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THE
MINISTRY OF SCIENCE AND TECHNOLOGY
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SOCIALIST
REPUBLIC OF VIET NAM
Independence
- Freedom - Happiness
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No: 01/2007/TT-BKHCN
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Hanoi,
February 14, 2007
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CIRCULAR
GUIDING THE IMPLEMENTATION OF THE
GOVERNMENTS DECREE No. 103/2006/ ND-CP OF SEPTEMBER 22, 2006, DETAILING AND
GUIDING THE IMPLEMENTATION OF A NUMBER OF ARTICLES OF THE LAW ON INTELLECTUAL
PROPERTY REGARDING INDUSTRIAL PROPERTY
Pursuant to
the November 29, 2005 Law on Intellectual Property;
Pursuant to the Government Decree No. 103/ 2006/ND-CF of September 22, 2006,
detailing and guiding the implementation of a number of articles of the Law on
Intellectual Property regarding industrial property;
Pursuant to the Government y Decree No. 54/ 2003/ND-CF of May 16, 2003,
defining the functions, tasks, powers and organizational structure of the
Ministry of Science and Technology, and Decree No. 28/2004/ND-CF of January 16,
2004, amending and supplementing a number of articles of Decree No. 5 4/2003/ND-
CP;
The Ministry of Science and Technology guides the implementation of the
Government Decree No. 103/2006/ND-CF of September 22, 2006, as follows:
Chapter I
PROCEDURES FOR ESTABLISHMENT OF INDUSTRIAL PROPERTY
RIGHTS
Section 1.
GENERAL PROVISIONS ON PROCEDURES FOR ESTABLISHMENT OF INDUSTRIAL PROPER TYRJGHTS
1.
Grounds for establishment of industrial property rights
1.1 Industrial
property rights arise/are established on the grounds specified in Clause 3,
Article 6 of the November 29, 2005 Law on Intellectual Property (hereinafter
referred to as the Intellectual Property Law), Clauses 1, 2, 3 and 4, Article 6
of the Governments Decree No. 103/ 2006/ND-CP of September 22, 2006, detailing
and guiding the implementation of a number of articles of the Intellectual
Property Law regarding industrial property (hereinafter referred to as the
Decree on industrial property) and specific provisions of this Point.
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1.3 Industrial property rights to geographic indications shall be
established under decisioi of the NOIP on the grant of certificates registered
geographical indications 1 organizations managing those geographic indications.
1.4 Industrial property rights to mart internationally registered under
the Madri Agreement and the Madrid Protocol (hereinaft referred to as
internationally registered mark shall be established under decisions on
acceptanc for protection or certificates of protection i Vietnam of
internationally registered mark granted by the NOIP upon the request of mar
proprietors. These decisions and certificates ar as valid as protection titles
granted to person registering marks in Vietnam.
1.5 Industrial property rights to well-know: marks shall be established
on the basis of thei actual public use that has made them well knowr and for
those marks the registration with the NOl] is not required. While exercising
the rights to an upon the settlement of a dispute over a well known mark, its
proprietor shall evidence his/hei its rights with appropriate proofs specified
ii Article 75 of the Intellectual Property Law.
1.6 Industrial property rights to trade name shall be established on the
basis of the lawful us of those trade names, and for those trade name the
procedures for registration with the NOIP i not required. While exercising the
rights to an upon the settlement of a dispute over, a trad name, the entity
owning that trade name sha] evidence his/her/its rights with proofs indicatin
the period of time, territory and field in whic the trade name has been used by
that entity.
1.7 Industrial property rights to busines secrets shall be established
on the basis a financial investment and intellectual labor or the results of
other lawful activities aimed to find, create or acquire information
constituting business secrets and keep confidential such information, and for
those business secrets the registration with the NOIP is not required. While
exercising the rights to and upon the settlement of a dispute over rights to a
business secret, the entity owning that business secret shall evidence
his/her/its rights with proofs indicating activities in which information
constituting the business secret has been created, found or acquired as well as
the measure to keep confidential such information.
1.8 The right to suppression of unfair competition shall be established
on the actual situation of competitive practices, and for that right the
registration with the NOIP is not required. While exercising the right to
suppression of unfair competition, right holders shall evidence their right
with proofs indicating business entities, fields, territories and periods of
time related to competitive practices.
2. Owners of industrial property registration
applications
2.1 Owners of industrial property registration applications (hereinafter
referred to as application owners) are organizations or individuals that file
applications for registration of inventions, layout designs, industrial
designs, marks or geographical indications. As soon as invention, layout
design, industrial design or mark protection titles are granted, application
owners are recognized as protection title holders. As soon as geographical
indication protection titles are granted, application owners are recognized as
geographical indication registrants.
