Intellectual property transfers, particularly the assignment of patent rights, play a crucial role in the commercialization and management of intellectual assets. In Vietnam, the regulations governing the recording of assignments for granted patents could be quite strict, presenting difficulties for patent owners. This article discusses some common objections encountered during the process and provides practical solutions to address them efficiently.
Objections Related to Assignments
1. Lack of an Assignment Price
Under Article 140 of the Law on Intellectual Property (“IP Law”), an assignment must include an assignment price. An assignment that does not specify an assignment price will be subject to objection.
In practice, even if the price is stated as zero but the assignment includes payment provisions, it would still be objected to for containing an inherent contradiction.
For an assignment covering multiple patents, the separate prices should clearly be specified. If only a lump sum is stated, and the recordal request involves only a subset of these patents, the Intellectual Property Office of Vietnam (“IPVN”) may raise objections. To address such issues, the patent owner may need to submit an annex (to the assignment) specifying individual prices or provide a revised assignment to overcome the objection.
2. Lack of Signatures on Each Page of a Multi-Page Assignment
Under Article 58 of Decree 65/2023/ND-CP (“Decree 65”), all pages of a multi-page assignment must either be signed by both the parties or bear a seal overlapping all pages (a binding mark).
Foreign patent holders may be unfamiliar with this requirement. In practice, the IPVN may accept notarized assignments as sufficient to satisfy this condition.
3. Representation of Both Parties by a Single Person
The IPVN refers to Article 141 of the Civil Code of Vietnam to object to an assignment executed by the same individual representing both the assignor and the assignee (each party must have a separate representative sign the assignment).
Also, foreign patent owners may not be familiar with this requirement. A potential question may arise as to whether Article 141 of the Civil Code, rather than the IP Law, should apply in examining requests for patent assignment recordals. While the IP Law governs patent assignments, the IPVN’s reliance on the Civil Code may introduce an area for further clarification.
4. Non-Direct Signature or Seal
Assignments require wet signatures. If there is any suspicion that a signature is not a wet signature or if seals are used in place of signatures, the IPVN may require legalization to verify the authenticity of the document.
Since legalization can be time-consuming and costly, it is advisable to use wet signatures in assignments to avoid additional procedures and expenses.
Objections Related to Assigned Patents
5. Original patent certificate
A recordal request must include the original patent certificate. This requirement may present difficulties for patent owners. However, if the original certificate is damaged, faded, etc., the patent owner can request the IPVN to issue a duplicate patent certificate; this duplicate can then be submitted in place of the original certificate for the recordal process.
Furthermore, since 23 August 2023, the effective date of Decree 65, applicants filing patent applications have been required to specify whether they wish to receive the patent certificate in paper or electronic form. To date, no patent certificates in electronic form have been issued. According to Article 58 of Decree 65, the requirement to submit an original patent certificate with a request for assignment recordal applies only to certificates issued in paper form.
Patent owners should keep these points in mind when planning to record an assignment for their patents.
6. Validity of the Assigned Patent
An assignment cannot be recorded if the assigned patent is invalid. This usually occurs when a patent has expired or if the relevant annuity has not been paid. If the patent is invalid, the IPVN will issue an office action objecting to the assignment request.
Patent owners should ensure that annuities are paid and that patents are valid before submitting recordal requests. Additionally, for requests involving multiple patents, the validity of each patent must be verified. Any invalid patent in the group may delay the recordal process until annuities are paid or invalid patents are excluded from the request.
Objections Related to Patent Holders
7. Patent Holder Information
Patent holder information is subject to strict scrutiny during the recordal process. Minor discrepancies in the assignor’s name or address across IPVN records, powers of attorney, or assignments can lead to office actions.
Patent owners should ensure consistency and accuracy in their documents to avoid such objections.
8. Validity of Assignment and Chain Recordals
In cases involving a chain of assignments, it is necessary to record assignments in succession. For example, if Company A assigned a granted patent to Company B, and Company B subsequently assigned it to Company C, but Company B no longer exists, complications may arise. In such scenarios, the assignment from A to B must be recorded first, followed by the assignment from B to C. If B no longer exists to execute necessary documents (e.g., a power of attorney), the process becomes challenging.
Besides, a patent right cannot be enforced if the entity requesting enforcement from the competent authorities is not officially recorded as the patent owner at the IPVN. Specifically, under Article 148 of the IP Law, a patent assignment is not effective until it is successfully recorded by the IPVN (while a patent license is effective between the parties upon agreement but is effective against third parties only after it has been successfully recorded by the IPVN). This creates challenges when a patent right needs to be enforced, but the assignment has not yet been recorded with the IPVN.
Accordingly, patent owners should address assignments promptly and ensure recordals are submitted without unnecessary delays to avoid such complications.
CONCLUSION
Patent assignments in Vietnam require strict compliance with legal regulations to avoid objections and complications during the process. In fact, there have been some cases where a patent assignment was a part of a commercial agreement; the recording of patent assignments using such commercial agreements in Vietnam had been objected to because the commercial agreement did not meet the stringent legal requirements. Therefore, the patent holders should be mindful of the specific requirements to avoid potential obstacles when recording assignments with the patent office. In addition, the patent holders might seek consultants from a local patent attorney to find out what’s required to the properly assignment document for the recording.
By Nguyen Thi Le Na and Luu Thi Trang
Patent Department