The Vietnam Government has just issued Decree 65/2023/ND-CP (“Decree”) dated 23 August 2023, which took effect on the same day. The purpose of this Decree is to provide specific regulations that correspond to several provisions of the amended Law on Intellectual Property (“IP law”), which took effect on 1 January 2023. As a result, the Decree introduces changes and additions to the IP system.
Typically, Vietnamese laws consist of three types of provisions: (i) those that can be directly applied, (ii) those that require further guidance, and (iii) those that the Government is expected to specify. Consequently, the Government issues decrees to concretize and specify provisions of types (ii) and (iii). Unfortunately, the delayed issuance of the Decree, in comparison to the amended IP law, caused delays in the processing of certain IP matters by the Intellectual Property Office of Vietnam (“IPVN”) due to the absence of corresponding provisions. Hence, the issuance of the Decree brings positive news for the handling of these IP matters. The following are some patent and design changes/additions resulting from the issuance of the Decree.
Moreover, in Vietnam, decrees also consist of the three aforementioned provisions, where types (ii) and (iii) are further specified through circulars issued by the relevant ministries. Circulars can also provide further clarification on provisions of the law. Consequently, it is anticipated that new circulars in the field of intellectual property will be issued in the near future.
1. Security control/Foreign filing license
The old legal documents did not provide clear provisions on this issue, but it has now been resolved. With the amended IP law, the Decree specifies detailed provisions on this matter. Under the Decree, applicants find it easier to determine whether their invention requires a security control.
According to Article 89a.1 of the amended IP law, if an invention belongs to technical fields that have an impact on national security or defense, is created in Vietnam, and the applicant (the owner – the person with the right to file the patent application) is either a Vietnamese citizen with permanent residency in Vietnam or a Vietnamese organization (such as a Vietnamese company), the applicant is allowed to file applications abroad only if a Vietnamese patent application for the invention has been filed for security control.
Article 14 of the Decree provides detailed regulations on the security control process, specifically in Article 14.1 (Annex VII) which lists the technical fields that affect national security or defense as mentioned in the amended IP law. These fields include:
1. Weapons including ammunition; chemical weapons, biological weapons, nuclear weapons, and other weapons used in the military.
3. Military equipment.
4. Equipment and technologies used for espionage, counter-espionage, and criminal investigation.
5. Support tools, facilities, technical devices, professional knowledge used in activities related to security and public order.
With this specified list, the Decree helps applicants determine whether their invention requires a security control process before filing abroad. For example, inventions made in Vietnam in fields such as human necessities, agriculture, furniture, etc., which clearly do not impact national security or defense according to the list, are exempt from security control and do not require filing in Vietnam first. However, inventions in fields such as chemistry, physics, electricity, etc., which may have some impact on national security or defense, may be subject to security control procedures.
During the security control process, the assessment of whether an invention belongs to the technical fields that affect national security or defense is carried out by the authorities of the Ministry of National Defense (MOD) and the Ministry of Public Security (MPS).
Under the Decree, if an applicant intends to file a patent application abroad after filing with the IPVN, they must notify the IPVN in writing of their intention. Within one month of receiving the notification, the IPVN will conduct a preliminary assessment to determine whether the invention falls under the technical fields that affect national security or defense. If there is doubt, the IPVN will forward the matter to the responsible authorities of the MOD and MPS for assessment. Within three months, the responsible authorities will issue the assessment results. The applicant will also be informed of the temporary suspension of the application examination process within seven days from the forwarding date.
If the assessment by the MOD and MPS confirms that the invention falls under the technical fields that affect national security or defense, the IPVN will notify the applicant within 20 days. The applicant will be asked to convert the application into a patent application for confidential invention within one month, unless they can demonstrate that their invention does not impact national security or defense, for national applications. For international applications under the Patent Cooperation Treaty (PCT), the IPVN will destroy the application unless the applicant can prove that the invention does not fall under the technical fields that affect national security or defense.
If the IPVN does not receive an assessment result from the MOD and MPS within three months, or if the assessment result shows that the invention does not belong to the technical fields that affect national security or defense, the IPVN will continue the examination process and notify the applicant within one month. The applicant can then proceed with filing applications abroad. In summary, the security control process takes approximately five months.
♦ The amended IP law and the Decree do not clearly specify the situation where an invention is partially made in Vietnam.
♦ Similarly, these legal documents also do not provide a mechanism for an applicant to request an independent assessment to file abroad earlier. Under the Decree, the applicant would have to file a patent application to undergo assessment.