2.2 Application owners must satisfy the conditions for the right of
industrial property registration provided for in Articles 86, 87 and 88 of the
Intellectual Property Law and Articles 7, 8 and 9 of the Decree on industrial
property. If those conditions are not satisfied, the industrial property
registration shall be considered invalid.
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3.1 Application owners may themselves carry out or authorize their
lawful representatives in Vietnam to carry out the procedures for industrial
property registration with the NOIP according to the provisions of this Point
and Point 4 of this Circular.
3.2 The following organizations or individuals may act as
representatives of application owners:
a) For organizations or individuals defined in Clause 1, Article 89 of
the Intellectual Property Law:
(i) If application owners are individuals: Their representatives at law
or mandated representatives, or industrial property representation service
organizations under their mandate;
(ii) If application owners are organizations: Their representatives at
law or staffs of organizations mandated by their representatives at law;
industrial property representation service organizations (under their mandate);
heads of their Vietnam-based representative offices or branches (for foreign
organizations).
b) For organizations or individuals defined in Clause 2, Article 89 of
the Intellectual Property Law: industrial property representation service
organizations (mandated by application owners).
3.3 When carrying out the procedures for industrial property
registration, the NOIP may only contact application owners or their lawful
representatives. Organizations or individuals that do not fall into the cases
specified at Point 3.2 of this Circular shall be regarded as unlawful
representatives of application owners.
4. Mandate of representatives to carry out
industrial property registration procedures
4.1 The mandate of representatives and the carrying out by mandated
representatives of procedures for industrial property registration (hereinafter
referred to as mandate) must comply with the provisions on mandate in Part III
of the Civil Code and the provisions of this Circular.
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a) Names (full names) and full addresses of the mandator and the
mandated party;
b) Name (full name) and full address of the party undertaking to act as
a surrogate mandated or sub-mandated party (if any);
c) Scope of mandate and mandated work volume;
d) Mandate duration (a power of attorney with an unspecified validity
duration will cease to be valid only when the mandator declares the termination
of the mandate);
e) Date of signing of the power of attorney;
g) Signature(s) (with full names, titles and seals, if any) of the
lawful representative of the mandator (and of the party undertaking to act as a
surrogate mandated or sub-mandated party, if any).
4.3 The date when a power of attorney takes legal effect in transactions
with the NOIP is determined to be:
a) The date the NOIP receives a valid power of attorney;
b) The date the NOIP approves the valid surrogate mandate or
sub-mandate;
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4.4 In case of surrogate mandate or sub- mandate, a power of attorney is
considered valid when the party acting as a surrogate mandated or sub-mandated
party commits to bear responsibility for all matters arising from prior
transactions conducted by the mandator with the NOIP.
4.5 If the scope of mandate stated in a power of attorney covers many
independent procedures and the original power of attorney has been submitted to
the NOIP, the mandated party, when carrying out subseqiient procedures, shall
submit copies of the power of attorney and give an accurate indication of the
serial number of the application containing that power of attorney.
5. Responsibilities of application owners and
their representatives
5.1 Application owners and their representatives shall ensure the
truthfiulness of information and documents supplied to the NOIP in the course
of industrial property registration according to the following regulations:
a) All transaction documents must be certified with the signatures of
application owners or their representatives, appended with certification seals
of organizations (if any). If certification of a notary public or another
competent agency is required, such certification must be obtained;
b) All Vietnamese translations of foreignlanguage documents must be
guaranteed by application owners or their representatives to be verbatim
translations of the original documents.
5.2 Application owners are liable for all consequences and obligations
arising from transactions conducted by their representatives with the NOIP.
5.3 Representatives of application owners are accountable to application
owners for all consequences of the declaration or supply of untruthful
information in transactions with the NOIP and pay compensations for any damage
caused.
5.4 Application owners and their representatives are below collectively
referred to as applicants, unless otherwise specifically provided for.
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6.1 From the date an industrial property registration application is
published in the Industrial Property Official Gazette to the date prior to the
issuance of a decision on the grant of a protection title, any organization or individual
may send to the NOIP its/his/her written opinions on the registration right,
the right of priority, protection conditions and other issues related to the
industrial property registration application according to the provisions of
Article 112 of the Intellectual Property Law. Written opinions of the third
party shall be regarded as an information source for reference in the course of
processing an industrial property registration application.
