Question 1. What is an industrial design?
Under current law, a design is defined as the external appearance of a finished product or a component for assembling a finished product; the external appearance is expressed in shapes, lines, colors, or any combination thereof and is visible during the use of the product.
A design must satisfy the requirements of:
– Absolute novelty
– Inventive step, and
– Industrial applicability.
Partial designs are not patentable in Vietnam. (However, a Vietnamese application could claim priority to a foreign partial design application).
Question 2. Is there any kind of applications other than national applications?
Vietnam is a member of the Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act of 2 July 1999). Therefore, the international applications under the Agreement can designate Vietnam.
Question 3. Who has the right to file a design application (who is the applicant)?
Under Article 86 of the Law on Intellectual Property (IP Law), in general, the following organizations and individuals shall have the right to file the design application:
i. Inventors who create the design by their own labor and expenses; or
ii. Organizations or individuals who invest funds and facilities to the inventors in the form of a job assignment or job hiring unless otherwise agreed by the parties.
Question 4. Who is the prescribed filer?
Under Article 89 of the IP Law, it is required for foreign individuals not permanently residing in Vietnam, and foreign organizations and individuals without production or business establishments in Vietnam to file their design applications through Vietnamese IP representatives.
For the rest, the filer can be the applicant.
Question 5. What are the required documents/information for filing a design application?
– For a normal industrial design application, it must comprise all seven basic views.
– Broken lines to show partial designs are not accepted. Lines must be clean and sharp. The background color of the photos must be homogeneous. The scales of views must be the same.
– If in a set of figures/photos, a view is the same as or symmetrical to another view, the set may comprise only one of the two views.
– It is possible to omit a bottom view of a product with a large size and weight. Similarly, it is possible to omit one or more of the seven views above if the omitted views would show very thin depths of the product.
– For a design of an article which is a part of an integrated product, if the design is complex, Vietnamese examiners may require a figure/photo which shows the article within the product to illustrate where it is installed and used.
– In certain cases, the set needs to comprise figures/photos which are to clarify the design, such as enlarged views, sectional views, expanded views, and so on.
– 2D designs are also patentable.
2. Locarno (8th edition) classification
– Classification symbols (subclasses) of the design are required to be indicated in an application form, which must be filed at the time of filing the application. If no symbol is indicated in the application form or incorrect symbols are indicated, the Intellectual Property Office of Vietnam (IPVN) will classify the design and charge a fee.
3. Name, address, and nationality of inventor; name and address of applicant; filing date, receiving state, and number of priority application
– These data must be designated in the application form.
4. Power of attorney (POA)
– The IPVN requires an original POA or a copy of a general POA already filed. The non-extendable deadline for submitting the original power of attorney or the copy is one month from the filing date and notarization is not required.
5. Priority document
– The non-extendable deadline for submitting the priority document is three months from the filing date.
– The IPVN also requires a Vietnamese translation of its cover sheets to determine the applicant of the priority application.
– If the applicant of the priority application is not the applicant of the Vietnamese application, it is required to submit an additional document like an assignment to prove that the applicant of the Vietnamese application has the right to claim the priority. The assignment may be an original or notarized/certified copy.
Question 6. What are the deadlines relating to a design application? Is there any possible extension of the deadlines and if yes, how to obtain the extension?
1. Filing deadline
– Paris Convention applications: The filing deadline is, as prescribed in the Paris convention, six months from the priority date.
2. Deadline for submitting POA and priority document
– The non-extendable deadline for submitting the original POA is one month from the filing date and the non-extendable deadline for submitting the priority document is three months from the filing date. A Digital Access Service (DAS) is not available in Vietnam.
3. Other deadlines
– The deadline for responding to an office action in the formalities examination stage is two months and extendable once for two months.
– The deadline for responding to an office action in the substantive examination stage is three months and extendable once for three months.
– Voluntary amendments and divisional applications can be filed at any time during the prosecution.
– The deadline for paying granting fees after receiving an invitation to pay granting fees is three months and extendable once for three months.
4. Excuse: Circular No. 16/2016/TT-BKHCN specifies a force majeure event and objective obstacles which are defined as follows.
“A force majeure event is an event which occurs in an objective and unforeseeable manner (for example, natural calamity, enemy-inflicted destruction, etc.) and cannot be surmounted despite all necessary and possible measures having been taken. Objective obstacles are obstacles caused by objective circumstances (for example, sickness, going on a business trip, learning at a distant place, etc.) that make a person with rights or obligations unable to know that his/her legal rights or interests have been violated, or unable to carry out his/her legal rights or obligations.”
