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THE
GOVERNMENT
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SOCIALIST
REPUBLIC OF VIET NAM
Independence - Freedom - Happiness
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No.
63-CP
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Hanoi
, October 10, 1996
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DECREE
DETAILING THE REGULATIONS ON INDUSTRIAL PROPERTY
THE GOVERNMENT
Pursuant to the Law on Organization of the
Government of September 30, 1992;
Pursuant to the Civil Code of October 28, 1995;
Pursuant to the Resolution of the 8th Session of the IXth National
Assembly on October 28, 1995;
At the proposal of the Minister of Science, Technology and Environment,
DECREES:
Chapter I
GENERAL PROVISIONS
Article 1.- Purposes and
Scope of Regulation:
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The provisions of this Decree shall apply only
to inventions, utility solutions, industrial designs, trade marks, appellations
of origin of goods, and shall not apply to other industrial property objects.
Article 2.- Terms and concepts:
The terms and concepts used in this Decree shall
be construed as follows:
1. The "Civil Code" referred to herein
is the Civil Code of the Socialist Republic of Vietnam which was adopted by the
National Assembly on October 28, 1995;
2. The "Paris Convention" is the
Convention for Protection of Industrial Property, signed in Paris in 1883 and
amended in Stockholm in 1967;
3. The "PCT Treaty" is the Patent
Cooperation Treaty (PCT), signed in Washington in 1970 and amended in 1984;
4. The "Madrid Agreement" is the
Agreement on the International Registration of Trade Marks, signed in Madrid in
1891 and amended in 1979;
5. The "Applicant" is the person who
files the application for the Title of Protection in respect of an invention,
utility solution, industrial design, trade mark, appellation of origin of
goods;
6. The "Title of protection" is the
Title of protection of an invention, utility solution, industrial design, trade
mark, appellation of origin of goods;
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8. The "Collective Mark" is a trade
mark jointly used by a collective of individuals, legal persons or other
entities, in which each member uses that trade mark independently in accordance
with the rules laid down by that collective;
9. "Author of an invention, utility
solution, industrial design" is a person or the persons who directly
invents or devise the utility solution and industrial design through his/her/their
own creative labor.
Those persons who render the author technical,
material and financial assistance or support without involving in the creation
of the invention, utility solution or industrial design through their own
creative labor shall not be considered the author of such invention, utility
solution and industrial design.
Article 3.- Method for
calculation of time limits:
The time limits provided for in this Decree
shall be determined in accordance with Articles 158, 159, 160, 161 and 162 of
the Civil Code.
Chapter II
INDUSTRIAL PROPERTY
OBJECTS TO BE PROTECTED BY THE STATE
Article 4.- Inventions
and Utility Solutions:
1. A technical solution shall be considered new
in comparison to the current technical level of the world under Articles 782
and 783 of the Civil Code if it meets the following criteria:
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b) Prior to the priority date of the application
for the title of protection of invention or utility solution, the technical
solution described in such application has not yet been made public in the
country and/or abroad in any form of use or description in any sources of
information mentioned hereunder to such an extent that based on which a person
with the average professional level in the corresponding technical area can
apply such solution:
- Sources of information concerning inventions, utility
solutions in foreign countries, as from the date of publication;
- Other sources of information, in any
information carriers (printed-matters, films and photos, magnetic tapes,
magnetic discs, laser discs, etc.), as from the date on which such information
carriers are circulated;
- Information sources from the mass media (radio
broadcasting, public address system, television broadcasting), as from the date
of publication of the news.
- Scientific reports, lectures... recorded by
any means, as from the date of delivery of such reports or lectures;
- Exhibitions, as from the date on which the
product is displayed.
The information shall be considered undisclosed
if only a certain number of related persons have known such information.
A solution shall not be considered having lost
its novelty if such solution is published by another person without the
applicant’s consent and if the date of publication falls within the period of 6
months prior to the date of filing the application for the title of protection
of invention, utility solution.
2. A technical solution shall be recognized as
having a creative character as stipulated in Article 782 of the Civil Code if
it is the outcome of a creative activity and, based on the technical level at
home and abroad up to the priority date of the application for the title of
protection of invention, such solution could not be obviously deducible to any
person with the average professional level in the corresponding technical area.
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4. The following subject matters shall not be
protected by the State as inventions, utility solutions:
- Scientific ideas, principles and inventions;
- Methods and systems for economic organization
and management;
- Educational, teaching and training methods and
systems;
- Animal training methods;
- Language systems, information systems, systems
for document classification and arrangement;
- Designs and planning maps of constructions,
planning and zoning projects;
- Solutions concerning only the outer appearance
of articles, intended only to create an aesthetic impression without technical
properties;
- Conventional signs, time-schedules, rules and
regulations, symbols;
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- Plant varieties, animal breeds;
- Processes for prevention, diagnosis and
treatment of diseases.
Article 5.- Industrial
Designs:
1. An industrial design shall be recognized as
having world-wide novelty as defined in Article 784 of the Civil Code if such
industrial design satisfies the following criteria:
a) Substantially distinguished from other
industrial designs described in the applications for titles of protection of
industrial designs already filed with the competent authority at an earlier
priority date;
b) Substantially distinguished from any similar
industrial designs which have been published in any following sources of
information:
- Sources of information concerning the
protection of industrial designs in foreign countries, as from the date of
publication;
- Other sources of information listed in Point
b, Item 1, Article 4 of this Decree with details being amended in conformity
with the industrial design.
c) Prior to the priority date of the application
for the title of protection, the industrial design described in the application
has not yet been disclosed in the country and abroad to such an extent that
based on which any person with the average professional level in the
corresponding area could make such industrial design; the form of disclosure
may be its use or its description; the sources of information from which the
industrial design is disclosed as mentioned in Item b above.
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2. An industrial design shall be used as a
pattern for manufacturing industrial or handicrafts products as stipulated in Article
784 of the Civil Code if it can be used to mass produce by industrial or
handicraft methods products with the outer appearance of the industrial design.
3. The following subject matters shall not be
protected by the State as industrial designs:
- The external feature of the product can be
made easily by a person with the average professional level in the
corresponding area;
- The external feature is required by the
technical properties of the product, or it merely bears technical properties;
- The external feature of a civil or industrial
construction;
- The feature of products which is invisible in
the process of utilization;
- Designs of products having only aesthetic
value.
Article 6.- Trade marks:
1. A symbol used as a trade mark shall be
recognized as distinctive under Article 785 of the Civil Code if such symbol
fully satisfies the following criteria:
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b) Not identical with or confusingly similar to
a trade mark of another person being protected in Vietnam (including trade
marks being protected under international treaties to which Vietnam has
acceded);
c) Not identical with or confusingly similar to
a trade mark indicated in the application for the title of protection of
trademark, which has been filed with the competent authority at an earlier
priority date (including trade mark applications filed in accordance with
international Treaties to which Vietnam has acceded);
d) Not identical with or confusingly similar to
a trade mark of another person, of which the protection validity has expired or
been suspended but the length of time counted from the date of expiration or
suspension of the protection validity is less than 5 years, except in cases
where the protection validity is suspended because such a trade mark has not
been used in accordance with provisions in Point c, Item 1, Article 28 of this
Decree;
e) Not identical with or confusingly similar to
a trade mark of another person which is considered well-known (in accordance
with Article 6 of the Paris Convention), or to a trade mark of another person,
which has been widely used and recognized;
f) Not identical with or confusingly similar to
a protected trade name or appellation of origin of goods;
g) Not identical with an industrial design which
has been protected or of which the application for the title of protection has
been filed at an earlier priority date;
h) Not identical with a symbol ar character
under the copyright of another person unless so permitted by such person.
2. The following symbols shall not be protected
by the State as a trade mark:
a) Symbols which do not possess distinctive
characteristics, such as simple shapes and geometric shapes, figures, capital
letters, letters that cannot be pronounced as a word; foreign letters that
belong to foreign languages not widely used, unless those symbols have been
widely used and recognized;
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c) Symbols expressing time, place, manufacturing
process, type, quantity, quality, nature, composition, utility, value which is
descriptive of goods, services and origin of goods and services;
d) Signs likely to cause misleading or confusion
or to deceive consumers as to the origin of goods, nature and functions,
utility, quality, value of goods or services;
e) Signs identical with or similar to official
initials indicating control, quality, warranty, etc. of Vietnam, foreign
countries as well as international organizations;
f) Signs or names (including pictures, names,
nick names, pseudonyms), devices, symbols identical with or confusingly similar
to the national flags, national emblems, portraits of national leaders or
heroes, public figures, geographical denominations, organizations of Vietnam as
well as foreign countries, if the use of such signs are not permitted by the
relevant competent agency or person.
Article 7.- Appellations
of Origin of Goods:
1. An appellation of origin of goods to be
protected must be the geographical name of a country or a locality where the
corresponding goods are produced and such goods must bear the peculiar
characters and quality that are determined by geographical factors (nature,
human) of such country or locality.