6.2 Within one month after receiving written opinions of the third
party, the NOIP shall notify such opinions to the applicant and set a time
limit of one month from the date of notification for the applicant to give
feedback in writing. After receiving the applicants feedback, when necessary,
the NOIP shall notify the feedback to the third party and set a time limit of
one month from the date of notification for the third party to respond in
writing to that feedback. The NOIP shall process opinions of applicants and
third parties on the basis of proofs and arguments furnished by the parties and
documents included in the applications.
6.3 When considering opinions of the third party groundless, the NOIP is
not required to notify those opinions to the applicant but shall notify the
third party of its refusal to consider the opinions, clearly stating the reason
for refusal.
6.4 If opinions of the third party are related to the registration
right, when finding it impossible to determine whether or not such opinions are
grounded, the NOIP shall notify such to the third party so that the latter can
file a petition with a court for handling. Within one month after the NOIP
issues the notice, if the third party fails to notify the NOIP of the filing of
a petition with a court for handling, the NOIP shall regard the third party as
having withdrawn its opinions. If the NOIP is notified by the third party
within the above time limit, it shall suspend the application processing until
the results of dispute settlement by the court are obtained. After the results
of dispute settlement by the court are obtained, the application processing
shall be resumed in accordance with those results.
6.5 When necessary and upon the request of both parties, the NOIP shall
organize face-to-face meetings between the third party and the applicant to
further clarify the matter challenged by an opposition.
6.6 The time limit for the applicant to respond to the opposition of the
third party shall not be counted into the time limit for the NOIP to carry out
relevant procedures according to regulations.
7. General requirements for industrial property
registration applications
7.1 Minimum documents
The NOIP shall only receive an industrial property registration
application (hereinafter referred to as the application) which, upon its filing,
contains at least the documents listed at Points a, b and e, Clause 1, Article
100, and Clause 1, Article 108 of the Intellectual Property Law and specified
as follows:
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(i) Declaration for registration;
(ii) Documents, specimen and information disclosing the industrial
property object sought to be registered;
Particularly for an invention registration application, a description of
the invention; for an industrial design registration application, a set of
photos, a set of drawings and a description of the industrial design; for a
mark registration application, the mark specimen and list of goods and services
bearing the mark; for a geographical indication, a description of particular
characteristics and quality of products bearing the geographical indication and
a map of the geographical area subject to the geographical indication;
(iii) Fee and charge receipts.
In case of absence of any of the above documents, the NOIP may refuse to
accept the application.
b) For an application for registration of a collective mark or
certification mark, in addition to the documents specified at Point 7.1 .a
above, the application must also contain the following documents:
(i) Rules on the use of the collective mark! certification mark;
(ii) Explanation of particular characteristics and quality of the
product bearing the mark (if the to-be-registered mark is a collective mark
used for a product with unique characteristics or a mark for certification of
the quality of a product or a mark for certification of geographical origin);
(iii) Map showing the indicated territory (if the to-be-registered mark
is a mark for certification of the geographical origin of a product).
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a) Applications must meet the general requirements specified in Articles
100 and 101 of the Intellectual Property Law and specific requirements for each
type of industrial property object specified in Articles 102, 103, 104, 105 and
106 of the Intellectual Property Law and guided in detail at Points 23, 28, 33,
37 and 43 of this Circular.
b) To ensure the technical requirements in the course of processing, an
application must also satisfy the following formality requirements:
(i) Each application can request grant of one protection title which is
of a type suitable to the industrial property object stated in the application;
(ii) All documents of the application must be in Vietnamese, except for
documents that are allowed to made in another language according to the
provisions of Points 7.3 and 7.4 of this Circular;
(iii) All documents of the application must be presented in the portrait
format (particularly, drawings, figures, charts and tables may be presented
landscape) onA4 paper sheets (210mm x 297 mm), of which the top, bottom, left
and right margins are all 20 mm, except for accompanied docuiments originally
not intended to be included in the application;
(iv) For documents that must be made according to pre-designed forms,
those forms shall be used with all necessary information filled in appropriate
sections;
(v) A document consisting of many pages must have page numbers in
Arabic;
(vi) All documents must be typewritten or printed with a non-fading ink,
clear and clean, and free from erasures and modifications; if detecting any
negligible spelling error in a document submitted to the NOIP, the applicant
may correct such error but shall append his/her signature of certification (and
a seal, if any) at the corrected words;
(vii) Terms used in the application must be common ones (other than
dialects, rare words, coined words). Symbols, units of measurement, electronic
fonts and spelling rules used in the application must conform to Vietnam
standards;
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c) The application must fully satisfy the requirements on quantities of
documents, specimens, drawings and photos, and specific requirements for each
type of application specified in this Circular.
d) The declaration form and other documents of the application must
contain fully mandatory and consistent information; the Vietnamese translations
of the applications documents must be true to the original documents; the power
of attorney must indicate the contents of work within the scope of mandate.
e) The object(s) stated in the application must be accurately grouped
and classified according to regulations
g) Documents that require certification of competent agencies (the
agency that has first received the application, the notary public, Peoples
Committee, etc.) must be affixed with those agencies seals of certification.
