments.
1. Grounds for patent invalidation
Article 96 of the current IP law provides for two grounds for invalidation of patents which are the lack of the right to file the application for the applicant and the failure to satisfy the requirements of patentability for the subject-matter. A lot of grounds have been added to Article 96. Accordingly, the grounds in the amended IP Law are:
♦ No first filing was made; while the invention in question belonged to the kind of inventions required to file in Vietnam first
♦ The application failed to disclose or inexactly disclosed the origin of genetic resources or traditional knowledge associated with genetic resources; while the invention was created directly based on the same
♦ The applicant had no right to file the application (similar to the current provision)
♦ The subject-matter did not satisfy the requirements of novelty, inventive step, industrial applicability and patentable subject-matter (similar to the current provision)
♦ The description or claim amendments went beyond the original disclosure
♦ The description failed to clearly and sufficiently disclose to enable the invention to be carried out by a person skilled in the art
♦ The granted claims were not supported by the original specification
♦ The invention failed to meet the principle of first to file (double patenting issue).
The initial draft of the amended IP law included the unity of invention requirement as a ground; however, reasonably this requirement has not been present in the final amended IP law.
Also, the amended Article 96 clearly states that if a patent is invalidated, the validity of the patent is null from the date of granting the patent.
2. Foreign filing license
The first filing is currently stipulated in Decree 103/2006/ND-CP of the Government (Decree 103), amended by Decree 122/2010/ND-CP. General principles of first filing have been introduced to the amended IP Law, and accordingly, Decree 103 needs amendment.
Specifically, according to Article 89a.1 in the amended IP law, for an invention that belongs to technical fields that affect national security or national defense, is created in Vietnam and the applicant thereof (the owner as well as the person having the right to file the patent application) is an individual who is a Vietnamese citizen and has permanent residency in Vietnam or is a Vietnamese organization (like a Vietnamese company), it is allowed to file applications abroad only if a Vietnamese patent application for the invention has been filed for security control. Article 89a.2 in the amended IP law specifies: The Government provides for specific regulations on Article 89a.1.
Accordingly, Decree 103 will soon be amended to remove the current general principles and to concretize the general principles of Article 89a.1. Besides, the current regulations in Decree 103 are not sufficiently detailed, resulting in some ambiguous contents like whether a first filing is required where an invention is partially made in Vietnam, and have some issues like it takes six months, which is too long, from a first filing for filing abroad. It is expected that the amended Decree 103 will clarify such ambiguous contents and provide for additional provisions in favor of applicants.
3. Assessment of novelty
The assessment of novelty 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 the prior art has been extended in the amended IP Law. According to amended Article 60.1, an invention will also not be considered novel if it is disclosed in another patent application the filing date (or priority date) of which is prior to the filing date (or priority date) of the application in question, but the publication date of which is on or subsequent to the filing date (or priority date) of the application in question.
Many countries use such extended prior art, and this change is reasonable.
4. Compensation for patent owner due to delay in pharma authorization
Article 131a in the amended IP Law provides for compensation for the patent owner due to a delay in marketing authorization for pharmaceuticals; however, it is some annuities only. Such compensation is quite small. The patent owners would expect a bigger compensation like a patent term extension.
When the EU-Vietnam Free Trade Agreement (EVFTA) took effect, said annuity compensation was introduced in Resolution 102/2020/QH14 of the National Assembly and took effect from 1 August 2020 to comply with the EVFTA. It has now been officially introduced to the IP law as an amendment.
Both the current and amended IP laws provide for a procedure for a third party to opine whether an application should be patented. Specifically, after an application is published, a third party can file a written opinion with the patent office to opine on whether to grant a patent on the application or not. However, information from the opinion procedure is for reference by the patent office only. It is not required to officially respond to the opinion. In other words, this is an observation procedure.
The amended IP law additionally provides for an opposition procedure. Accordingly, within nine months from the publication date of a patent application, and provided that the patent has not yet been granted (before the granting date), any third party can oppose the grant of a patent.
