Industrial Design in VIETNAM
Bud & Prairie are fully expert and experienced to advise and assist you with industrial design related matters.
As you may be aware, industrial design in Vietnam is governed by specific laws and regulations that protect the aesthetic aspects of products. If you’re looking to protect an industrial design in Vietnam or are simply interested in how the system works, here’s a comprehensive overview:
- Understanding Industrial Design
- Definition: In Vietnam, an industrial design refers to the outward appearance of a product, which can include the shape, configuration, pattern, or color, or a combination of these elements. It must be new, creative, and applicable to industrial production.
- Scope of Protection: Industrial design protection in Vietnam covers the visual appearance of a product, not its functional aspects. This protection is important for businesses that want to secure their product designs against copying or unauthorized use.
- Legal Framework
- Vietnamese Intellectual Property Law: The main law governing industrial design protection is the Law on Intellectual Property (IP Law) of Vietnam, which was first enacted in 2005 and has been amended several times, most recently in 2022.
- Regulations and Guidelines: The Intellectual Property Office of Vietnam (IP Vietnam) of Vietnam issues guidelines on the examination and registration process of industrial designs.
- Requirements for Industrial Design Protection
- Novelty: The design must be new, meaning it has not been publicly disclosed anywhere in the world before the filing date of the application.
- Creativity: The design must not be obvious to a person with average knowledge in the relevant field.
- Industrial Applicability: The design must be capable of being used in industrial production, meaning it can be reproduced in quantity.
- Application Process
- Preparation of the Application: The application must include:
- Description: A detailed description of the industrial design, including any drawings or photographs.
- Claims: A clear statement of the aspects of the design for which protection is sought.
- Drawings/Photographs: High-quality representations of the design from different perspectives.
- Power of Attorney: If an agent or attorney is handling the application, a power of attorney must be submitted.
- Filing the Application: The application is filed with IP Vietnam in either Vietnamese or with an attached translation. It can be filed by the designer, the employer (if the design was created in the course of employment), or an assignee.
- Examination Process:
- Formal Examination: IP VIETNAM first conducts a formal examination to ensure the application meets all procedural requirements.
- Substantive Examination: This involves assessing whether the design meets the criteria of novelty, creativity, and industrial applicability.
- Publication: If the application passes the examinations, the design is published in the Official Gazette. This publication allows third parties to oppose the registration if they believe it infringes on their rights.
- Duration and Renewal
- Initial Protection Period: Once granted, the industrial design is protected for 5 years from the filing date.
- Renewals: The protection can be renewed twice, each time for an additional 5 years, providing a maximum protection period of 15 years.
- Enforcement of Rights
- Infringement Actions: If someone uses your industrial design without permission, you can take legal action in Vietnam. This can involve civil litigation, administrative actions, or even criminal proceedings in severe cases.
- Customs Measures: You can also request border measures, where customs authorities will seize counterfeit goods that infringe on your industrial design rights.
- International Protection
- Hague System: Vietnam is a member of the Hague Agreement Concerning the International Registration of Industrial Designs. This allows you to seek protection for your design in multiple countries, including Vietnam, through a single application.
- Foreign Applications: If you’re applying from outside Vietnam, you can file directly through IP Vietnam or use the Hague System to extend protection to Vietnam.
- Practical Considerations
- Local Expertise: It’s advisable to work with a local IP attorney or agent familiar with Vietnam’s industrial design laws to navigate the registration process efficiently.
- Market Research: Conducting research to ensure your design is unique and hasn’t been registered before in Vietnam or elsewhere is crucial for a successful application.
- Commercialization: Protecting your design is just the first step. You’ll need to monitor the market for potential infringements and be prepared to enforce your rights to maintain the value of your design.
- Challenges and Tips
- Cultural and Legal Differences: Foreign applicants may face challenges due to differences in legal procedures and cultural practices in Vietnam. Local representation can help overcome these hurdles.
- Timely Renewals: Ensure you keep track of renewal deadlines to maintain your design’s protection.
- Proactive Monitoring: Regularly monitor the market for infringements and take timely action to protect your rights.
Protecting an industrial design in Vietnam is a strategic move for businesses looking to safeguard their unique product designs in a growing market. By understanding the legal framework and following the proper procedures, you can secure valuable IP rights that contribute to your business’s success in Vietnam and beyond.
For further information, please do not hesitate to contact us at [email protected].
1. Patentability Search
Patentability search is also known as a novelty search, which helps identify whether or not an idea is novel and involves an inventive step (nonobvious). The most complete searches include all types of prior art to give an inventor or organization a comprehensive look at the technology landscape. A patentability search should be completed during the ideation phase, as well as prior to disclosure.
A patentability search is conducted by examining published patents that relate to your own invention to figure out whether your idea has already been patented. You can also see similar inventions, allowing you to improve and refine your own invention without infringing on someone else’s patent. And you can do all this before you have spent many hours and thousands of dollars on an idea that you can’t patent.
2. Freedom to Operate Search
A freedom to operate search (often abbreviated as FTO) determines how similar your product is to existing patents, and therefore how likely you are to infringe on a patent by making and marketing your invention. You may also see this type of search called a patent infringement search or right-to-use search.