If the above-said country or locality is not
Vietnam or does not belong to Vietnam, the corresponding appellation of origin
of goods shall be considered for protection in Vietnam only if such appellation
of origin of goods is currently protected in the country or locality bearing
such appellation of origin of goods.
2. The following subject matters shall not be
protected by the State as an appellation of origin of goods:
a) Appellation indications which are not
geographical names (including signs used as a symbol of a country, locality
where the goods are generated from, but which are not the geographical name of
that country or locality);
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Chapter III
ESTABLISHMENT OF
INDUSTRIAL PROPERTY RIGHTS
Article 8.- Bases to
establish industrial property rights and rights of authors of inventions,
utility solutions and industrial designs:
1. Industrial property rights over inventions,
utility solutions, industrial designs, trade marks, appellations of origin of
goods under Article 780 of the Civil Code, rights of authors of inventions,
utility solutions, industrial designs under Article 800 of the Civil Code shall
be only established on the basis of the title of protection granted by the
competent agency in accordance with the procedures prescribed in this Chapter.
2. Industrial property rights over trade marks
under Article 780 of the Civil Code can also be established on the basis of
acceptance for protection by the competent State agency of trade marks which
are internationally registered in accordance with the Madrid Agreement.
Article 9.- Title of
Protection:
1. Title of Protection granted by the competent
State agency is the sole certificate of the State to certify the industrial
property rights of the person who is granted the title of protection, the
rights of authors of inventions, utility solutions, industrial designs and to
certify the scope of protection to the industrial property rights.
A title of Protection is valid in the whole
territory of the Socialist Republic of Vietnam.
The National Office of Industrial Property under
the Ministry of Science, Technology and Environment is the above-said competent
State agency.
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a) The Title of Protection of an invention is
the Patent for the invention, which is effective from the granting date until
the end of the 20 year duration as from the legitimate filing date;
b) The Title of Protection of an utility
solution is the Patent for the utility solution which is effective from the
granting date until the end of the 10 year duration as from the legitimate
filing date;
c) The Title of Protection of an industrial
design is the Patent for the industrial design which is effective from the
granting date until the end of the 5 year duration as from the legitimate
filing date and which can be extended for two consecutive terms, 5 years each;
d) The Title of Protection of a trade mark is
the Certificate of Trademark Registration which is effective from the granting
date until the end of the 10-year duration as from the legitimate filing date,
and which can be extended for many consecutive terms, 10 years each;
e) The Title of Protection of an appellation of
origin of goods is the certificate of right to use the appellation of origin of
goods, which is effective from the granting date until the end of the 10 year
duration as from the legitimate filing date, and which can be extended for many
consecutive terms, 10 years each;
Article 10.- Term of
protection; temporary rights of owner of invention, utility solution,
industrial design:
1. Industrial property rights and rights of
authors of inventions, utility solutions and/or industrial designs, established
on the basis of the Title of Protection, shall be protected by the State from
the date of granting such Title of Protection until the date of expiration or
termination of validity of the Title of Protection.
Industrial property rights over trade marks,
established on the basis of the international registration, shall be protected
by the State from the date on which such international registration is
published in the Industrial Property Gazette until the date of expiration of
validity of such international registration in accordance with the Madrid
Agreement.
2. From the date of publication of the
application for the Title of Protection of invention, utility solution,
industrial design in the Industrial Property Gazette to the date of granting
the Title of Protection, if a person has commenced to use an invention, utility
solution, industrial design identical with the invention, utility solution,
industrial design described in the application, then the applicant shall be
entitled to notify such user of the application. If, after the Title of
Protection is granted, the person who used the invention, utility solution,
industrial design continues the use in spite of the above notification, the
owner of the Title of Protection shall be entitled to request such user to pay
a compensation equivalent to the payment for assignment of the right to use the
industrial property object in question (licensing) to another person in a
corresponding period of time.
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1. Application for the Title of Protection is a
set of documents indicating the applicant�s
request for the Title of Protection of an invention, utility solution,
industrial design, trade mark, appellation of origin of goods with the relevant
contents and scope of protection.
2. Application for the Title of Protection must
ensure unity, i.e. each application shall be used for the Title of Protection
of only one object or several objects of the same kind which are unified in
respect of purpose of use.
The unity of the objects shall be understood as
follows:
Inventions or utility solutions are unified if
they are closely related to each other for the purpose of materializing unified
creative idea.
Industrial designs are unified if they are the
designs of different products of a set of products to be used in combination,
or are varieties of the same design;
In an application for the Title of Protection of
a trade mark, it is possible to include many different products and services to
be covered by the same trade mark.
3. Application for the Title of Protection must
satisfy all requirements with respect to form and contents in accordance with
the regulations of the Minister of Science, Technology and Environment.
Article 12.- Languages:
The application for the Title of Protection and all
transaction papers between the applicant and the National Office of Industrial
Property must be made in the Vietnamese language. Documents in other languages
shall be used only for the purpose of comparison, consultation or checking.
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Within 3 months from the date of notifying the
rejection of granting Patent for invention, and at the applicant’s request, the
application for the Title of Protection of invention can be converted into the
application for the Title of Protection of utility solution. All data relating
to the filing date and priority date of the application shall remain unchanged.
If the application the Title of Protection of invention is converted, the fees
already paid for filing the application and examination shall not be refunded
and the applicant shall have to pay the conversion fee of the application.
Article 14.- Right to
file application for the Title of Protection:
The right to file application for the Title of
Protection stipulated in Article 789 of the Civil Code are specified as
follows:
1. The right to file application for the Title
of Protection of invention, utility solution, industrial design
a) For an invention, utility solution or
industrial design not described in Points b and c of this Item, the right to
file application for the Title of Protection shall belong to the author(s) or
heir(s) of the author(s);
b) For an invention, utility solution or
industrial design, which is created while the author is performing a task
assigned by the organization of which the author is a member, or is created by
the author mainly through using the fund and material facilities of the
organization, the right to file the application for the Title of Protection
shall belong to the organization which has assigned the task and provided the
fund and material facilities to the author;
c) For an invention, utility solution or
industrial design which is created while the author is performing a labor
contract signed with another individual or organization, the right to file the
application for the Title of Protection shall belong to the individual or
organization that signed the contract with the author, unless otherwise agreed
upon in the contract.
d) The person who has the right to file
application for the Title of Protection of invention, utility solution or
industrial design as stipulated in Points a, b and c of this Clause may assign
the right to file the application, including those applications already filed,
to another individual, legal person or other entities through a written
document for assignment of the right to file the application.
2. The right to file an application for the
title of protection of trade marks:
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b) Individuals, legal persons, other entities
legally conducting service activities shall be entitled to file application for
the Title of Protection of service marks to be used for the services they are
conducting or will conduct;
c) Individuals, legal persons or other entities
legally conducting trading services shall be entitled to file application for
the Title of Protection of trademarks to be used for the products which are
marketed by them but manufactured by others, provided that the manufacturer
does not use such trademarks for the relevant products and does not oppose such
filing;
d) For a collective mark, the right to file
application for the Title of Protection shall belong to the individual or legal
person who represents a collective of individuals, legal persons or other
entities committed to abiding by the regulation on the use of the trademark in
question;
e) The right to file application, including
applications already filed for the Title of Protection of trade marks, may be
assigned as in the case of inventions, utility solutions and industrial
designs;
3. The right to file application for the Title
of Protection of appellation of origin of goods:
a) Individuals, legal persons or other entities
who are producing or trading products of peculiar characteristics and quality
in a country or locality bearing a geographical name satisfying requirements
set out in Article 7 of this Decree, shall have the right to file application
for the certificate of right to use an appellation of origin of goods for their
products.
b) Foreign individuals or legal persons who are
owners of the title of protection of an appellation of origin of goods granted
by a foreign country shall have the right to file application for the
certificate of right to use such appellation of origin of goods for their
products on the Vietnamese market;
c) The right to file application for the Title
of Protection of the right to use appellation of origin of goods shall not be
assigned.
Article 15.- Exercising
the right to file application for the Title of Protection:
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2. Vietnamese individuals, legal persons and/or
other entities can file directly or authorize an Industrial Property Service
Organization to file the application for the Title of Protection and other
related procedures.
3. Individuals and/or legal persons of the
countries which are members of the Paris Convention or which signed with
Vietnam Agreements on reciprocal protection or which together with Vietnam
accept the principle of reciprocity in the protection of industrial property,
shall exercise the right to file applications for the Title of Protection and
shall carry out the relevant procedures as follows:
a) Foreign individuals permanently residing in
Vietnam, foreign legal persons having lawful representatives or real and
effective production, business establishments in Vietnam, can file directly or
authorize an Industrial Property Service Organization to file applications for
the Title of Protection and carry out the related procedures;
b) Foreign individuals not permanently residing
in Vietnam, foreign legal persons not having lawful representatives or real and
effective production, business establishments in Vietnam, can only file
applications for the Title of Protection and carry out the related procedures
through an Industrial Property Service Organization by way of authorization.