7.3 The following documents may be made in languages other than
Vietnamese but must be translated into Vietnamese:
a) Power of attorney;
b) Documents certifying the right of registration in case the applicant
enjoys another persons right of registration (inheritance certificate;
certificate of or agreement on transfer of the right to file an application,
covering also the transfer of a filed application; job assignment contract or
labor contract, etc.);
c) Documents evidencing the grounds for enjoying the right of priority (certification
by the application-receiving agency of copies of the initial application(s);
the list of goods and services in the initial mark registration application;
the paper on transfer of the right of priority in case the applicant enjoys
that right from another person).
7.4 The following documents may be made in languages other than
Vietnamese but must be translated into Vietnamese upon the request of the NOIP:
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b) Other documents annexed to the application.
8. Industrial property registration fees and
charges
8.1 Applicants shall pay fees and charges according to the Ministry of
Finances regulations.
8.2 Collection of fees and charges
a) When receiving an application or a request for any other procedures
to be carried out, the NOIP shall ask the applicant to pay prescribed fees and
charges and check fee and charge receipts included in the application.
b) If fees and charges are not yet fully paid according to regulations,
the NOIP shall issue a fee and charge collection notice to the applicant.
After the applicant has fully paid fees and charges, the NOIP shall
issue two originals of each fee or charge receipt clearly indicating the fee or
charge amount paid, of which one shall be enclosed with the application as an
evidence of payment of fees and charges.
8.3 Refund of paid fee and charge amounts
a) Paid fee and charge amounts shall be partially or wholly refunded
upon the request of the applicant in the following cases:
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(ii) Jobs for which fees and charges have been paid are not performed
due to non-occurrence of circumstances requiring these jobs.
b) In case of acceptance of a request for fee and charge refund, the
NOIP shall issue a fee and charge refund notice to the applicant, clearly
stating the refunded amount and the mode of refund.
c) In case of rejection of a request for fee and charge refund, the NOIP
shall notify such to the applicant, clearly stating the reason for rejection.
9. Time limits
9.1 Time limits specified in the Intellectual Property Law, the Decree.
on industrial property and this Circular shall be counted according to the
provisions of Chapter VIII, Part I of the Civil Code.
9.2 The time limit for applicants and concerned parties to submit,
modify or add documents or give their opinions may be prolonged once for a
period of time equal to the set time limit, if the applicant submits a written
request for prolongation before the date of expiration of the set time limit
and pay a prescribed fee.
9.3 Applicants may request in writing the NOIP to carry out the
procedures before the set deadline and shall pay a prescribed fee. In case the
NOIP rejects such a request, it shall notify the applicant of the rejection,
clearly stating the reason.
10. Forms of documents and protection titles
10.1 Forms of application documents are provided in the Appendices to
this Circular (not printed herein). Applicants shall use these forms to compile
documents of their applications for industrial property registration.
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11. General procedures
All types of industrial property registration application shall be
processed by the NOIP in the following order: receipt of applications;
formality examination of applications; publication of valid applications;
substantive (ex-officio) examination of applications (except for layout design
registration applications, which are not subject to substantive examination);
grant of or refusal to grant protection titles; official registration and
publication of decisions on the grant of protection titles.
12. Filing and receipt of applications
12.1 Applications may be filed with the NOIP or at other application
receipt places arranged by the NOIP. Applications may also be sent by post to
the above places of application receipt.
12.2 Upon receipt of an application, the NOIP shall check the
applications documents and compare them with those listed in the declaration
before deciding whether or not to receive the application:
a) If the application contains all the minimum documents specified at
Point 7.1 of this Circular, the application-receiving officer shall accept the
application, affix a seal to certify the filing date and the serial number of
the application in the declaration form;
b) If the application lacks any of the minimum documents specified at
Point 7.1 of this Circular, the application-receiving officer shall reject the application
or send a notice of the NOIPs rejection of the application to the applicant (if
the application is sent by post). For the rejected application, the NOIP is not
required to return the applications documents to the applicant, but shall
refund the paid fee and charge amounts according to the fee and charge refund
procedures specified at Point 8 of this Circular;
c) In case of acceptance of the application, the NOIP shall hand over
(send) to the applicant one declaration form bearing the seal of certification
of the filing date, the serial number of the application and the result of the
checking of the list of application documents, and the full name and signature
of the application-receiving officer. This handed over (sent) declaration form
is valid as an application receipt.
