Hanoi, Vietnam – The Government has issued Decree No. 65/2023/ND-CP guiding the Intellectual Property Law of Vietnam (the “IP Law”) in respect of industrial property, protection of industrial property rights, rights to plant varieties and management state on intellectual property, which has taken effect from 23 August 2023.
General contents of Decree No. 65/2023/ND-CP
- Decree No. 65/2023/ND-CP provides details and measures to implement the provisions of the IP Law on:
- The establishment, subject, content, limits of industrial property rights, transfer of industrial property rights, industrial property agents and measures to promote industrial property activities.
- Determination of acts of infringement, nature and extent of infringement of industrial property rights, rights to plant varieties, determination of damage, requests and resolution of requests for handling infringement, handling infringement upon industrial property rights, rights to plant varieties, control of exported and imported goods related to industrial property, rights to plant varieties, industrial property appraisal, rights to plant varieties and state management of intellectual property.
- The application subjects of Decree No. 65/2023/ND-CP include:
- Vietnamese organizations and individuals, foreign organizations and individuals that meet the conditions for enjoying industrial property rights protection in Vietnam according to international treaties to which Vietnam is a member;
- Organizations and individuals that have industrial property rights or rights to protected plant varieties or commit acts of infringing upon industrial property rights or rights to plant varieties according to the provisions of the IP Law;
- Other relevant organizations and individuals.
- The Ministry of Science and Technology has the following responsibilities in state management of industrial property:
- Developing and organizing the implementation of strategies and policies to protect industrial property rights;
- Promulgating, submitting to competent authorities for promulgating, and organizing the implementation of legal documents on industrial property;
- Organizing the system of agencies performing state management functions on industrial property;
- Providing professional guidance, organizing training and professional development on industrial property;
- Organizing the establishment of industrial property rights, registration of industrial property transfer contracts and carrying out other procedures related to industrial property rights protection certificates;
- Exercising the right to compel the transfer of patent use rights according to the provisions of Article 147 of the IP Law;
- Presiding or coordinating in implementing measures to protect the legitimate rights and interests of organizations, individuals, the State and society regarding industrial property.
- Managing industrial property appraisal activities, issuing industrial property assessor licences;
- Checking and inspecting compliance with industrial property laws, resolving complaints, denunciations and handling violations of industrial property laws;
- Organizing information and statistical activities on industrial property, managing and organizing activities related to the national database on industrial property;
- Organizing education, propaganda, and dissemination of knowledge, policies, and laws on industrial property;
- Managing industrial property representation activities, issuing certificates to practice industrial property agent services.
- Implementing international cooperation on industrial property, proposing to handle disputes between Vietnam and other countries on industrial property;
- Performing other tasks assigned by the Government.
Notable Contents of Decree No. 65/2023/ND-CP
- New application forms, protection title forms and guidelines for preparing application forms are specified in Appendix I, II, IV of the Decree (replacing the respective application forms, protection title forms and corresponding guidelines under Circular No. 01/2007/TT-BKHCN);
- Procedures and scope of security control for inventions are specified in Article 14 and Appendix VII of the Decree;
- Procedures for amending and supplementing applications for registration of industrial property rights:
- The applicant has the right to request to amend some additional information in the application: the applicant’s country code, the inventor’s address, layout design, industrial design, amending the industrial property agent (Article 16.1.b of the Decree);
- In case the applicant proactively amends the application before the application is accepted in terms of its formality, or is refused, or the application is amended or supplemented on the basis of a notice from the Intellectual Property Office of Vietnam (IP Vietnam), only a document stating the content of the request for amendment and supplementation, instead of an amendment application (Article 16.2.b of the Decree), is required;
- The applicant is not required to submit a detailed explanation of the amended content in case of amending the trademark representation, list of goods and services bearing the mark, or a description of the specific characteristics of the product bearing the geographical indication, map of the geographical corresponding to the geographical indication (Article 16.2.d of the Decree);
- The applicant must submit supporting documents in case the name of the applicant, nationality of the inventor, name, and address of the organization (similar to the case of amending a protection title). The applicant must submit a declaration of change of agent when taking procedures to change their agent (Article 16.2.e of the Decree);
- Dividing an application for registration of industrial property rights:
The applicant has the right to request for division of an industrial property registration application before a decision on formality examination or substantive examination is made (Article 17.1.a of the Decree). However, dividing an application into one or more new applications is only acceptable in the following cases:
- Dividing one or several technical solutions in a patent application, one or several industrial designs in an industrial design application, a part of the list of goods and services in a trademark application;
- When proceeding to divide an industrial property registration application, the applicant must submit a written explanation of the subject matter to be claimed and the content of changes compared to the original application (Article 17.1.c of the Decree).
- Withdrawal of application for registration of industrial property rights:
It has been added that IP Vietnam must issue a notice of intention to refuse to accept withdrawal of the application in case a request to withdraw an application does not meet the conditions for the applicant to remedy any defects (Article 17.2.b of the Decree);
- Procedures related to applications for international registration of industrial designs under the Hague Agreement that have Vietnamese origin and have Vietnamese designation are prescribed in Article 22 to Article 24 of the Decree;
- Requirements for Madrid applications of Vietnamese origin that have been granted an international registration number can be made directly with the International Bureau or through IP Vietnam and regulations on documents to be submitted if choosing to submit the applications through IP Vietnam are prescribed in Article 26.3 of the Decree;
- Supplementing regulations on the issuance of electronic protection documents or paper protection documents. For applications to establish rights filed from the effective date of this Decree, paper protection titles will only be issued in cases where the applicant makes such a request in the Declaration (Article 29.1 of the Decree);
- Amendment of a protection title:
A request to amend a trademark representation for a registered trademark is accepted if it meets the following conditions: (i) the amendment is to only remove small details that are disclaimed elements (not separately protected) and (ii) the amendment does not change the distinctiveness of the trademark (Article 29.3.a of the Decree).
- Procedures related to secret inventions are specified in Articles 48 to 52 of the Decree.
Replaced Documents and Regulations
Decree No. 65/2023/ND-CP has replaced the following documents and regulations:
- Decree No. 103/2006/ND-CP dated September 22, 2006 detailing and guiding implementation. implementing a number of articles of the Intellectual Property Law on industrial property;
- Regulations on rights protection in the field of industrial property rights, plant variety rights and state management of intellectual property in Decree No. 105/2006/ND-CP dated 22 September 2006 regulating details and guides the implementation of a number of articles of the IP Law on the protection of intellectual property rights and state management of intellectual property;
- Replacing Decree 119/2010/ND-CP dated 30 October 2010 amending and supplementing a number of articles of Decree No. 105/2006/ND-CP dated 22 September 2006 detailing and guiding implementation implement a number of articles of the IP Law on intellectual property protection and state management of intellectual property;
- Decree No. 122/2010/ND-CP dated 31 October 2010 amending and supplementing a number of articles of Decree No. 103/2006/ND-CP dated 22 September 2006 detailing and guiding a number of articles of the IP Law on industrial property;
- Article 1 of Decree 154/2018/ND-CP dated 9 November 2018 amending, supplementing and abolishing a number of regulations on investment and business conditions in the field of state management of the Ministry of Science and Technology and some regulations on specialized inspection.