A late action can be excused if the applicant submits a petition and proper evidence demonstrating said events and the IPVN approves, after consideration.
Question 7. How much does it cost for filing a design application?
The cost for filing a design application in Vietnam depends on several factors, including:
i. Number of embodiments
ii. Number of drawings/photos
iii. Number of priorities claimed.
Specifically, in accordance with Circular No. 263/2016/TT-BTC issued by the Ministry of Finance (MOF), detailed official fees for filing a design application are as follows:
1. Filing application: 150,000 VND
2. Convention priority claim (per priority): 600,000 VND
3. Publication of application:
– for bibliographic data and one figure/photo: 120,000 VND
– for each further figure/photo: 60,000 VND
4. Design classification (if the applicant does not self-classify): 100,000 VND
5. Search and substantive examination (per each embodiment): 1,180,000 VND.
Question 8. What are the subject matters excluded from design protection?
Under Article 64 of the IP Law, the following subject-matters shall be excluded from design protection:
1. The appearance of a product that is dictated by its technical features;
2. The appearance of a civil or industrial construction work; and
3. The appearance of a product that is invisible during use of the product.
Question 9. What are the novelty and inventive step?
Under Article 65 of the IP Law, the requirement of novelty:
i. A design is considered novel if it is significantly different from designs which have publicly been disclosed in the forms of use or written description or any other forms, inside or outside the country, prior to the filing date of the design application or prior to the priority date, in case the application benefits a priority date.
ii. A design is considered as not yet publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret.
iii. A grace period of six months is available. Briefly, a design is still considered novel if it is published (a) without permission from the applicant, (b) by the applicant in the form of a scientific report or (c) by the applicant in the form of displaying it at a national exhibition of Vietnam or at an official or officially recognized international exhibition.
Under Article 66 of the IP Law, the requirement of inventive step: A design is considered as involving an inventive step if, based on designs which have already been publicly disclosed in the forms of use or written description or any other forms, inside or outside the country, prior to the filing date of the design application or prior to the priority date in case the application benefits a priority date, the design cannot be easily created by a person skilled in the art.
Question 10. What is the time frame of design examination?
Design applications will be examined as to formalities, then published, and then substantively examined as described below.
– The formalities examination results will be available within few months.
– The application will be published within two months after it passes the formalities examination.
– In principle, the substantive examination results will be available within seven months from the publication date.
Question 11. What is the “first to file” principle/double patenting in Vietnam?
The “first to file” principle is specified in Article 90 of the IP Law. Accordingly, in case there are multiple design applications for designs which are identical or not significantly different from each other, only one patent shall be granted for the application with the earliest priority or filing date among the applications. In case of the same priority or filing date, still only one patent is granted, and therefore, the applicants will have to discuss to reach an agreement on the patent.
Question 12. What is the requirement of unity of design?
The unity of design requirement is specified in Article 101 of the IP Law, in which a design application will satisfy this requirement if it contains one design only or the designs of a set of articles (such as a set of cups and pot) or similar designs (embodiments).
For embodiments to be included in an application, they should not be significantly different from each other. This requirement is different from the requirement in some countries that embodiments belonging to the same Locarno Classification could be included in an application.
Question 13. What are the requirements for recordals of change or assignment on a pending application?
Under Article 115 of the IP Law, as long as the application is pending (no decision on refusal or grant has been issued), the applicant may request the recording of change or assignment.
The supporting documents would be a document evidencing the change or assignment.
– For a change, it is required to submit a document evidencing the change like a declaration of the change. Notarization is required for such a declaration.
– For an assignment, it is required to submit the assignment document that must contain the following main contents: (i) Full names and addresses of the assignor and of the assignee and (ii) Matter to be assigned (like a design application number).
Such assignment document must be an original without notarization or a certified/notarized copy thereof. The IPVN strictly examines such documents. For example, if the document has more than one page, in addition to the signatures at the last page, each of the other pages must also be signed at one of its corners or the document would have to contain marks showing that its pages belong to one document like a notary seal overlapping on all of the pages.
For a design application with multiple applicants, a written consent of the co-applicants for the recordal of the assignment is also required.
Question 14. When a third party can file an opposition?