13. Formality examination of applications
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Formality examination of applications means examination of observance of
regulations on formalities applicable to applications, serving as a basis for
concluding whether applications are valid or invalid.
Valid applications shall be further examined. Invalid applications shall
be rejected (shall not be further examined).
13.2 Valid applications
An application is considered valid if it complies with the provisions of
Point 7 of this Circular and does not fall into one of the following cases:
a)The application is made in a language other than Vietnamese, unless
otherwise specified at Points 7.3 and 7.4 of this Circular;
b) The declaration form contains insufficient information on the author
(for invention, industrial design or layout design registration applications),
on the applicant or his/her representative, the signature and/or seal of the
applicant or his/her representative; the mark registration application lacks
the list of goods and services; the geographical indication registration
application fails to list products bearing the geographical indication;
c) There is a ground to confirm that the applicant does not have the
right of registration;
d) The application is filed in contravention of the provisions of
Article 89 of the Intellectual Property Law;
eThe application contains errors specified at Point 13.3 of this
Circular, which affect its validity, and the applicant, after receiving a
request of the NOIP, fails to amend or unsatisfactorily amends the application;
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For an application that involves many objects and falls into the case
specified at Points 13.2.a, 13.3.b and 13.3.c of this Circular, if it contains
errors related to only one or some of the objects in that application, the
application shall be considered partially invalid (corresponding to erroneous
object(s)). For other objects, the application is still considered valid.
13.3 Correction of errors in applications at the stage of formality
examination
If an application still contains the following errors, the NOIP shall
notify them to the applicant for correction within one month from the date of
notification:
a) The application fails to satisfy the formality requirements specified
at Point 7.2 of this Circular (containing an insufficient number of copies of
any of mandatory documents; failing to satisfy the uniformity requirement;
failing to satisfy the requirements on the presentation format; a mark
registration application fails to clearly state the mark sought to be
registered, lacks the mark description, inaccurately classifies goods and
services, lacks translations of documents enjoying priority, when necessary; or
information on the applicant in different documents is inconsistent or erased
or not properly certified);
b) The application filing fee and publication fee have not yet been
fully paid;
c) There is no power of attorney or the power of attorney is invalid
(for applications filed through representatives).
13.4 Determination of filing date
The filing date is determined as follows:
a) The filing date is the date an application is accepted by the NOIP
indicated in the seal of receipt affixed on the declaration form according to
the provisions of Point 12.2.a of this Circular;
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13.5 Determination of date of priority
a) If an application does not contain a claim for priority or contains a
claim for priority but that claim is not accepted by the NOIP, the application
shall be regarded as having no date of priority.
b) If an application contains a claim for priority, the date(s) of
priority is (are) the date(s) stated in that claim and accepted by the NOIP.
c) The determination of the date of priority according to the claim for
priority shall be based on the first application(s) filed in Vietnam in
accordance with the principles specified in Article 91 of the Intellectual
Property Law and relevant provisions of Points b, c and e, Clause 1, Article 10
of the Decree on industrial property.
13.6 Notification of results of formality examination and acceptance of
valid applications
a) For an application falling into one of the cases specified at Point
13.2 of this Circular or containing errors specified at Point 13.3 of this
Circular, the NOIP shall send to the applicant a notice on its intended
rejection of the application. Such a notice must clearly state the name and
address of the applicant; the name of the industrial property representation
service organization (if the application is filed through that organization);
the name of the object stated in the application; the filing date and the
serial number of the application; errors and reasons for which the application
is rejected; and set a time limit of one month from the date of notification
for the applicant to give opinions or correct errors.
b) For a valid application, the NOIP shall send to the applicant a
notice on acceptance of valid application, clearly stating the name and address
of the applicant, the name of the mandated representative (if any) and
information on the object stated in the application, the filing date and the
date of priority (in case a claim for priority is not accepted, the reason for
non-acceptance must be clearly stated).
13.7 Rejection of applications
If the applicant to whom the NOIP has sent a notice on its intended
rejection of the application according to the provisions of Point 13.6.a of
this Circular fails to correct errors or unsatisfactorily corrects errors or
makes no opposition or makes unreasonable opposition to the intended rejection
within the set time limit, the NOIP shall send to the applicant a notice on its
rejection of the application and, upon the applicants request, refund the paid
fee and charge amounts for jobs to be done after the formality examination.