♦ Additionally, according to Article 20 of the Decree, as a PCT receiving office, the IPVN will review the claims of a PCT application to determine whether the subject matter claimed is a State secret – a confidential invention. If it is, the IPVN will not transfer the application to the International Bureau of WIPO and the International Searching Authority. A PCT application originating from Vietnam can be filed with the IPVN as the PCT receiving office or directly with the International Bureau of WIPO. The Decree does not address the issue of State secrets in cases where the application is filed with the International Bureau.
It is hoped that the amended circulars will provide clarification on these points.
2. Remuneration to inventors (also applicable to design)
According to the IP law, patent owners are obligated to provide remuneration to inventors as agreed upon between the parties involved. In the event that there is no such agreement, the law establishes provisions for remuneration, such as “a fixed remuneration”. However, it does not specify the timeframes for payment, which is addressed in the Decree.
Under Article 35.3 of the Decree, if the owner and the inventor do not have an agreement regarding payment timelines, the remuneration must be paid within 30 days from the date on which the owner receives payment from the license or if the remuneration is determined based on Article 135.1(a) of the IP law (10% of the owner’s earnings before interest and taxes derived from the use of the invention, design), it must be paid no later than 90 days from the last date of the fiscal year.
3. Title of invention
Under the previous regulation “the title of an invention is to briefly state the subject-matter or subject-matters claimed“, in patent applications, the title is often required to list the designations of subject-matter (preambles) of the independent claims. However, in cases where there are numerous independent claims, having a long title due to the inclusion of preambles is deemed unreasonable. Therefore, the IPVN has accepted titles that only list a selection of the preambles, despite the regulation mentioned earlier. To align with this practice, the Decree now states that “the title of an invention is to briefly state the subject-matter or a number of or all of subject-matters claimed“.
4. Compensation for the patent owner due to delay in pharma authorization
Article 131a in the amended IP law provides provisions for compensation for the patent owner in cases of delays in obtaining marketing authorization for pharmaceuticals. The detailed procedures for claiming this compensation are outlined in Article 42 of the Decree.
Accordingly, the patent owner can claim compensation by filing a request accompanying the confirmation of the delayed marketing authorization for pharmaceuticals issued by the authority body for the marketing authorization. However, the compensations can only be made after the pharmaceuticals are authorized.
According to these regulations, the patent owner can claim compensation by submitting a request along with confirmation of the delayed marketing authorization for pharmaceuticals issued by the relevant authority responsible for granting the marketing authorization. However, the request can only be filed after the pharmaceuticals are authorized.
Furthermore, when pharmaceuticals are manufactured using multiple patents, compensation can be sought for all the relevant patents involved.
5. Form of patent certificate (also applicable to design and trademark)
Article 29.1 of the Decree specifies the issuance of certificates in electronic form for the first time. Starting from the effective date of the Decree (23 August 2023) certificates will be issued in electronic form unless the applicant explicitly requests a paper form by indicating it in the application form.
The electronic form of certificates offers convenience and aligns with the ongoing trend of digital transformation in various sectors, including administrative procedures. It aims to provide favorable conditions for applicants in managing their IP matters. For instance, when it comes to procedures related to recordal for amendments or assignments of a patent, the original paper patent certificate is typically required. However, there is no such requirement for patents issued in electronic form.
Nevertheless, the Decree does not address certain possibilities, such as (i) whether applicants can request to receive an electronic certificate for older IP applications, (ii) if an applicant does not request a paper certificate in the application form, whether they can make a future request for a pending application, and (iii) if an applicant initially requests a paper certificate but later wishes to cancel that request and receive an electronic certificate instead. As mentioned earlier, relevant circulars are expected to be issued soon and are anticipated to provide clarification on these three points.
6. Confidential invention
A confidential invention is defined by the IP law as an invention that has been determined by the responsible authorities as State secrets under the Law on Protection of State Secrets (Law No. 29/2018/QH14 “Law No. 29”) and relevant regulations.
A patent application for confidential invention can be filed, examined, and patented. Chapter IV (Articles 48-52) of the Decree provides regulations on the procedures regarding an application for confidential invention. According to these regulations, an application for confidential invention must be filed in paper-printed form, and all information/documents related to the filed application or granted patent will be kept confidential and not published until the confidential invention is declassified as provided by Law No. 29 and relevant regulations. Additionally, the application must include confirmation that the subject-matter of the application is considered a State secret under Law No. 29 and relevant regulations.
The protection period for state secrets may range from 10 to 30 years, or it may be shortened or extended depending on the considerations of the government based on the actual situation of the secrets. If the invention is no longer considered a confidential invention, such as if it has been declassified, the patent application/patent will be processed as a normal patent application/patent.
Furthermore, the filing of an application for confidential invention abroad must comply with Law No. 29 and relevant regulations. According to Article 16.2 of Law No. 29, State secrets can only be provided to and transferred to foreign individuals, authorities, and organizations participating in international cooperation programs or performing official duties related to State secrets. Therefore, an application for confidential invention can only be filed abroad if it is made under an official international cooperation program.