4. The applicant must ensure the truth of
information on the right to file the application for the title of protection,
on his/her own person and the author(s) declared in the application. If the
title of protection is revoked due to the incorrectness of such information,
the owner of the title of protection shall be responsible for the consequences
resulting from the exercise of the right.
Article 16.- The
principle of the first to apply:
1. If two persons or more file applications for the
Title of Protection of the same invention, utility solution, industrial design
of trade mark for goods or services of the same kind and if the application is
accepted, the title of protection shall be granted to the person who has filed
the application earliest among such applicants.
2. If two persons or more file applications for
the title of protection of the same invention, utility solution or industrial
design, and if the applications of those persons have the same priority
conditions, the National Office of Industrial Property shall propose those
persons to jointly stand their names in only one application and if the
application is accepted, the title of protection shall be jointly granted to
them as co-owners. If one of the applicants disagrees, the title of protection
shall not be granted.
3. If, for the same technical solution, there is
one or a number of applications for the Patent for invention, and one or a
number of applications for the Patent for utility solution and if such
applications have the same priority conditions, the National Office of
Industrial Property shall propose the persons filing the applications to
unanimously select a form of protection and to unify their applications as
stipulated in Item 2 of this Article.
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5. If two or more persons file applications for
registration of the same appellation of origin of goods, when such appellation
of origin of goods is registered, all of them shall be granted certificates of
right to use the appellation of origin of goods.
Article 17.- Priority
rights:
1. A person who files an application for the
title of protection of an invention, utility solution, industrial design or
trade mark may claim priority rights by producing an application for the title
of protection of the same object which has been filed earlier in another
country or by displaying the object described in the application at an
international exhibition, officially organized or recognized to be officially
organized in Vietnam or another country, and on the following conditions:
a) Another country, where the earlier
application has been filed or where the exhibition has been organized, is a
member of the Paris Convention or has together with Vietnam signed a bilateral
agreement providing for the priority rights or has together with Vietnam
applied the principle of reciprocity with regard to priority rights;
b) The applicant is a citizen, resident or
person having a real and effective business or production establishment in a
country, and meets the conditions prescribed in Point a of this Item; and
c) The application for the title of protection
of invention, utility solution, industrial design or trade mark is filed in
Vietnam within the time limit prescribed in Item 2 of this Article.
2. The time limit for filing an application for
the title of protection to enjoy priority rights is defined as follows:
a) If the applicant claims the priority rights
under the Paris Convention, the time limit for filing an application for the title
of protection in Vietnam shall be 12 months from the date of filing the first
application for the title of protection of inventions, utility solutions; 6
months from the date of filing the first application for the title of
protection of industrial designs or trade marks; and 6 months from the date the
object is displayed at an exhibition for applications for the title of
protection of inventions, utility solutions, industrial designs, trade marks;
b) If the application for the title of
protection of invention or utility solution is filed under the PCT Treaty, the
above time limit shall be 21 months for international applications with
designation of Vietnam or 31 months for international applications with
selection of Vietnam if such selection is carried out within 19 months from the
date of filing the first application;
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3. Applications for the title of protection
eligible for the priority rights shall have the corresponding priority date
which is the filing date of the first application or the date on which the
object is first displayed at an exhibition or the date prescribed in the
bilateral agreement.
4. To enjoy priority rights, the applicant shall
have to identify the international treaty on the basis of which the priority
rights are claimed, and pay the fee for claiming priority rights, and within 3
months from the date of filing the application for the title of protection, the
applicant shall have to submit a copy of the first application, which is
certified by the office receiving the first application or the certificate of
display at an exhibition. If the applicant fails to submit such documents
within that time limit the claim for priority rights shall not be considered.
5. If the application for the title of
protection claims priority rights according to different priority dates, the
prescribed time limits as from the priority date shall be calculated from the
earliest date among the accepted priority dates.
6. The applicant may withdraw the claim for
priority rights to delay publication of the application for the title of
protection
Article 18.- Examination
of application for the title of protection:
1. Applications for the title of protection of
industrial property objects, including international applications which are
filed under the PCT Treaty and of which the National Office of Industrial
Property is the receiving office, shall be examined by the National Office of
Industrial Property in respect of formality thereof.
The formality examination of applications for
the title of protection aims to determine whether the applications satisfy the
requirements for legitimate applications; for an application to be considered
to be legitimate, the legitimate filing date, the number of legitimate
applications and the priority dates must be determined.
2. All applications for the title of protection
of inventions, utility solutions or industrial designs which have been
recognized as legitimate shall be published by the National Office of
Industrial Property in the Industrial Property Gazette.
3. The examination of the contents of the
applications for the title of protection shall be undertaken by the National
Office of Industrial Property with respect to all applications for the title of
protection of trade marks, industrial designs and appellations of origin of
goods if those applications have been recognized as being legitimate and the
applicant has paid the fee for content examination as stipulated. The same
shall also apply to international registrations of trade marks under the Madrid
Agreement.
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The examination of contents of applications for
the title of protection aims to the determine possibility of protection of the
object described in the application in accordance with the criteria for
protection and to determine the corresponding scope (volume) of protection.
4/ Procedures and time limit of the examination
of contents of the applications for the title of protection shall be defined by
the Minister of Science, Technology and Environment.
Article 19.- Withdrawal
of application for the title of protection:
1. At any time before the issuance of the
Decision to grant or not to grant the title of protection, the applicant is
entitled to declare withdrawal of his/her application for the title of
protection by sending a written notice to the National Office of Industrial
Property.
If the declaration of withdrawal of application
for the title of protection is filed by the applicant through an Industrial
Property Service Organization, the power of attorney must indicate the
authorization for such withdrawal.
2. From the time the applicant declares
withdrawal of the application for the title of protection, all further procedures
related to such application shall be suspended; all fees already paid for the
work to be done subsequently shall be refunded to the applicant.
3. Applications for the title of protection of
inventions, utility solutions or industrial designs which are withdrawn or
considered to be withdrawn before the publication of such applications, and
applications for the title of protection of trade marks which are withdrawn or
considered to be withdrawn, shall be considered not yet filed with the National
Office of Industrial Property.
Article 20.- Third
party’s rights to recommend whether or not to grant the title of protection:
During the examination of contents of
applications for the title of protection, a third party shall have the right to
recommend whether or not to grant the title of protection with regard to the
applications already published in the Industrial Property Gazette. Where a
third party objects to the granting of the title of protection, he/she must
give reasons and submit documents or extracts evidencing such reasons.
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Article 21.- Right to
seek experts’ opinions:
In order to ensure that the grant of the title
of protection meets the requirements specified by law, the National Office of
Industrial Property shall be entitled to seek opinions of specialized agencies
and experts in relevant fields during the process of examining the contents of
the applications for the title of protection. The agencies and experts
consulted the National Office of Industrial Property shall have to fulfill
their obligations in an honest and objective manner and shall be responsible
for their opinions.
The agencies and experts consulted by the
National Office of Industrial Property shall be entitled to remuneration for
giving their opinions. The amount of remuneration shall depend on the scope and
quality of the opinions given but not more than 40% of the fee for the
substantial examination of the corresponding object.
Article 22.- Request
for inquiry:
1. From the date of acceptance of a valid
application, the applicant for the title of protection of invention or utility
solution shall be entitled to request the National Office of Industrial
Property to conduct an inquiry into the technical art available before the
priority date. The person seeking the inquiry must pay a fee as stipulated.
2. Within 3 months from receiving the inquiry
request, the National Office of Industrial Property shall supply the results of
the inquiry to the requester.
Article 23.- Decision
to grant the title of protection:
1. If an invention, utility solution, industrial
design or trade mark satisfies all criteria for protection and the applicant
has already paid the prescribed fee, the National Office of Industrial Property
shall issue Decision to grant the title of protection. The Decision shall
specify the full name and address of the person to whom the title of protection
is granted, the serial number of the application for the title of protection,
filing date, the corresponding priority date, the name of the Industrial
Property Service Organization, the full name(s) of the author(s) of the invention,
utility solution, industrial design, the title of the object to be protected,
the title and serial number of the title of protection, the scope (volume) of
protection, the duration of protection or the Decision on acceptance of
protection of trade mark internationally registered under the Madrid Agreement.
2. If an appellation of origin of goods
satisfies all criteria for protection and the applicant has already paid the
prescribed fee, the National Office of Industrial Property shall issue Decision
to enter the relevant appellation of origin of goods into the National
Register. Such Decision shall specify the full name and address of the person
seeking protection of the appellation of origin of goods, the serial number of
the application, the filing date, the name of the Industrial Property Service
Organization, the title of appellation of origin of goods, the scope of the
corresponding territory; the list of products bearing the appellation of origin
of goods, a summary of the characteristics of quality of the products bearing
the appellation of origin of goods, the list (name and address) of the
individuals or organizations having the right to use the appellation of origin
of goods and the number of registration of such appellation of origin of goods.
