Enforcement/Litigation in VIETNAM
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As you may be aware, enforcement and litigation related to intellectual property (IP) rights in Vietnam involve various processes and legal mechanisms to protect and assert IP rights, including patents, trademarks, copyrights, and industrial designs. Here’s an overview of how enforcement and litigation work in Vietnam:
- Enforcement of IP Rights
1.1 Administrative Enforcement
- Inspectorate of the Ministry of Science and Technology (IMoST): IMoST handles administrative complaints related to IP infringement. You can file a complaint with IMoST for violations such as unauthorized use or registration of trademarks or patents.
- Actions by IMoST:
- Investigation: IMoST may investigate the complaint and gather evidence.
- Administrative Sanctions: IMoST can issue warnings, fines, or orders to cease infringing activities.
1.2 Customs Measures
- Customs Authorities: You can request customs authorities to suspend the clearance of goods suspected of infringing your IP rights.
- Application: File a request with the General Department of Vietnam Customs to have suspected infringing goods seized at the border.
- Provisional Measures: Customs can take provisional measures to prevent the import or export of counterfeit goods.
1.3 Mediation and Arbitration
- Mediation: IP disputes can be resolved through mediation, which is often less formal and quicker than litigation.
- Arbitration: Vietnam’s arbitration institutions can handle IP disputes. Arbitration is a private process where an arbitrator makes a binding decision on the matter.
- Litigation Process
2.1 Civil Litigation
- Jurisdiction: IP disputes are generally handled by the civil courts. For cases involving IP rights, you may need to file a lawsuit in the civil court system.
- Filing a Lawsuit:
- Plaintiff: The IP rights holder (or their representative) files a complaint with the court.
- Defendant: The party accused of infringing the IP rights.
- Court Proceedings: The court will review evidence, hear testimony, and make a judgment based on the merits of the case.
- Remedies: Remedies in civil litigation may include:
- Injunctions: Orders to cease infringing activities.
- Damages: Compensation for losses suffered due to the infringement.
- Destruction: Orders for the destruction of infringing goods or materials.
- Public Apology: In some cases, a court may order a public apology or rectification.
2.2 Criminal Prosecution
- Criminal Offenses: Serious IP infringements, such as large-scale counterfeiting or piracy, can be prosecuted criminally under Vietnam’s Criminal Code.
- Criminal Complaint: File a criminal complaint with law enforcement authorities.
- Criminal Investigation: The police or relevant authorities will investigate the complaint.
- Criminal Charges: If sufficient evidence is found, criminal charges may be filed, and the case will be prosecuted in court.
- Penalties: Criminal penalties can include fines, imprisonment, and confiscation of infringing goods.
- Key Considerations in Enforcement and Litigation
3.1 Evidence Gathering
- Documentation: Collect and organize evidence of the infringement, such as records of unauthorized use, samples of counterfeit goods, or documentation of the original IP rights.
- Expert Testimony: In complex cases, expert testimony may be required to demonstrate the infringement or the value of the IP rights.
3.2 Legal Representation
- Local IP Attorneys: Engaging a local IP attorney or law firm can help navigate the legal system, ensure proper filing of complaints or lawsuits, and represent your interests effectively.
- Specialized Firms: Consider working with firms specializing in IP law to handle both administrative and litigation matters.
3.3 Costs and Duration
- Legal Costs: Be prepared for potential costs associated with legal action, including attorney fees, court fees, and other expenses.
- Time Frame: IP litigation can be time-consuming, with cases potentially taking several months or years to resolve.
3.4 International Considerations
- Cross-Border Disputes: For international IP disputes, consider the implications of Vietnam’s involvement in international treaties and agreements, such as the TRIPS Agreement and WIPO treaties.
- Jurisdictional Issues: Determine the appropriate jurisdiction for filing a lawsuit if the infringement involves parties or activities in multiple countries.
- Recent Developments and Trends
4.1 Strengthening IP Laws
- Legal Reforms: Vietnam has been continuously updating its IP laws and regulations to align with international standards and improve enforcement mechanisms.
- Increased Awareness: Efforts are being made to raise awareness about IP rights and enforcement among businesses and the public.
4.2 Enforcement Challenges
- Piracy and Counterfeiting: Despite improvements, challenges remain in combating piracy and counterfeiting, particularly in sectors such as software, media, and consumer goods.
Enforcement and litigation in Vietnam require a thorough understanding of the legal system and IP laws. By effectively utilizing administrative, customs, and legal mechanisms, and working with experienced local professionals, IP rights holders can protect their intellectual property and address infringements efficiently.
For further information, please do not hesitate to contact us at bud-prairie@bud-prairie.com.
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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