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a) The time limit for formality examination of an application is one
month from the filing date.
b) In the course of formality examination, if the applicant corrects or
supplements documents on his/her own initiative or upon the request of the
NOIP, the time limit for formality examination may be prolonged for a period of
time during which documents are corrected or supplemented.
c) Before the expiration of the time limit specified at Point 13.8.a
above, the NOIP shall complete the formality examination of applications and send
notices on examination results to applicants according to the provisions of
Point 13.6 of this Circular.
14. Publication of valid applications
14.1 All applications accepted as valid shall be published by the NOIP
in the Industrial Property Official Gazette. Applicants shall pay a fee for
such publication.
14.2 Time limit for publication of applications
a) Publication of invention registration applications:
iAn invention registration application shall be published in the
nineteenth month from the date of priority or the filing date in case the
application has no date of priority or within two months after it is accepted
as a valid application, whichever is later;
(ii) An invention registration application under the Patent Cooperation
Treaty (hereinafter abbreviated to PCT) shall be published within two months
from the date it is accepted as a valid application and enters the national
phase;
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b) Publication of other applications: Layout design, industrial design,
mark or geographical indication registration applications shall be published
within two months from the date they are accepted as valid applications.
14.3 Contents of publication of applications
Information related to valid applications, including divisional
applications published in the Industrial Property Official Gazette, includes
information related to valid applications formality as stated in notices on
acceptance of valid applications, information related to valid applications
(transfer of applications, division of applications, serial numbers of parent
applications, etc.); invention abstracts accompanied with drawings (if any);
sets of photos or drawings of industrial designs; specimens of marks and
enclosed lists of goods and services; summaries of particular characteristics
and names of products bearing geographical indications.
14.4 Access to information on published valid applications
Everyone may access detailed information on the nature of objects stated
in the applications published in the Industrial Property Official Gazette or
request the NOIP to supply such information and is liable to pay an information
supply fee according to regulations.
15. Substantive examination of applications
15.1 Purpose and coverage of substantive examination
a) The purpose of substantive examination of applications is to assess
the protectability of objects stated in those applications under the protection
conditions and corresponding protection coverage (volume).
b) The procedures for substantive examination are not applicable to
layout design registration applications.
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a) in the course of substantive examination of invention/industrial
design registration applications with claims for priority, the NOIP may use the
results of information search and examination of those applications filed
overseas.
b) Applicants may supply (on their own initiative or upon the NOIPs
request) the following documents for use in service of substantive examination
of their applications:
(i) For an invention/industrial design registration application: Results
of information search or examination of the application filed overseas for the
object stated in the application; copies of the protection title granted on the
basis of a similar application filed overseas; documents on technical conditions
of the object stated in the invention registration application supplied by a
competent foreign authority to the applicant and other documents;
(ii) For a mark or geographical indication registration application: Documents
proving that the mark or geographical indication has been protected in a
foreign country, including documents explaining the use of the mark or
geographical indication and other documents.
15.3 Correction of errors, explanation of the contents of applications,
supply of information.
a) The NOIP may request applicants to explain the contents of their
applications, supply information pertaining to the nature of objects stated in
the applications, if full disclosure of the nature of objects is necessary for
substantive examination of the applications.
b) All amendments or supplements to erroneous documents of applications
shall be made by applicants themselves. The NOIP may only make those amendments
or supplements when applicants so request in writing. Applicants shall pay a
prescribed fee for such amendment and supplementation. Written requests for
amendment or supplementation of applications shall be enclosed with relevant
documents of applications and regarded as official documents of applications.
15.4 Ahead-of-time termination of substantive examination of
applications
a) In the following cases, the substantive examination of an application
shall terminate ahead of time:
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(ii) The object is incompatible with the type of protection title
applied for or the object is ineligible for the States protection according to
regulations;
(iii) There is a ground to confirm that the object fails to satisfy one
or several protection conditions, and it is therefore unnecessary to assess
other conditions before conclusions can be made that the object fails to
satisfy the protection conditions;
(ivThe applicant fails to fulfill the request for correction of errors
or explanation of contents of the application or fails to supply necessary
information upon the NOIP s request specified at Point 15.3 of this Circular;
(v) The applicant requests termination of the substantive examination of
the application or declares to withdraw or cancel the application.
b) Except for the cases specified at Point 15.4.a
(vabove, the NOIP shall send to the applicant a notice on ahead-of-time
termination of substantive examination, clearly stating the reason therefor and
setting a time limit of two months from the date of notice for the applicant to
give opinions.
15.5 Resumption of substantive examination of applications
a) If applicants make written oppositions to notices on termination of
substantive examination of applications within the time limit specified at
Point 15.4.b of this Circular, the NOIP shall consider those oppositions.
b) If oppositions are reasonable, the NOIP shall resume the substantive
examination of applications, and the time for applicants to give their opinions
shall not be counted in the time limit for substantive examination.