Completing an FTO search early in the innovation cycle helps R&D teams design around existing patents. Later on, the results of the search can identify whether you may need to license other patents to bring your product to market.
3. State of the Art Search
Completing a state of the art search (also known as a product clearance or patent landscape search) allows you to examine the literature related to a specific industry, rather than around a certain technology, which may be applicable across industries. Using a state of the art search helps businesses find competitors and existing products within their field. These insights allow researchers, engineers, and leaders to make strategic decisions at any point within the innovation cycle.
4. Invalidity Search
To assess the strength of a specific patent, companies will use an invalidity search. This is also called a validity search. The results of this search determine whether or not the patent holder can claim infringement. They can also be used to decide licensing fees or value. If an invalidity search finds evidence in the form of existing, yet undiscovered, prior art, the patent should not have been granted and is unenforceable. This type of patent search is completed after a patent is granted.
5. Evidence of Use Search
Some organizations actively seek out products that infringe on their patent rights. This type of search is called an evidence of use search. To find these products, an organization or inventor will review similar patents and look for evidence the patent is utilized in a way that infringes on the searcher’s rights. Evidence of use searches happen after a patent is granted and as it matures.
6. Search Database
There are several databases in which patent searching may be done. Many databases such as USPTO, Google Patents, Free Patents Online, esp@cenet etc. are freely available, while other databases such as ThomsonInnovation, Orbit, Patbase etc. are available on the basis of a subscription. Each of these databases varies in terms of at least one of the following: Data Coverage, Search Engine, Interface.
• Google Patent Search Database. The Google search engine has revolutionized how people use the Internet. …;
• Patentscope. Patentscope is a free database put out by the World Intellectual Property Organization (WIPO)…;
• The USPTO Database…;
• Espace European Database…
The following are some of the largest and most popular patent office databases.
• Canadian Patents Database (CIPO)…;
• DEPATISnet (DPMA)…;
• Espacenet (EPO)…;
• JP-PlatPat (JPO)…;
• PatentScope (WIPO)…;
• U.S. Patent Assignment Database (USPTO)…;
• U.S. Patent Center (USPTO)…;
• U.S. Patent Databases (USPTO).
However, an inventor or applicant can also conduct their own patent search. The inventor or applicant has the advantage of often being more familiar with the art to which the invention relates, including having an understanding of the common knowledge held by persons skilled in the art and the relevant terminology.
Patent drafting is a part of how to patent an idea and is the process of writing the patent description and claims. It is at the core of every patent application. When the patent is issued or allowed, the draft serves as the specification part of the document. The patent applicants have to be more aware that depending on how well the complete specification is drafted and how precisely and correctly the claims describe the invention or the imaginary ‘boundary” is set, the easier it will be to defend it against third parties.
Normally, a patent specification covers the following parts:
• Field of Invention: It generally discloses a field to which the invention generally relates.
• Background: It discloses existing devices or methods related to the field of invention, broadly known as prior art. Background generally discloses prior art and limitations or disadvantages associated with the prior art.
• Summary of Invention: It (i) discloses the objectives of the invention, (ii) generally lists distinguishing features and advantages of the invention for which protection is being sought, (iii) summarizes the main features of the invention to be claimed, and (iv) also includes a broader explanation of the invention and briefly mentions the solution provided by the invention.
• Brief Description of Drawings (if any): If the invention includes any drawings, then this section includes a description of the drawing briefly such that a reader can get an overview of what could be disclosed by the drawing. The drawings are to be prepared in separate sheets as per different guidelines of different jurisdictions. The drawing sheets are filed with the patent specification.
• Detailed Description of Invention: It explains the different features of the invention in detail. Detailed description should be written such that a skilled person in the art can understand the invention solely after referring to this description. All claimed features and their interconnections, if any, need to be explained. In other words, all the claimed features need to be well supported in the detailed description.
• Claim(s): Claims are the most important part of a patent draft. Claims decide the scope of the protection which would be awarded to the inventor when the patent is granted. Claims are broadly divided into two categories, independent claim, and dependent claim. Every patent draft or patent application must contain at least one independent claim. Claims tend to change in course of the examination (narrower in most cases than the originally filed claims.
• Abstract: It is a technical summary of the invention. Generally, the Abstract should disclose the invention sufficiently to enable a person to perform a search for anticipation. The publication of a patent application includes publication of the abstract and representative drawing, if any.
• Drawings: Not all specifications have drawings. Such drawings, if any, would be prepared and submitted to the Patent Office in separate sheets. Different jurisdictions have different rules for allowable drawing sheets.
The significance of patent drafting and its impact on the patent protection should be conveyed to the SMEs, start-ups and inventors along with the information on importance of the patent protection in general. They should be informed that in case of any opposition or challenging the validity of their patent by a third party, a poorly drafted patent will be easily invalidated.
An opposition proceeding is an administrative process available under the patent law of many jurisdictions which allows third parties to formally challenge the validity of a pending patent application (pre-grant opposition), of a granted patent (post-grant opposition).
Once the patent application is published, an opposition may be filed within a certain time period prescribed under the applicable law. The opponent shall state the grounds for opposition and submit any evidence. If no opposition is filed during that period, the substantive examination will be carried out.
In the meantime, an applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of examiners to IP Vietnam, having once paid the fee for such appeal.
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