7. Division/Conversion of an already filed application
In Vietnam, divisional applications can be filed at any time during the prosecution, before the application is granted a patent or officially refused (a decision of refusal is issued instead of an office action). Additionally, during the prosecution, a patent application for invention can be converted into a patent application for utility solution (utility model) and vice versa. However, previously, there was no regulation for situations where the applicant wished to convert a part of a filed application. The introduction of Article 17 of the Decree addresses this issue.
According to the new regulation, if an applicant wishes to convert a part of a filed patent application for invention into a patent application for utility solution, or vice versa, they must first file a divisional application for that specific part, and then convert the divisional application. These requirements were already being applied in practice, even before specific regulations were in place. Therefore, the new regulation essentially formalizes existing patent practices.
8. Inventions owned by the State
Inventions owned by the State are a significant aspect of the amended IP law, with the addition of four articles. The Decree includes a dedicated chapter with five articles that outline the regulations pertaining to such inventions. Here is a brief overview:
♦ Article 43: Establishes a mechanism for transferring the right to file the patent application to the entity that created the invention. In cases where the invention is a result of cooperation among multiple parties, the right to file the application belongs to all the parties involved, with each party’s share corresponding to the portion of the budget invested in creating the invention. However, for inventions relevant to national defense and security, the right to file the application remains with the State body.
♦ Article 44: Sets forth a mechanism for the entity that created the invention to report to the relevant State body regarding the invention and the status of the filed patent application. This ensures that the application for invention has been filed and is being pursued diligently.
♦ Article 45: Establishes a mechanism to assign the right to file the application to a third party if the entity that created the invention does not file the application or if the filed application is not diligently pursued, as regulated in Article 44. If it is not possible to assign the invention to a third party to file the application, the invention will be published for public use.
♦ Article 46: Provides regulations to ensure that the patents granted for these inventions are adequately enforced and commercially exploited.
♦ Article 47: Outlines regulations regarding compulsory licenses, which may be granted if the patent owner has not taken effective measures to utilize the invention within a reasonable period of time or if the use of the invention is deemed to serve public interest, national security, national nutrition, health, or other public demands.
9. Procedures for processing industrial design applications under the Hague System
The Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act of 2 July 1999 – “1999 Act”) came into effect in Vietnam on 30 December 2019. However, the national law did not provide sufficient detailed regulations for processing industrial design applications designating Vietnam, resulting in delays in handling such applications by the IPVN. The good news is that the Decree introduces specific articles addressing this issue. Articles 22-24 of the Decree provide detailed procedures for handling international design applications.
♦ Regarding third-party opinions, if the design in an international application designating Vietnam is considered allowable by the IPVN, a decision on protection acceptance will be issued. According to Article 24.9 of the Decree, third parties may submit their opinions on the application before the decision is issued, often in the form of oppositions. However, it should be noted that these opinions are for the IPVN’s reference only. The IPVN is not obligated to prepare a report on the consideration of these opinions or send it to the third party.
♦ Moreover, regarding priority documents, applicants should be aware that while the WIPO website currently states that the IPVN can request a copy of the priority document directly for international applications designating Vietnam, in cases where the examiner believes the document is necessary to establish novelty due to disclosure during the priority claim period, Article 24.8 of the Decree specifies a different requirement. According to this article, for all applications, the applicants must submit the priority document directly to the IPVN within three months from the date on which the International Bureau informs the IPVN of the Vietnam designation of the application (three months from the publication date). Failure to provide the priority document within this timeframe will result in the application being deemed not to claim priority.
10. Deferment of publication
According to Article 110 of the amended IP law, it is possible to defer the publication of a design application. The applicant can request deferment at the time of filing the design application, but the deferment period cannot exceed seven months from the filing date.
The Decree does not provide specific details on this provision. To ensure smooth implementation in practice, it is expected that the new circulars, as mentioned earlier, will provide comprehensive regulations on this matter.
Furthermore, as indicated on the WIPO website at present, international applications designating Vietnam currently do not have the option for a deferment of application publication.
11. Description of industrial design
Under the previous regulations, a design specification consisting of a description and a claim was required, with the description primarily focusing on describing the design. The Decree has made some changes in this regard. Firstly, the requirement to “describe the design” has been narrowed down to “list the essential appearance-forming features of the design”. Secondly, the need for a claim is no longer mandatory. These changes can be found in Part VI of Annex 1 of the Decree.
However, it should be noted that a claim is still necessary for an industrial design application designating Vietnam under the Hague System, as stated on the WIPO website at present.
By Nguyen Duc Thang, Nguyen Thi Le Na and Dinh Thi Thuy Trang