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15.6 Examination contents
Substantive examination of an application covers the following contents:
(i) Assessment of compatibility of the object stated in the application
with the type of protection title applied for;
(ii) Assessment of the object based on each protection condition;
(iii) Inspection of observance of the first-tofile rule.
b) The assessment of the object based on the protection conditions shall
be conducted for objects one after another (if the application contains many
and still ensures the uniformity). For each object, the assessment shall be
conducted based on each specific protection condition:
(i) For an invention registration application, the assessment shall be
conducted with regard to the points stated in the (requested) protection
coverage one after another;
(ii) For an industrial design registration application, the assessment
shall be conducted for the design of each product (if the application is for a
set of products); in case the application shows many variations of an
industrial design, those variations shall be assessed one after another,
starting from the basic variation (the first variation shown in the
application);
(iii) For a mark registration application, the assessment shall be
conducted with regard to each component of the mark for each goods or service
on the list of goods and services.
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(i) Any reason is found to conclude that the object fails to satisfy
one/several/all protection conditions; or
(ii) No reason is found to conclude that the object fails to satisfy at
least one protection condition.
d) Before issuing a notice defined at Point 15.7.a of this Circular, the
NOIP shall review the results of substantive examination of the application by
checking relevant applications with earlier dates of priority received by it
after the substantive examination starts.
15.7 Jobs to complete the substantive examination
a) Notification of results of substantive examination of applications
On the date of expiration of the time limit for substantive examination
of an application specified at Point 15.8 of this Circular at the latest, the
NOIP shall send to the applicant one of the following notices:
(i) If the object stated in the application fails to satisfy the
protection conditions, the NOIP shall issue a notice on its intended refusal to
grant a protection title, clearly stating the reason(s) for refusal, possibly
guiding the change of the protection coverage (volume) and setting a time limit
of two months from the date of issuance of the notice for the applicant to give
opinions and satisfy the requirements. The applicant may request prolongation
of the above time limit according the provisions of Point 9.2 of this Circular;
(ii) If the object stated in the application satisfies the protection
conditions but the application still contains errors, the NOIP shall issue a
notice on its intended refusal to grant a protection title, clearly pointing
out errors in the application and setting a time limit of two months from the
date of issuance of the notice for the applicant to justify or correct errors.
The applicant may request prolongation of the above time limit according to the
provisions of Point 9.2 of this Circular;
(iii) If the object stated in the application satisfies the protection
conditions or the applicant satisfactorily corrects errors or makes reasonable
justifications within the time limit specified at Points l5.7.a (i) and (ii)
above, the NOIP shall issue a notice on its intended grant of a protection
title, setting a time limit of one month from the date of issuance of the
notice for the applicant to pay the fee for the grant of a protection title,
the fee for notification of the protection title grant decision, the
registration fee and the fee for maintenance of the first years validity of
invention patent. The applicant may request prolongation of the above time
limit according to the provisions of Point 9.2 of this Circular.
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c) If the applicant fails to pay the fee for the grant of a protection
title, the fee for notification of the protection title grant decision or the
registration fee within the time limit specified at Point 15.7.a (iii) above,
the NOIP shall, within 15 days after the expiration of the corresponding time
limit, issue a notice on its refusal to grant a protection title. Particularly
for an invention registration application, if the applicant pays fully the fee
for the grant of a protection title, the fee for notification of the protection
title grant decision and the registration fee within the time limit specified
at Point 15.7.a (iii) above but fails to pay the fee for maintenance of the
first years validity of invention patent or utility solution patent, such a
protection title shall be granted but becomes invalidated right after the date
of grant.
15.8 Time limits
a) The time limit for substantive examination of applications is
detemined as follows:
(i) For an invention registration application, 12 months from the date
of receipt of a request for substantive examination (if such request is made
after the application is published) or from the date of publication of the
application (if such request is made before the application is published);
(ii) For a utility solution, mark or geographical indication
registration application, 6 months from the date of publication of the
application.
b) If the applicant, in the course of substantive examination, corrects
or supplements documents or makes justifications on his/her own initiative or
upon the request of the NOIP, the time limit for substantive examination may be
prolonged for a period of time during which the applicant does so.