Under Article 112 of the IP Law, from the publication date of an application in the Official Industrial Property Gazette (Gazette) to the granting date, any third party may give written opinions to the IPVN regarding the granting or not of a patent.
Although the IPVN will take actions like forwarding the opinions to the applicant for comments, etc., such documents are to be consulted by the IPVN during the examination of the design application, a response to the third party is not required. Therefore, this is a filing of written opinions and is not a true opposition.
Question 15. What should we do in case of receiving a decision on refusal?
After an office action, if the IPVN issues a decision on refusal, the applicant may take the following actions.
Step 1: The applicant may proceed with:
i. Filing a first instance appeal to the IPVN within 90 days from the receiving date or the aware date of the decision; or
ii. Bringing a lawsuit to the competent administrative court within one year from the receiving date or the aware date of the decision.
Step 2: In case the statutory period for first instance appeal is over and no decision is issued by the IPVN, or the appellant does not agree with the IPVN’s decision on settlement of the first instance appeal, the appellant may proceed with:
i. Filing a second instance appeal to the IPVN’s supervising authority, the Ministry of Science and Technology (MOST), within 30 days either from the ending of the statutory period for the first instance appeal if no decision has been issued, or from the receiving date or the aware date of the decision on the first appeal; or
ii. Bringing a lawsuit to the competent administrative court within one year either from the ending of the statutory period for settling the first instance appeal if no decision has been issued, or from the receiving date or the aware date of the decision on settlement of the first instance appeal.
Step 3: In case the statutory period for the second instance appeal is over and no decision is issued by the MOST, or the appellant does not agree with the MOST’s decision on settlement of the second instance appeal, the appellant can bring a lawsuit against the MOST’s decision to the competent administrative court within one year either from the ending of the statutory period for settling the second instance appeal if no decision has been issued, or from the receiving date or the aware date of the decision on settlement of the second instance appeal.
In practice, said periods for settling the appeal or the lawsuit are much prolonged.
Question 16. What are design patent rights? What are exemptions from patent infringement?
A design patent is valid from the granting date.
Before the grant, a provisional right is available under Article 131 of the IP Law. Briefly, after the application is published, the applicant can inform a third party who has used the design for commercial purposes that the applicant already filed the application for the design with the particulars: the filing date and the publication date of the application in the Gazette. If the third party continues to use, when the patent is granted, then the patent owner has the right to request compensation equivalent to the amount for licensing the right of use within the scope and period of time of said use.
Under Article 123 of the IP Law, a proprietor has the following rights:
i. To use or permit others to use the design;
ii. To prohibit others from using the design;
iii. To determine the design (assignment for instance).
Under Article 124 of the IP Law, the use of a design comprises the following acts:
i. Production of products with appearance embodying the protected design;
ii. Circulation, advertisement, offer, storage for circulation of the products in (i);
iii. Importation of the products in (i).
Under Article 125 of the IP Law, some exemptions are provided:
i. The use of the design for personal needs or for non-commercial purposes, or for purposes of evaluation, analysis, research, teaching, testing, trial production or information collection for getting permission for production, importation or circulation of products;
ii. The circulation, importation, exploitation of products which were lawfully put on the market including overseas markets;
iii. The use of the design only for the purpose of maintaining the operation of foreign means of transport in transit or temporarily staying in the territory of Vietnam;
iv. The use of the design by persons with a prior use right.
Question 17. What actions are needed to renew the rights?
An initial term of protection of a design patent begins at the granting date and ends five years following the filing date. A design patent is renewable for two consecutive five-year terms. A renewal request should be filed within six months prior to the expiration date. A six-month grace period is available with a surcharge of 10% of the renewal fee for each month late.
In case a renewal is made by an IP agent, the required document is a POA. The IPVN requires an original POA (notarization is not required) or a copy of a general POA already filed. In addition, for a patent with multiple owners, only one POA of one of the owners is required for proceeding with the renewal.
Question 18. What are the requirements for recordals of change, assignment and license on a granted patent?
These recordals may be requested with the IPVN.
– For a change, under Article 97 of the IP Law, a patent owner may request the IPVN to record a change. It is required to submit a document evidencing the change like a declaration of an owner name change. Notarization is required for such a declaration.
– An assignment takes effect only if it is already recorded at the IPVN, under Article 140 of the IP Law, the assignment must contain the following main contents:
i. Full names and addresses of the assignor and of the assignee;
ii. Matter to be assigned (like a patent number);
iii. Assignment price; and
iv. Rights and obligations of the assignor and the assignee.
