Part IV – Intellectual property law and technology transfer

Vietnam’s Law on Intellectual Property (IP Law) fairly follows principles and provisions of the World Trade Organization and the World Intellectual Property Organization providing an overall legal framework during Vietnam’s globalization.

IP related rights are mainly governed by the Civil Code, which was passed by the National Assembly on 2005 (“the 2005 Civil Code”) and are detailed in the Law on Intellectual Property No. 50/2005/QH11, which was passed by the National Assembly on November 29, 2005, and was amended in 2009. The IP Law recognizes and protects three IP rights including: (i) copyright and rights associated to copyright; (ii) industrial property rights comprising of patent, industrial design, layout designs of semi-conductor, integrated circuits, trademarks, trade names, geographical indication, undisclosed information in the form of trade secrets,  and right to oppose unfair competitive practices; and (iii) rights to plant varieties.

There are three competent bodies administering registration of IP: (i) the Copyright Office of Vietnam under the Ministry of Culture, Sports and Tourism; (ii) the National Office of Intellectual Property of Vietnam (“NOIP”) under the Ministry of Science and Technology; (iii) the Department of Cultivate and Planning (previously known as the Department of Agriculture) under the Ministry of Agriculture and Rural Development. In addition, the Law on Competition No. 27/2004/QH11, which  was passed by the National Assembly on December 03, 2004 and its guiding regulations have formed the legal basis for right to oppose unfair competitive practices, which are administered by  Vietnam’s Competition Authority under the Ministry of Industry and Trade.

  1. IP Rights Establishment for typical subjects

In practice, trademarks and patents are the two protected IP subjects of most concern among others. This section only address the recognition of the industrial rights towards trademarks and patent, which are protected under a decision on the issuance of protection certificate by competent authority in accordance with the laws on intellectual property of Vietnam or under Vietnam’s recognition of international registration in accordance with an international treaty to which Vietnam is a signatory.

a. Trademark Registration

A trademark means any sign used to distinguish goods or services of different organizations or individuals. It can be word(s), images, or a combination of both presented in one or more colors. Vietnam applies the principle of “first to file,” different from a “first to use” principle.  In other words, the IP rights is protected upon registration with the priority given to the first application filed with the competent authority.

Similar to other regional countries (e.g. Laos, Indonesia, Thailand), Vietnam adopts the International Classification of Goods and Services for the Purposes of the Registration of Trademarks under the Nice Agreement and approves the application of class-mark, such as a collective mark, a certification mark, an associated mark and a well-known mark.

Under the IP Law, a certification mark means a mark which is authorized by its owner to be used by another organization/individual on the latter’s goods/services to certify the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, and the quality or other characteristic of goods or services bearing such mark.

A mark is considered as a well-known mark (a mark widely known by consumers throughout the territory of Vietnam) if it satisfies a number of criteria as stipulated in the IP Law, by which the industrial property rights toward such well-known mark is established and protected without subject to the completion of registration procedures.

A company or an individual may file an application(s) for registration of a trademark with the NOIP either directly or through their lawful representative. The lawful representative may be the legal representative or an authorized representative (including an IP agent); or the Chief Representative or the head of a branch in Vietnam (if the applicant is a foreign organization).

Foreign individuals, who do not permanently reside in Vietnam, and foreign organizations which do not have any legal representative or any business or manufacture establishments in Vietnam are not allowed to, on their own, file the registration application, and to complete other related procedures, but are required to engage an IP agent to do.

The NOIP will process the applications in accordance with the following order: receipt of application; formal examination as to form of application; publication of proper industrial property registration applications, substantive examination of industrial property registration applications; issuance (or refusal to issue) of a protection title; registration and publication of the decision granting the protection title.

The total time limit for registration of a mark is 9 months upon receipt of the application, of which the formal examination of applications shall be carried out within 1 month, the publication of proper applications shall be carried out within 2 months, and substantive examination of applications shall be within 6 months. However, such timeline may be extended due to over-workload and insufficient personnel of the NOIP.