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Article 24.- Granting
duplicate of title of protection and copies of relevant documents:
At the request of individuals, legal persons or
other entities, the National Office of Industrial Property can issue a
duplicate of the title of protection to the co-owners, copies of application
for the title of protection for the purpose of claiming priority rights in
foreign countries and copies of other documents except those documents which
are considered confidential or not yet due for publication.
At the request of the owner of the title of
protection, the National Office of Industrial Property can issue a duplicate of
the title of protection to its owner, if it deems the request justifiable.
The person who made a request for duplicates or
copies shall have to pay a fee as stipulated.
Article 25.- Notice of
refusal to grant title of protection:
For cases not described in Items 1, 2 and 3 of
Article 23 of this Decree, the National Office of Industrial Property shall
issue the notice of refusal to grant the title of protection in which the
reasons therefor must be clearly stated. This notice shall be handed over to the
applicant and the person who makes a request for substantial examination of
invention or utility solution (in case of refusal to grant the title of
protection of inventions, utility solutions).
Article 26.- Contents
of the title of protection; national register and granting of the title of
protection:
1. Contents of the title of protection shall be
determined in accordance with Decision to grant the title of protection. Apart
from the information specified in that Decision, the title of protection shall
fully describe the nature and scope (volume) of protection and supply other
necessary information related to the protected rights.
2. The title of protection shall be entered into
the National Register Book of industrial property (National Register).
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Article 27.- Appeal
against decisions in respect of acceptance of application for the title of
protection, granting or not granting the title of protection:
1. The following persons shall have the right to
file appeal:
a) The applicant shall have the right to appeal
against the rejection of his/her application for the title of protection and
the refusal to grant the title of protection;
b) The person filing a request for substantial
examination of invention or utility solution shall have the right to appeal
against the Decision to grant the title of protection, and shall not have to
pay the fee for such appeal;
c) A third person shall have the right to appeal
against the Decision to grant the title of protection and he/she shall have to pay
the fee as stipulated.
2. Procedures for appeal mentioned in Clause 1
of this Article are specified as follows:
a) The contents of the appeal must be made in
writing and indicate the name (surname) and address of the appellant; the
serial number, signing date and contents of the appealed Decision or Notice;
the serial number of the relevant application for the title of protection; the
title of the object to be protected described in the application; the contents,
arguments and evidences to support the arguments of the appeal; specific
proposals to amend or revoke the relevant decision or conclusion;
b) The appeal must be filed with the National
Office of Industrial Property within 3 months from the date of issuance of the
Decision or Notice if such appeal comes under Items a and b, Clause 1 of this
Article, or during the duration of validity of the title of protection if the
appeal comes under Item c, Clause 1 of this Article;
c) An application for appeal which is filed
after the above-said time limit shall not be considered.
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4. In case of disagreement with the response of
the National Office of Industrial Property as stipulated in Clause 3 of this
Article, the appellant shall be entitled to appeal to the Minister of Science,
Technology and Environment or initiate a lawsuit in accordance with
administrative procedures. If the appeal is made to the Minister of Science, Technology
and Environment, within 60 days after receiving the appeal, the Minister of
Science, Technology and Environment shall have to notify the appelant of the
results of the handling of the appeal.
Article 28.- Suspension
of validity of the title of protection:
1. A third person shall have the right to lodge
a request with the National Office of Industrial Property for the suspension of
the validity of a title of protection for the reasons described in Clause 2 of
this Article.
The application for the suspension of the title
of protection shall be processed in accordance with the order of consideration
of appeals as stipulated in Clauses 2, 3, 4 of Article 27 of this Decree.
If the results of the consideration confirms
that one of the cases specified in Clause 2 of this Article has occurred, the
Director of the National Office of Industrial Property shall issue a Decision
to partially or completely suspend the validity of the title of protection,
publish such Decision in the Industrial Property Gazette within 2 months from
the date of the issuance of the Decision.
2. The validity of the title of protection shall
be suspended in one of the following cases:
a) The owner of the title of protection declares
abandonment of his/her rights derived from the corresponding title; in this
case, the validity of the title of protection shall be suspended from the date
on which the declaration of abandonment is made;
b) The owner of the title of protection fails to
pay the fee for the maintenance of validity of the title of protection in due
time; in this case, the validity of the title of Protection shall be suspended
from the beginning of the first valid year when the fee for maintenance of
validity is not paid.
c) The owner of a Certificate of Trademark
Registration or the owner of a Certificate of Right to Use the appellation of
origin of goods has not used his/her trade mark or appellation of origin of
goods for 5 consecutive years before the date on which the request for
suspension of validity is made without justifiable reasons; in this case, the
validity of the Certificate of Trademark Registration, the Certificate of Right
to Use appellation of origin of goods shall be suspended from the first day
right after the 5-year period mentioned above;
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e) The geographical factors determining
particular characteristics have been changed, causing the loss of the
particularity of such characteristics; in this case, the Certificate of Right
to Use the appellation of origin of goods shall be suspended on the same date
in accordance with the decision of the National Office of Industrial Property;
f) The owner of a Certificate of Right to Use
the appellation of origin of goods is not capable of performing his/her
obligations as provided for in Clause 2 of Article 47 of this Decree.
Article 29.- Cancellation
of the validity of the title of protection:
1. A third party shall have the right to lodge a
request with the National Office of Industrial Property for cancellation of
validity of a title of protection on the ground that such title of protection
has been granted not in compliance with provisions of law as provided for in
Clause 2 of this Article.
An application for cancellation of the validity
of a Title of Protection shall be processed in accordance with the same order
as applied to appeals stipulated in Clauses 2, 3, 4 of Article 27 of this
Decree.
If the results of examination of the application
affirms that the title of protection has been granted not in compliance with
the provisions of law, the Director of the National Office of Industrial
Property shall issue a Decision to partially or completely cancel the validity
of the title of protection, publish the Decision in the Industrial Property Gazette
within 2 months from the issuance of the Decision.
2. The validity of a title of protection shall
be canceled in its entirety when there are the following grounds to confirm
that the title of protection has been granted not in compliance the provisions
of law:
a) The person who has been granted the title of
protection is not entitled to file the application for the title of protection,
nor assigned the right to file the application by the person having such right;
b) The right to file the application for the
title of protection of invention, utility solution or industrial design belongs
to individuals, legal persons or other entities, but one or a number of them
disagree with the filing of the application;
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d) The protected object does not meet the
criteria for protection.
3. The validity of a title of protection shall
be partially canceled when there are grounds to confirm that the relevant part
does not meet the criteria for protection.
4. If canceled, the validity of the canceled
part shall be considered not having been established.
Article 30.- Renewal of
validity of the title of protection of Trade Mark, Industrial Design and
Appellation of Origin of Goods:
The validity of a Patent for industrial design,
a Certificate of Trade Mark Registration, a Certificate of Right to Use the
appellation of origin of goods may be renewed at the request of the owner of
the title of protection.
Article 31.- Industrial
Property Gazette:
1. The Industrial Property Gazette issued by the
National Office of Industrial Property is a legal document publishing information
relating to the establishment, transfer, change, suspension, invalidation of
industrial property rights, as well as the contents and scope of protection of
such rights.
2. The major information published in the
Industrial Property Gazette shall include the following:
a) Applications for the title of protection of
inventions, utility solutions, industrial designs after such applications have
been accepted to be valid;
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c) Decisions on amendment, suspension,
revocation, renewal of granted titles of protection;
d) Decisions on registration of licensing
contracts and decisions on granting non-voluntary licenses;
e) Decisions on registration of contracts for
transfer of the ownership rights over industrial property objects;
f) Decisions on the granting, revocation or amendment
to the contents of operation licenses of individuals, service organizations
providing representative services in industrial property;
g) New legal documents, amendments or
supplements to legal documents on industrial property;
h) Other necessary information relating to the
protection of industrial property rights.
Article 32.- Fees:
1. Individuals, legal persons or other entities
proceeding with procedures for establishment, maintenance, suspension, renewal,
amendment or assignment of industrial property rights before the National
Office of Industrial Property, as well as procedures for appeals in relation to
industrial property before competent agencies, shall be obliged to pay charges
and fees, as specified in this Article, to the agencies that perform the
relevant tasks.
The National Office of Industrial Property and
the competent agencies mentioned above shall have the responsibility to collect
the related charges and fees in full, in due time and in accordance with the
relevant procedures, and remit them to the State budget in accordance with the
State’s regulations on charges and fees.
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2. The items (contents) and the charge and fee
on each item shall be determined by the Ministry of Finance in coordination
with the Ministry of Science, Technology and Environment on the basis of full
coverage of expenses on the related work and in conformity with the present
conditions and international practices.
The fee already paid for the relevant work
which, however, is not accomplished due to the non-occurrence of the expected
situations or the fault of the agencies that have to do such work must be
reimbursed to the payer and the reimbursement must be certified by the payer or
the receipt of reimbursement must be given.