Article 112a in the amended IP Law also specifies that the Ministry of Science and Technology will give detailed regulations for said opposition. Accordingly, the Ministry will soon amend Circular 01/2007/TT-BKHCN to reflect the detailed regulations. At present, it is unknown what the regulations are, but certainly, such notice of opposition will officially be replied to by the patent office rather than being referenced as said opinion procedure. In other words, the third party will be a party to the procedure. Along with this, an opposition fee is payable.
6. Remuneration to inventors
Both of the current and amended IP Laws stipulate that patent owners have the obligation to pay remuneration to the inventors according to the agreement among the parties. However, in case there is no such agreement, the current IP law specifies a minimum remuneration which patent owners are payable to the inventors. This may cause trouble. “A minimum remuneration” has been replaced by “a fixed remuneration” in amended Article 135.1. Accordingly, everything is clear now.
7. Inventions in relation to genetic resources
For an invention that is created directly based on genetic resources or traditional knowledge associated with genetic resources, Article 86.1(b) in the amended IP law clearly states that the owner of the invention will be the organization or individual entrusted to administer genetic resources who provides the genetic resources, the traditional knowledge associated with the genetic resources by means of a contract of accessing the genetic resources and benefit-sharing, unless there are other agreements among the parties.
In addition, it must be taken into account that in Vietnam, an explanatory document of the origin of the genetic resources or traditional knowledge associated with genetic resources is required in patent applications for such inventions.
8. Compulsory licensing of pharmaceuticals
Relating to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, a ground for granting compulsory licenses has been added to Article 145: The use of the invention to meet the needs of pharmaceuticals for preventing or treating the disease in another country that fulfills the import conditions in accordance with an international treaty of which Vietnam is a member.
9. Inventions owned by the State
At present, when the State invests to make an invention, the normal route is that a respective State body will be responsible for performing the investment and it will invest with an appropriate entity to create an invention. Under the current IP law, overall an entity who invests to create an invention will have the right to file a patent application for the invention, and then, when the patent is granted, the entity will be the patent owner. Accordingly, in this case, the State body will be the patent owner. However, doing business is not the main task of the State bodies. As a result, such inventions are not exploited effectively. Article 86 has been amended to state that in such a case, the patent owner will be the entity who created the invention. Accordingly, this entity will exploit the invention and send the revenue back to the State proportionally.
Along with this ownership change, several provisions have been added, briefly:
♦ Article 86a in the amended IP law: For inventions relating to national defense and security, the owner will still be the State body.
♦ Article 136a in the amended IP law: Obligations of the entity who created the invention have been indicated. For example, such an entity has to report to the respective State body on the invention within 30 days from the date on which the invention is created and has to file the patent application within six months from the report date.
♦ Article 133a in the amended IP law: (i) Consequences of the failure to implement the obligations have been that the State may assign the right to file the patent application to any organizations and individuals, or publish the invention for public use; and (ii) compulsory licenses can be granted if the patent owner has not taken, within a reasonable period of time, effective measures to use the inventions, or the use of the invention is purposed for the public interest, national security, national nutrition, health or other public demands.
♦ Amended Article 139: The patent application/granted patent is only permitted to assign to a Vietnamese organization (like a Vietnamese company), or an individual who is a Vietnamese citizen and has permanent residency in Vietnam [this provision has replaced the provision that the granted patent cannot be assigned without permission of the State in the previous draft of the amended IP law]. Also, the assignee must perform the respective obligations specified by Article 136a.
10. Definition of industrial design
According to amended Article 4.13, design is defined as the external appearance of a product or a component part for assembly to constitute a complex product, is expressed in shapes, lines, colors, or any combination thereof and is visible during the exploitation of utility of the product or complex product.
Similar to the compensation in Item 4 above, when the EVFTA took effect, said definition was introduced in the same Resolution of the National Assembly and took effect from 1 August 2020 to comply with the EVFTA. It has now been officially introduced to the IP law as an amendment.
11. Deferment of publication
The current IP Law does not allow a deferment of application publication. To fulfill the long-time need of design applicants, the amended IP Law has provided for in amended Article 110 a possibility of such deferment. To defer, the applicant needs to request the same at the time of filing the design application, but the period of deferment is not exceeding seven months from the filing date. Should you require any further information or assistance, please contact us at firstname.lastname@example.org
By Nguyen Duc Thang and Nguyen Thi Le Na