– If a license is not recorded at the IPVN, based on the license, one party can take action against the other party, but cannot take action against a third party – the licensee does not have the right to prevent a third party from an infringement for instance. Under Article 144 of the IP Law, the license contract must contain the following main contents:
i. Full names and addresses of the licensor and of the licensee;
ii. Matter to be licensed (like a patent number);
iii. License type (exclusive or non-exclusive);
iv. The scope of the license, including a limitation to the use right and a territorial limitation;
v. Contract term;
vi. The price of licensing the use right; and
vii. Rights and obligations of the licensor and of the licensee.
Such assignment/license must be an original without notarization or a certified/notarized copy thereof. The IPVN strictly examines such documents. For example, if the document has more than one page, in addition to the signatures at the last page, each of the other pages must also be signed at one of its corners or the document would have to contain marks showing that its pages belong to one document like a notary seal overlapping on all of the pages.
For a patent with multiple owners, a written consent of the co-owners for the recordals of the assignment or license is also required.
Question 19. What is the termination of the validity of a granted patent?
Under Article 95 of the IP Law, the validity of a design patent shall be terminated in the following cases:
i. Renewal is not proceeded: The validity of the patent will terminate on the renewal due date. Nevertheless, a six-month grace period is available.
ii. The patent owner declares the abandonment of the patent: The validity will be terminated from the filing date of the declaration.
iii. The patent owner no longer exists: A third party may request the IPVN to terminate the validity.
Question 20. What are the grounds for the invalidation of a design patent?
A patent could be invalidated at any time during its protection term. The grounds for the invalidation, under Article 96 of the IP Law, are:
i. The applicant did not have the right to file the design application; and/or
ii. The design did not meet the requirements of patentability (novelty, inventive step and industrial applicability) at the time of granting the patent.
The patent could be invalidated partially or completely. The invalidation procedure is:
– The third party files a request for invalidation to the IPVN;
– Within one month from the filing date of the request, the IPVN shall send a notice of the request to the patent owner and set a time limit of two months from the date of the notice for the patent owner to respond;
– The IPVN shall issue a decision to invalid a part or whole of the validity of the patent or a notice on refusal of the request within three months from the expiry date of said two-month time if no response is filed, or from the filing date of the response. The time limit for the IPVN to issue the decision may be extended for three additional months at maximum if the patent owner has opinions different from the third party’s opinions;
– The decision shall be recorded in the National Register of Industrial Property and published in the Gazette within two months from its issuance date.
Although the statutory timeline in the procedure is short as mentioned above; in practice, the invalidation procedure in Vietnam is much prolonged somewhat because of unspecific regulations like “time for performing other relevant proceedings necessary for solving the request is not counted for said time”.
Question 21. Is it possible to amend the drawings of a design patent?
Under Article 97 of the IP Law, a patent owner can request the IPVN to narrow the scope of protection of the granted patent, for example, to remove one or more embodiments from a patent with multiple embodiments. In such case, the application on which the patent was granted will be substantively re-examined.
Question 22. Is a post-grant opposition available?
A post-grant opposition is not permissible in Vietnam. Instead, in addition to the invalidation procedure, if a third party can prove that their rights and interests are directly affected by the decision to grant a patent, the party may file an appeal against that decision. The time limit for filing the appeal will be 90 days from the date of awareness of the decision. Nevertheless, such decisions are not published, even are not sent to the patent owners, and therefore, the action is considered to be not effective in practice.
Question 23. What are the available remedies for dealing with a design patent infringement?
Under Article 199 of the IP Law, the available remedies for dealing with a design patent infringement are civil, administrative or criminal ones, depending upon the nature and seriousness of the infringement.
However, after amendments, no criminal remedy concerning design patent infringements is available in the current Criminal Code. Therefore, there are two remedies for dealing with a design patent infringement within Vietnamese jurisdiction, administrative and civil remedies.
Question 24. Are there specialized courts for design patent infringements?
Although design patent infringements have started being widespread and popular in Vietnam, not many cases have been brought to courts so far.
Vietnam does not organize a separate and professional court system for handling design patent infringements. The court of jurisdiction over design patent infringement shall be the administrative tribunal or civil tribunal in the People’s Court of the city or province where the administrative organization or defendant involved is located, respectively.
By Nguyen Duc Thang and Dinh Thi Thuy Trang
Patent Department – INVESTIP IP LAW FIRM