Chapter IV
THE OWNER OF INDUSTRIAL
PROPERTY OBJECTS; THE RIGHTS AND OBLIGATIONS OF THE OWNER OF INDUSTRIAL
PROPERTY OBJECTS
Article 33.- The owner
of industrial property objects:
The owner of industrial property objects shall
be:
1. The person who is granted the title of
protection;
2. The owner of international registration of a
trade mark under the Madrid Agreement which has been accepted for protection in
Vietnam;
3. Individuals, legal persons or other entities
who have been legally assigned the ownership rights over inventions, utility
solutions, industrial designs or trade marks.
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The use of industrial property objects belonging
to their owner as stipulated in Item a, Clause 1, Article 796 and Item a,
Clause 1, Article 797 of the Civil Code is the performance of one or a number
of the following acts with regard to the protected objects for business
purposes:
1. With respect to inventions or utility
solutions:
- Manufacturing protected products;
- Applying protected processes;
- Exploiting protected products;
- Putting into circulation; advertising for
sale; offering for sale or stockpiling for sale of protected products or
products manufactured under the protected processes;
- Importing protected products or products
manufactured under the protected processes;
2. With respect to industrial designs:
- Manufacturing;
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- Importing products of which the outer appearance
is protected as an industrial design;
3. With respect to trademarks and appellations
of origin of goods:
- Affixing protected trademarks or appellations
of origin of goods on goods, packages, service facilities or transaction
documents in business activities;
- Circulating, offering for sale, advertising
for sale, stockpiling for sale of goods bearing protected trademarks or
appellations of origin of goods;
- Importing goods bearing protected trademarks
or appellations of origin of goods.
Article 35.- The right
to transfer the right to use industrial property objects:
1. Under Item b, Clause 1, Article 796 of the
Civil Code, and the provisions of this Article, the owner of industrial
property rights over an invention, utility solution, industrial design or
trademark shall be entitled to transfer part or the whole of the right to use
his/her industrial property object to an individual, legal person or another
entity.
The owner of a certificate of right to use an
appellation of origin of goods shall not be allowed to transfer the right to
use such appellation of origin of goods.
2. The transfer of the right to use industrial
property objects must be made in a written contract ("licensing
contract"). The licensing contract shall become legally effective only
after its registration with the National Office of Industrial Property as
stipulated in Article 42 of this Decree.
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1. Under Item c, Clause 1, Article 796 of the
Civil Code, the owner of industrial property objects shall be entitled to
request the competent State authority to handle, or initiate a lawsuit at the
Court against a third party which does not fall into the cases described in Articles
50, 51, 52 of this Decree and which has used his/her industrial property
object, and also entitled to request the infringer to cease the use and to pay
compensation for damage.
Prior to the request for handling or initiating
the lawsuit, the owner of an industrial property object shall have the right to
notify the infringer of the industrial property object in his/her possession,
and to request the infringer to cease the act of infringement.
2. In case of inventions, utility solutions or
industrial designs, the owner of an industrial property object shall be
entitled to institute a lawsuit at a competent Court against the person who
fails to pay compensation to the owner of industrial property rights in
accordance with Clause 2, Article 10 of this Decree.
3. The owner of an industrial property object
may himself/herself request the handling, initiate a lawsuit, or delegate
another person to do that as stipulated in Clauses 1 and 2 of this Article.
Article 37.- Assignment
of ownership, bequest, abandonment of industrial property rights:
1. The assignment, bequest or abandonment of the
ownership over industrial property objects under Clause 2, Article 796 of the
Civil Code shall be effected in accordance with the provisions of this Article.
2. The trademark ownership shall be only
bequeathed to an individual or a legal person or a sole entity. The inheritor
of trademark ownership must fully meet the same requirements as those for the
right to file an application for the title of protection of a trademark.
3. Where the ownership over an invention,
utility solution, industrial design or trademark is assigned, all rights and
obligations of the owner of the title of protection (Assignor) derived from the
title of protection shall be fully transferred to the person to whom such
rights and obligations are transferred (Assignee), and the Assignee shall
become the owner of the assigned industrial property object from the moment the
assignment contract is registered at the National Office of Industrial
Property; the rights and obligations arising out of the transactions between
the Assignor and a third party may be transferred to the Assignee if so
recorded in the assignment contract.
4. When the right to use an industrial property
object is transferred, the party (Licensee) to whom the right to use the
industrial property object is transferred shall, from the date on which the
licensing contract is registered at the National Office of Industrial Property,
be entitled to use the industrial property object within the scope, term and
conditions set forth in the registered licensing contract.
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Article 38.- Restrictions
on assignment of industrial property rights:
1. The Assignor shall be entitled to assign
his/her rights only within the scope protected by laws during the term of protection
and shall have to warrant that the assignment shall not give rise to disputes
with a third party. In case of disputes resulting from the assignment of
industrial property rights, the Assignor shall have to solve.
2. If the industrial property rights belong to
co-owners, each of them shall be allowed to assign the rights of his/her own
part to another person if so agreed by the other owners or even if one or a
number of the other owners, though disagreeing with the assignment, they refuse
to accept the rights to be assigned and the disagreement is unjustifiable.
3. Industrial property rights over appellations
of origin of goods shall not be assigned.
4. The assignment of industrial property rights
over trademarks must not cause confusion to properties or origin of goods or
services bearing the trademarks.
5. If one of the parties to the assignment of
industrial property rights is a State organization or an organization having
capital contribution from the State, the assignment contract must be approved
by the Minister of Science, Technology and Environment.
Article 39.- Contracts
for Assignment of Industrial Property Rights:
1. All forms of assignment of industrial
property rights must be made in written contracts. All oral agreements, letters
or telegrams shall not be considered contracts for assignment of industrial
property rights and shall have no legal effect.
Where the assignment of industrial property
rights is part of another contract, the contents of the assignment of
industrial property rights shall be made in a part separate from the other
parts of the contract and shall comply with the provisions of this Clause.
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Article 40.- Obligations
of the parties:
1. The Assignor shall have the following
obligations:
- To register the contract in accordance with
Article 42 of this Decree if the Assignee does not do so;
- To pay assignment tax in accordance with the
tax laws;
- To solve disputes with a third party resulting
from the assignment;
- In case of transfer of the right to use an
industrial property object (Licensing Contract), the Licenser shall take
necessary measures to combat infringements by a third party that cause losses
to the Licensee. If, after three months after being notified of the
infringement and the Licenser fails to take such measures at the request of the
Licensee, the Licensee shall have the right to request competent State
authorities to handle such infringements.
2. The Assignee shall have the following
obligations:
- To register the contract in accordance with
Article 42 of this Decree if the Assignor fails to do so;
- To pay assignment money to the Assignor with
the amount and mode agreed upon by the two Parties;
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- To put a reference on the goods and packages
to indicate that the goods are produced under the license granted by the
Assignor, and to write the name of the Assignor.
Article 41.-
1. The price for the
assignment of industrial property rights shall be agreed upon by the two
parties. Where the Assignor is a State organization or an organization having
capital contribution from the State, the assignment price shall not be lower
than the minimum price. Where the Assignee is a State organization or an
organization having capital contribution from the State, the assignment price
shall not exceed the maximum price.
The maximum and minimum prices shall be jointly
determined by the Ministry of Finance and Ministry of Science, Technology and
Environment.
2. The mode of payment of the assignment price
shall be agreed upon by the two parties.
Article 42.- Registration
of Contracts for Assignment of Industrial Property Rights:
1. All contracts for assignment of industrial
property rights, including when the transfer is part of another contract, must
be registered at the National Office of Industrial Property in accordance with
the provisions of this Decree.
2. The requirements for the file and procedures
for the registration of contracts for assignment of industrial property rights
shall be determined by the Minister of Science, Technology and Environment.
3. All changes related to the registered
assignment contracts including sub-license, must follow the same procedures as
for the assignment.
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The contract for assignment of industrial
property rights shall be automatically suspended if the industrial property
rights of the Assignor is suspended or a force majeure event occurs resulting
in non-performance of the contract.
The contract for assignment of industrial
property rights shall be automatically invalidated if the industrial property
rights of the Assignor are canceled.
Article 44.- Obligation
to pay remuneration to authors:
1. Under Clause 1, Article 798 of the Civil
Code, the owner of industrial property rights over an invention, utility
solution or industrial design shall have the obligation to pay remuneration to
the author or co-authors for creation of the invention, utility solution or
industrial design, if the author is not the owner or the co-owner and if not
otherwise agreed upon by the author and the owner.