A certificate of registration of a trademark will be valid within 10 years as of the filing date and may be renewable for unlimited consecutive terms, each of 10 years.

b. Patent Registration

A patent means a technical solution in the form of a product or process, which is intended to solve a problem by application of natural rules.

A patent may be protected in the form of issuance of an invention patent or a utility solution patent. An invention patent shall be issued, regardless of the completion of the procedures as otherwise required, if the invention satisfies the following conditions: (a) it is novel; (b) it is of an inventive nature; and (c) it is susceptible of industrial application.  A utility solution patent shall be issued, regardless of the completion of the procedures as otherwise required, if the utility solution is not common knowledge and satisfies the following conditions: (a) it is novel; and (b) it is susceptible of industrial application.

Similar to a trademark registration, organizations and individuals may file applications for registration of trademarks with the NOIP either directly or through their lawful representatives in Vietnam. The NOIP will process the applications in accordance with the following order: receipt of application; formal examination as to form of application; publication of industrial property registration applications, substantive examination of industrial property registration applications; issuance or refusal to issue of a protection title; registration and publication of the decision granting the protection title.

The time limit for formal examination of applications to be carried out is within 1 month from the filling date. The deadline for publication of proper applications is 19 months as of the filing date, the priority date for application entitled to a priority, or an earlier time as the applicant requires. The timeline for substantive examination of applications shall be 12 months as of the publication date if a request for substantive examination is filed before the publication date, or upon receipt of the request if such request is filed after the publication date .

An invention patent is valid as soon as it is issued and for a period of 20 years as of the filing date. A utility solution patent shall also be valid upon issuance and for a period of 10 years as of the filing date.

  1. IP Rights Licensing and Technology Transfer

a. IP Rights Licensing

The licensing of an IP object means a grant of the right to use the industrial property object within the protected scope by the owner to another organization or individual .

There are a number of restrictions on licensing of industrial property objects: (i) the right to use geographical indications or trade names shall not be licensable; (ii) the right to use collective marks must not be licensed to organizations or individuals other than members of the owners of such collective marks; (iii) the licensee must not enter into a sub-license contract with a third party unless it is so permitted by the licensor; (iv) trademark licensees shall be obliged to indicate on goods and goods packages that such goods have been manufactured under trademark license contracts; (v) invention licensees under exclusive contracts shall be obliged to use such inventions in the same manner as the invention owners.

The licensing of IP objects must be made by a written contract.

For IP rights established by registration as stipulated in the IP Law (including inventions, industrial designs, layout designs of semi conductor integrated circuits, marks, geographical indications), an industrial property object license contract shall be valid as agreed upon by the parties but shall be legally effective against a third party upon registration with the State administrative body for IP rights (ie. NOIP).

b. Technology Transfer

A technology transfer means a transfer of the ownership or the right to use (by licensing or sub-licensing) either the whole or a part of a technology by the party possessing the right to transfer such technology to a transferee.

A technology transfer may be performed in accordance with the provisions of the 2005 Civil Code; the Law on Technology Transfer No. 80/2006/QH11, which was passed by the National Assembly on November 29, 2006; the Commercial Law No. 36/2005/QH11, which was passed by the National Assembly on June 14, 2005; and other relevant laws. However, if the underlined technology is the IP object subject to the protection under the IP Law, the transfer of such technology must be carried out simultaneously with the transfer of IP in accordance with the IP Law.

A technology transfer may be performed on the basis of a written contract or some other written form with an equivalent validity. The language in the contract may be agreed by the parties, yet if a transaction occurs in Vietnam, the Vietnamese version is required.

A contract shall be of full force and effect once the last party executes the contract. However, those technology transfer contracts which are categorized in the List of Technologies Subject to Transfer Restrictions shall only take effect once the competent body has authorized the technology transfer.

The parties to a technology transfer contract may register such contract with the competent administrative body for science and technology in order to enjoy the incentives offered by applicable laws. For the technology which is categorized in the List of Technologies Subject to Transfer Restrictions, the transferor or transferee of such technology must file an application for approval and permit on the transfer of such technology as required by the laws.

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