2. The amount of remuneration and term of
payment shall comply with the following provisions, if not otherwise agreed
upon by the author and the owner of industrial property rights.
a) The minimum remuneration for the author of an
invention or utility solution is 10% of the annual profits generated by the use
of that invention or utility solution; or 15% of the total amount the owner of
industrial property rights receives each time for grant of license or as
compensation for grant of non-voluntary license;
b) The minimum remuneration for the author of an
industrial design is 2% of the annual profits generated by the use of the
industrial property; or 15% of the total amount the owner of industrial
property rights receives each time for grant of license or as compensation for
grant of non-voluntary license;
c) Payment of remuneration to the author must be
made at the latest 2 months after each year of use or not later than 1 month
from the date on which the owner of industrial property rights receives payment
for grant of license or as compensation for grant of non-voluntary license.
3. If the author and the owner reach an
agreement different from the provisions in Clauses 1 and 2 of this Article, the
payment of remuneration shall be made in accordance with such agreement.
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Under Clause 2, Article 798 of the Civil Code,
the owner of industrial property rights must pay fee for the maintenance of the
validity of the title of protection. If he/she fails to do so, the title of
protection shall be suspended in accordance with Item b, Clause 2, Article 28
of this Decree.
Article 46.- Obligation
to use industrial property objects:
1. The owner of industrial property rights over
an invention, utility solution or industrial design which have important impact
on security, defense, the protection of the people’s
health or the environment, shall have the obligation to use such invention,
utility solution or industrial design to meet the needs of the nation and/or
the society.
In the event that the owner of industrial property
rights over the said invention, utility solution or industrial design has made
his/her best endeavors but failed to meet the needs of the nation and/or of the
society, the owner of industrial property rights shall be obliged to grant
license to other entities who are able and willing to use such inventions,
utility solutions, industrial designs under reasonable conditions.
2. The owner of industrial property rights over
a trademark or appellation of origin of goods shall have the obligation to
continuously use the trademark, appellation of origin of goods and shall not
discontinue the use of the trademark or appellation of origin of goods for more
than 5 consecutive years. If he fails to perform this obligation, the title of
protection of the trademark and the title of protection of the appellation of
origin of goods shall be suspended in accordance with Item c, Clause 2, Article
28 of this Decree.
3. The assignment of the right to use industrial
property objects shall not be considered the use of the industrial property
objects for the purpose of performing the obligations provided for in this
Article.
The use of industrial property objects by the
Licensee shall be considered the use of the industrial property objects for the
purpose of performing the obligations provided for in this Article.
Article 47.- Rights and
obligations of the person who is granted the certificate of right to use the
appellation of origin of goods:
1. The person who is granted the certificate of
right to use an appellation of origin shall be entitled:
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b) To request the competent State authority to
order other persons to cease infringement acts and compensate for damage due to
illegal use of the appellation of origin of goods or signs confusingly similar
to the appellation of origin of goods, including when the genuine origin of
products is indicated or the appellation of origin of goods is translated into
other languages or is used in combination with such words as "brand",
"style", "adaptation", or similar words.
2. The person who is granted the certificate of
right to use an appellation of origin shall be obliged:
a) To ensure the quality, the particular features
of products bearing the registered appellation of origin of goods;
b) To satisfy the requirements and create
favorable conditions for the competent State authority to inspect the quality
of goods, for organizations to examine the quality, the particular features of
the products bearing the appellation of origin of goods, when necessary.
Article 48.- Authors’ rights:
1. The author or authors of an invention,
utility solution, industrial design shall be entitled:
a) To have his/her/their name(s) mentioned as
the author(s) in the title of protection, National Register of inventions,
utility solutions or industrial designs, as well as in publications of such
objects;
b) To receive remuneration from the owner of
industrial property rights in accordance with the provisions of Article 44 of
this Decree;
c) To request the handling of, to initiate a
lawsuit against infringements of his/her/their rights.
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Chapter V
RESTRICTED USE OF
INDUSTRIAL PROPERTY RIGHTS, SETTLEMENT OF INFRINGEMENTS UPON INDUSTRIAL
PROPERTY RIGHTS
Article 49.- Conditions
for exercising the Industrial Property Rights:
When exercising his/her rights, the owner of
industrial property rights, the person who is transferred the right to use an
industrial property object, must not violate provisions of law, not do any acts
prohibited by law, not cause damage to State and public interests, and not
infringe upon the legitimate rights and interests of other entities. If the
exercise of industrial property rights results in the above-said violations and
infringements, the holder of industrial property rights shall not be allowed to
exercise such rights.
Article 50.- Rights of
Prior Users of Inventions, Utility Solutions, Industrial Designs:
1. Where an individual, legal person or other
entities, before the date of publication of the application for the title of
protection of an invention, utility solution or industrial design, used the
invention, utility solution or industrial design independently of the owner of
the industrial property object, then the owner of the industrial property
object, when granted the title of protection, shall not be entitled to exercise
the right to request the handling of, or initiate a lawsuit against the
individual, legal person or other entities who used the said industrial
property object if such individual, legal person or other entities do not
extend the scope and/or volume of use beyond that existing before the date of
publication of the application, and if they cannot transfer the right to use to
others.
2. Where and individual, legal person or other
entities, after the date of publication of the application for the title of
protection as provided for in Clause 1 of this Article, extended the scope
and/or volume of use beyond that existing before the date of publication of the
application, the extension shall not be regarded as prior use.
Article 51.- Assignment
of the right to use in accordance with a decision of the competent State
authority ("non-voluntary license"):
1. Non-voluntary license shall mean that the
owner of an industrial property object or the person to whom the owner of an
industrial property object transfers the whole right to use the invention,
utility solution or industrial design is forced to allow an individual, legal
person or other entities to use his/her industrial property object in
accordance with a decision of the competent State authority as stipulated in
this Article.
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3. The Ministry of Science, Technology and
Environment shall be the State authority competent to consider requests for the
use of inventions, utility solutions and/or industrial designs, and to issue a
Decision compelling the owner of industrial property rights to grant a
non-voluntary license.
4. The application file for the grant of
non-voluntary license must meet the requirements as to the form and contents
thereof in accordance with the regulations by the Ministry of Science,
Technology and Environment.
5. Within 15 days from the date of receipt of
the application file for the grant of non-voluntary license, the Ministry of
Science, Technology and Environment shall notify the owner of industrial
property rights, or the person who is transferred the whole right to use the
invention, utility solution or industrial design, of such request and request
the addressee to reply in writing within 30 days from the date of notification.
Where necessary, the Ministry of Science,
Technology and Environment may request the involved parties to re-negotiate in
order to settle the disagreements for the purpose of signing the contract on
voluntary license.
In the event that an agreement on voluntary
license is not reached and arguments made by the holder of rights for not
granting the voluntary license are unreasonable, the Minister of Science,
Technology and Environment, within 3 months from the date of receipt of the
application file, shall decide to grant the non-voluntary license. If not, the
Ministry of Science, Technology and Environment shall issue a notice of refusal
to the applicant for the non-voluntary license.
6. The Decision on the compulsory grant of non-voluntary
license shall be published in the Industrial Property Gazette within 1 month
from the date of signing.
7. Within 1 month from the date on which the
Minister of Science, Technology and Environment issues the Decision on the
compulsory grant of non-voluntary license, the Holder of rights must grant
non-voluntary license to the applicant subject to the terms stipulated in the
Decision of the Minister of Science, Technology and Environment.
8. The person who is granted a non-voluntary
license shall have the obligation to pay remuneration to the Licensee with the
amount and term of payment specified in the Decision of the Minister of
Science, Technology and Environment and in the contents of the license.
The person who is granted a non-voluntary license
must not transfer to others the right to use the invention or utility solution
or industrial design under the non-voluntary license.
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If the acts stipulated in Article 803 of the
Civil Code and done in respect of an invention, utility solution or industrial
design do not come within the exclusive right of the owner of industrial
property rights, the owner of industrial property rights shall not be entitled
to request a settlement or initiate a lawsuit against a third party who do such
acts.
Article 53.- Infringement
upon industrial property rights, infringement upon the rights of the author of
an invention, utility solution or industrial design:
1. An act of infringing upon the industrial
property rights shall be established when a person who is not the owner of an
industrial property object carries out an act of using the industrial property
object during the protection duration as stipulated in Article 805 of the Civil
Code and specified in Article 34 of this Decree without the permission of the
owner of the industrial property object, and is not the prior user as
stipulated in Article 50 of this Decree and if such an act does not fall within
the cases described in Articles 51 and 52 of this Decree.
2. The failure by the owner of the industrial
property object to pay remuneration to the author, and to secure the spiritual
rights of the author as provided for in Items a, b Clause 1, Article 48 of this
Decree shall be considered an infringement upon the rights of the author of an
invention, utility solution or industrial design.
3. The following cases shall not be considered
infringements upon the industrial property rights:
a) The use of a trademark, appellation of origin
of goods not for business purposes;
b) Circulating and using products which bear a
trademark or appellation of origin of goods and which have been put on the
market by the owner of the trademark, the person who is assigned the right to use
the trademark, or the person who is entitled to use the appellation of origin
of goods;
c) Using products bearing a trademark or
appellation of origin of goods on transport vehicles of foreigners when such
vehicles are on transit or temporary stay on the territory of Vietnam, provided
that such use is only for the purpose of ensuring the operation of the said
vehicles.
Article 54.- Protection
of industrial property rights and author�s
rights over an invention, utility solution or industrial design:
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2. The exercise of the right to initiate a
lawsuit against infringements upon the industrial property rights and author’s rights over an invention,
utility solution or industrial design shall be effected in accordance with the
legislation on civil procedures.
Depending on their seriousness and consequences,
the infringements upon the industrial property rights and author’s rights over an invention,
utility solution or industrial design may be subject to administrative
sanctions or examined for criminal liability in accordance with the provisions
of law.
Chapter VI
INDUSTRIAL PROPERTY
REPRESENTATIVES
Article 55.- Definitions:
The definitions used in this Decree shall be
construed as follows:
"Industrial Property Service
Organization" is a business which has registered its operations in
accordance with law and which has been granted a Certificate of Industrial
Property Service Organization by the National Office of Industrial Property.
"Industrial Property Attorney" is a
professional member of the Industrial Property Service Organization, who has
been granted a Card of Industrial Property Attorney by the National Office of
Industrial Property.
"Industrial Property Representative"
refers to the Industrial Property Service Organization collectively and/or
Industrial Property Attorney.
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Article 56.- Functions
and Tasks of the Industrial Property Representative:
1. The Industrial Property Service Organization
shall have the function of conducting the following services:
- Representing other persons before the National
Office of Industrial Property and competent State authorities in carrying out
procedures for the establishment and protection of industrial property rights;
- Advising on issues related to the procedures
for the establishment and protection of industrial property rights;
- Other services concerning the procedures for
the establishment and protection of industrial property rights.
2. The Industrial Property Attorney shall
directly carry out representative activities in industrial property of the
Industrial Property Service Organization of which he/she is a member.
Article 57.- Powers and
Duties of the Industrial Property Representative:
1. The Industrial Property Representative is not
and shall not act on behalf of the National Office of Industrial Property and
industrial property management authorities, and is not allowed to exercise the
powers of such authorities.
2. With respect to representative activities in
industrial property, the Industrial Property Service Organizations shall have
civil rights and liabilities prescribed by the civil legislation.
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The Industrial Property Attorney shall work only
for the Industrial Property Service Organization of which he/she is a member.
Any representative services in industrial
property must be conducted in the name of the concerned Industrial Property
Service Organization. The Industrial Property Representative or the individual
or corporate conducting the service shall take responsibility for any issues
concerning their representation.
4. The Industrial Property Service Organization
shall act only within the scope of authorization, and can re-delegate to
another Industrial Property Service Organization only with the prior written permission
from the authorizing person.
5. The Industrial Property Service Organizations
shall be prohibited from carrying out the following acts:
- Representing conflicting parties at the same
time;
- Withdrawing the application for the title of protection,
declaring withdrawal of the protection, withdrawing the appeal against the
establishment of industrial property rights if not clearly stated as such in
the Power of Attorney.
- Disclosing information on national security
and interests when carrying out representative activities.
6. When entering into transactions or agreements
on representative services in industrial property, the Industrial Property
Attorney must present the Card of Industrial Property Attorney which is still
valid.
Before entering into contracts on representative
services in industrial property, the Industrial Property Service Organization
and Industrial Property Attorney must notify in details the national fee and
the amount of each kind of fee related to the procedures for establishment of
industrial property rights, as well as the service fee and the amount of each
kind of service fee of the Organization in accordance with the Tariff
registered at the National Office of Industrial Property.
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7. The Industrial Property Service Organization
and the Industrial Property Attorney shall be obliged:
- To keep confidential all the information and
documents they receive with respect to the case(s) they represent;
- To report truthfully and fully all
notifications, requirements of the National Office of Industrial Property or
the industrial property management authority; deliver in time the title of
protection and other decisions to the authorizing party.
- To protect the rights and interests of the
authorizing party by meeting in time the requirements of the National Office of
Industrial Property or the industrial property management authority in respect
of the authorizing party.
- To notify the National Office of Industrial
Property or the industrial property management authority of all changes to the
name, address and other information of the authorizing party, if necessary.
8. The Industrial Property Service Organization
shall be permitted to abandon their representative activities in industrial
property only if it can legally pass all pending work to another Industrial
Property Service Organization.
Article 58.- Conditions
for Granting the Representative License:
1. Conditions for granting the Card of
Industrial Property Attorney
Only those individuals who meet the following
criteria may be granted the Card of Industrial Property Attorney:
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- Permanently residing in Vietnam;
- Having obtained a university degree in law or
technique;
- Having obtained a certificate of graduation
from a regular course on industrial property; or having directly involved in
the legal work concerning industrial property for 5 consecutive years or more;
or having directly involved in the work of examination of industrial property
applications at national or international industrial property offices for 5
consecutive years or more;
- Having obtained certificate of success at the
examination in the prevailing laws on industrial property of Vietnam, which was
issued by the National Office of Industrial Property and remains valid;
- Being a professional member of an Industrial
Property Service Organization;
- Not being a person who is working for a
non-business State agency or organization;
- Not being a person who is working for another
Industrial Property Service Organization.
2. Conditions for granting the Certificate of
Industrial Property Service Organization:
Only those organizations which meet the
following conditions shall be granted the Certificate of Industrial Property
Service Organization:
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- Being an organization not having
foreign-invested capital;
- Having the function to conduct representative
services in industrial property; and, if operating in other fields, the
function to conduct legal representative services or scientific and
technological services (as recognized in the Charter of Operation and Business
License);
- Having at least 2 professional members who are
Industrial Property Attorneys, of them one is the Head of the Organization or
is authorized by the Head of the Organization to represent such Organization.
Article 59.- Procedures
for granting the Representative License:
The application procedures for granting the
Representative License, examination of the application for the Representative
License shall be stipulated by the Minister of Science, Technology and
Environment.
Article 60.- Charges
and Agency fees in industrial property:
1. The Industrial Property Service Organization
must list all charges and agency fees, and the amount of each kind of charge
and agency fee in the charges and agency fees tariff.
National official charges and agency fees must
be prescribed in the Tariff of charges and agency fees. The expenses on those
services which have not been actually performed by the Organization shall not
be included in the service fees.
2. Service fees (excluding national charges)
actually collected from clients shall be taxable in accordance with the
regulations.
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The collection of charges and agency fees must
be open and in compliance with the financial regulations. The Industrial
Property Service Organization shall be obliged to report the charges and agency
fees to the competent State authority, if so requested.
Article 61.- Revocation
of Representative License:
1. Conditions for revoking a Representative
License:
a) The National Office of Industrial Property
shall revoke the Certificate of Industrial Property Service Organization in the
following cases:
- The Organization abandons its representative
activities in industrial property, or the Organization terminates its
existence;
- The Organization no longer meets the
conditions prescribed in Clause 2, Article 58 of this Decree;
- The Organization violates the provisions of
law, especially those in this Chapter.
b) The National Office of Industrial Property
shall revoke the Card of Industrial Property Attorney and remove the Attorney’s name from the List of
Industrial Property Attorneys in the following cases:
- The Card holder abandons his representative
activities in industrial property;
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- The Card holder committed serious mistakes in
conducting representative activities in industrial property, causing damage to
the legitimate rights and interests of the authorizing party or other persons,
or adversely affecting the reputation of the State authorities and/or the
State.
2. The decision on revocation of the
Representative License shall be published in the Industrial Property Gazette.
3. When the Industrial Property Service
Organization has its Representative License revoked by the National Office of
Industrial Property, all unfinished procedures conducted by the Organization
shall be permitted to be discontinued and the authorizing Party shall be
allowed to resume such procedures within 3 months from the date of publication
of the Decision on revocation of the Representative License in the Industrial
Property Gazette.
Chapter VII
RESPONSIBILITIES OF
STATE AUTHORITIES FOR MANAGEMENT OF INDUSTRIAL PROPERTY ACTIVITIES
Article 62.- Protection
of national interests in industrial property activities:
1. The establishment and exercise of industrial
property rights must not infringe upon the interests of the State;
2. Protected objects of industrial property of
which the respective owners are State organizations and businesses or
organizations and businesses having capital contributed by the State shall be
the assets of the State. Such organizations and businesses shall have the obligation
to protect, preserve and develop the value of these assets.
3. Confidential inventions, utility solutions
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b) The author or owner of an industrial property
object and those persons involved in the creation, filing and examination of
the application for protection and/or utilization of confidential invention or
utility solution shall have the responsibility to keep confidential such
invention or utility solution in accordance with the regulations on protection
of national secrets.
4. Appellations of origin of goods of Vietnam are
national assets. The right to use an appellation of origin of goods shall
belong to the Owner of the Certificate of Right to Use appellations of origin
of goods and may not be transferred to others in any forms.
5. The transfer of industrial property rights of
Vietnam to foreign organizations and individuals must be approved by the
Minister of Science, Technology and Environment.
Article 63.- Responsibilities
of State Authorities Competent for Management of Industrial Property:
1. The Ministry of Science, Technology and
Environment shall be responsible for organizing and guiding the implementation
of regulations, policies and provisions of laws of the State on industrial
property, and uniformly managing all activities in industrial property
throughout the country.
2. The National Office of Industrial Property
under the Ministry of Science, Technology and Environment shall be the body
responsible for State management of industrial property. The National Office of
Industrial Property shall have the responsibility to assist the Minister of
Science, Technology and Environment in performing the responsibilities
prescribed in Clause 1 of this Article.
The National Office of Industrial Property has
the following functions, powers and tasks:
a) Performing the function of a State agency
competent to grant the titles of protection of industrial property rights
requested by individuals, legal persons and other entities;
b) Effecting procedures for suspension,
cancellation or extension of the validity of the titles of protection;
registering contracts on the transfer of industrial property rights;
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d) Organizing activities to provide information
on industrial property;
e) Organizing examinations of professional
skills and granting Licenses of operation and managing the professional
activities of organizations providing representative services in industrial
property;
f) Providing professional guidance and fostering
professional knowledge and skills of industrial property for industrial
property management agencies under the Ministries, branches, localities and
local establishments;
g) Within the scope of its authorization,
carrying out international co-operation in the field of industrial property.
3. The Ministries, the ministerial-level
agencies, the agencies attached to the Government, the People�s
Committees of provinces and cities directly under the Central Government,
within the scope of their functions and tasks, shall have the responsibility to
organize, guide and manage industrial property activities in their respective
branches and localities.
The scientific, technological and environmental
management agencies of branches and localities shall have the responsibility to
assist leaders of the branches and localities in performing the said functions,
and shall directly perform the following tasks:
a) Proposing to the Ministers, the Heads of the
Ministerial-level agencies, the agencies attached to the Government, the Presidents
of the People’s Committees
of provinces and cities directly under the Central Government, measures for
concretizing the implementation of the State�s policies on
industrial property and for organizing the implementation of such measures;
b) Organizing the systems for management of
industrial property activities within branches and localities and implementing
such measures so as to increase the effectiveness of such systems;
c) Organizing activities for the popularization
of policies on industrial property, coordinating with social organizations,
taking measures to step up the emulation movement for industrial property
creation and activities;
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e) Coordinating with law enforcement bodies in
protecting the industrial property rights and handling violations of law on
industrial property.
Article 64.- Responsibilities
of ministries, branches, localities:
1. The Ministry of Science, Technology and
Environment shall have to presribe the contents and procedures for filing,
receiving and examining the applications for the titles of protection of
industrial property; the procedures for approval and registration of contracts
on the transfer of industrial property rights; the procedures for granting
non-voluntary licenses; the regulations on management of innovative activities;
coordinating with the Ministry of Defense and Ministry of Interior in prescribing
the procedures for filing applications, examining and granting titles of
protection for the use, transfer and publication of confidential inventions,
utility solutions.
2. The Ministry of Finance shall have to
coordinate with the Ministry of Science, Technology and Environment in
prescribing the contents of and industrial property charges and fees and the
amounts thereof, the regulations on management and use of such charges and
fees, on the minimum and maximum costs of the transfer of industrial property
which belongs to the State.
3. The Ministry of Agriculture and Rural
Development shall have to revise the special products of agriculture; determine
the cultivation and production areas and the properties of such agricultural
products and requesting the corresponding People’s
Committees in the areas to guide the concerned individuals, organizations in
registering appellations of origin of goods for such agricultural products;
coordinating with the Ministry of Science, Technology and Environment in studying
and submitting to the Government for promulgation of the regulations on
protection of the rights of individuals and organizations that create new plant
varieties and animal breeds.
4. The Ministry of Health shall have to
coordinate with the Ministry of Science, Technology and Environment in issuing
regulations on the use of trademarks for pharmaceutical products in conformity
with the provisions on trademarks provided for in this Decree, studying and
submitting to the Government for the promulgation of the regulation on
protection of the rights of persons who create processes for the prevention,
diagnosis and treatment of diseases; coordinating with the Ministry of Science,
Technology and Environment, the Ministry of Industry in revising the foodstuffs,
beverages of particular features and quality associated with the geographical
conditions of the locality where such products are produced; determining areas
with the above-mentioned geographical conditions and requesting the relevant
People�s Committees to guide the concerned
individuals and organizations in registering appellations of origin of goods
used for such foodstuffs and beverages.
5. The Ministry of Education and Training shall
have to coordinate with the Ministry of Justice and the Ministry of Science,
Technology and Environment, in introducing the industrial property subject into
the curricula of universities and colleges.
6. The General Department of Customs shall have
to coordinate with the Ministry of Science, Technology and Environment in
issuing regulations on border control measures in relation to industrial
property for exported and imported goods.
7. The Ministry of Trade shall have to
coordinate with the Ministry of Science, Technology and Environment in issuing
regulations on industrial property control of goods produced and circulated on
the market.
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Article 65.- Handling
Administrative Violations in Industrial Property:
The handling of administrative violations in industrial
property shall be stipulated by the Government in a separate Decree.
Chapter VIII
IMPLEMENTATION PROVISIONS
Article 66.- Protection
of consumers�
interests in exercising the Industrial Property Rights:
During the term of protection, only the owner of
industrial property objects shall be entitled to place indications that the
products in question are protected or within the exclusive right of his/her
own, including indications in the form of signs on the products, in
advertisements or in transactions for business purposes.
Where the products are produced under a license,
indication to this effect must be made on the products, when advertising or
entering into transactions for business purposes.
Where the product is produced in Vietnam under a
foreign license or bearing a trademark which is likely to create the impression
that it is a foreign trademark or originates from a foreign country, the full
indication "Made in Vietnam" must be written on the product.
Article 67.- Protection
of industrial property rights of foreign entities:
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a) Individuals or legal persons entitled to the
rights under the Paris Convention;
b) Individuals or legal persons of countries
which have signed with Vietnam agreements on reciprocal protection of
industrial property or which together with Vietnam accept the principle of
reciprocity in the protection of industrial property of each other’s citizens or legal persons.
2. Citizens or legal persons of the countries
which are members of the Madrid Agreement shall be entitled to enjoy all rights
and bear all obligations in relation to trademarks under international
registrations in which Vietnam is designated and which is not refused
protection by Vietnam.
3. Individuals or legal persons of the countries
which are members of the PCT Treaty may file applications for the titles of
protection of inventions or utility solutions in Vietnam in accordance with
such Treaty and with the procedures to be stipulated by the Minister of
Science, Technology and Environment.
4. Where the application of this Decree results
in conflicts with the provisions of international treaties to which Vietnam has
acceded, the provisions of the international treaties shall prevail.
Article 68.- Application
of PCT Treaty and the Madrid Agreement:
The Ministry of Science, Technology and
Environment shall provide guidance on the procedures for processing
applications for international registration of inventions and/or utility
solutions under the PCT Treaty, procedures for processing applications for
international registration of trademarks with the designation to Vietnam under
the Madrid Agreement, and procedures for making and filing applications for
registration of industrial property rights originating from Vietnam in foreign
countries.
Article 69.- Transition
provisions:
1. The applications for protection under the
Ordinance on Protection of Industrial Property of January 28, 1989, which had
been filed with the National Office of Industrial Property before July 1, 1996,
including those filed by mail with the postal stamp prior to that date, will
continue being processed in accordance with the said Ordinance.
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3. Applications for the titles of protection
filed from July 1, 1996 to the date of signing this Decree shall be processed
in accordance with this Decree.
Article 70.- Implementation
Provisions:
1. The Ministers, the Heads of the
ministerial-level agencies, the agencies attached to the Government, the
Presidents of the People’s
Committees of the provinces and cities directly under the Central Government,
the General Director of the National Office of Industrial Property shall be
responsible for the implementation of this Decree.
2. This Decree replaces the previous regulations
issued by the Government on innovations, inventions (Decree No.31-CP issued on
January 23, 1981, amended on March 20, 1990), on trademarks (Decree No.197-HDBT
issued on December 14, 1982, amended on March 20, 1990), on industrial designs
(Decree No.85-HDBT issued on May 13, 1988, amended on March 20, 1990), on
utility solutions (Decree No.200-HDBT issued on December 28, 1988, amended on
March 20, 1990) and on licensing (Decree No.201-HDBT issued on December 28,
1988), and Decree No.84-HDBT issued on March 20, 1990 on amendments to the said
regulations. Particularly, the regulations on innovative activities under the
regulations on Technical Innovations, and Rationalization of Production and on
Inventions (Decree No.31-CP of January 23, 1981) shall continue to be
implemented until otherwise stipulated.
3. This Decree takes effect from the date of its
signing.
ON BEHALF OF
THE GOVERNMENT
THE PRIME MINISTER
Vo Van Kiet