16. Re-examination of applications
16.1 Re-examination of an application challenged by an opposition after
the issuance of a notice on intended grant/intended refusal to grant a
protection title.
a) The re-examination of an application according to the provisions of
Clause 4, Article 117 of the Intellectual Property Law shall be conducted in
the following cases:
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(ii) Opinions mentioned at Point 16.1.a (i) above are well-grounded and
supported by proofs or references to reliable information sources;
(iii) Arguments or evidence to prove that opinions mentioned at Point
16.1 .a (i) above are different from those previously furnished (if any), or
though they are not different from the previously furnished ones but the NOIP
has not yet replied according to the provisions of Point 6.2 of this Circular.
b) The time limit for re-examination of applications is equal to two thirds
of the time limit for examination specified at Point 15.8 of this Circular; for
complicated cases involving many circumstances which need to be verified or
requiring expert opinions, that time limit may be prolonged but must not exceed
the time limit for examination.
c) Contents and procedures for re-examination must comply with the
relevant provisions of Points 15.6 and 15.7 of this Circular.
d) The re-examination of an application shall be conducted only once.
16.2 The re-examination of an application upon the protection title
holders request for narrowing of the protection coverage
If a protection title holder requests narrowing of the coverage of the
industrial property rights protection according to the provisions of Clause 3,
Article 97 of the Intellectual Property Law, the NOIP shall re-examine that
application according to the contents and procedures specified at Points 15.6
and 15.7 of this Circular, if the requester pays the prescribed fees and
charges.
17. Amendment/supplementation/division!
conversion/transfer of applications
17.1 Amendment and supplementation of applications
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b) In response to a request for amendment or supplementation of the
following documents, the applicant shall submit amended or supplemented copies
of documents enclosed with a detailed written explanation of the amended
contents as compared with the initially submitted documents:
(i) Invention description or abstract, for an invention registration
application;
(ii) Drawings, photos or description, for an industrial design
registration application;
(iii) Mark specimen, list of goods and services bearing the mark, for a
mark registration application;
(iv) Description of distinct characteristics, a map of the geographical
area subject to the geographical indication, for a geographical indication
registration application.
c) The amendment and supplementation of an application must not expand
the protection coverage (or increase the protection volume) beyond the contents
disclosed in the description, for invention or industrial design registration
applications, in the list of goods and services, for mark registration
applications, and must not change the nature of the object stated in the
application. If the amendment expands the protection coverage (increases the
protection volume) or changes the nature of the object sought to be protected,
the applicant shall file a new application and all procedures shall be carried
out anew.
d) The applicant may request correction of errors in the names and
addresses of the applicant and the author.
e) All requests for amendment and supplementation must be made in
writing according to a set form (not printed herein). A request may be made for
amendment of the same content related to many applications, provided that the
requester pays a fee based on the number of to-be-amended applications.
g) If the applicant amends or supplements the applications documents on
his/her own initiative after the NOIP issues a notice on acceptance of valid
application, the amendments or supplements shall be made according to the
provisions of Points 13.2, 13.3 and 13.6 of this Circular. Amended and
supplemented application contents shall be published in the Industrial Property
Official Gazette according to the provisions of Point 14 of this Circular and
applicants shall pay a prescribed fee for such publication.
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17.2 Division of applications
a) The applicant may divide, on his/her own initiative or upon the
request of the NOIP, his/her application (division and transfer of one or
several technical solutions in an invention registration application, one or
several industrial designs in an industrial design registration application,
one or several components of a mark or part of the list of goods and services
in a mark registration application to one or several new applications referred
to as divisional applications).
b) A divisional application must bear a new serial number and is
entitled to the filing date or date(s) of priority (if any) of the parent
application; and shall be published according to the provisions of Point 14 of
this Circular after the issuance of the notice on acceptance of valid
application.
c) For each divisional application, the applicant shall pay a filing fee
and all fees and charges for procedures carried out independently from the
parent application but is exempted from the fee for claim for priority rights.
Divisional applications are subject to formality examination and shall be
further processed according to the procedures not yet completed for their
parent applications. Divisional applications shall be republished and
applicants shall pay a publication fee if the division is effected after the
NOIP issues notices on acceptance of valid applications for parent
applications.
d) Parent applications (after being divided) shall be further processed
according to normal procedures and applicants shall pay an amendment and
supplement fee.
17.3 Conversion of applications
a) Before the NOIP issues a notice of its refusal to grant a protection
title or a decision on the grant of a protection title, an invention
registration applicant may convert the application for an invention patent into
one for a utility solution patent or vice versa according to the provisions of
Point e, Clause 1 ,Article 115 of the Intellectual Property Law, if the
applicant pays a prescribed application conversion fee.
b) After receiving a valid request for application conversion, the NOIP
shall continue carrying out the procedures for processing the converted
application according to relevant provisions but shall not carry out again the
procedures already completed for the application before the conversion request
is made.
c) Requests for application conversion made after the time limit
specified at Point 17.3.a above shall not be considered. Applicants may file
new applications bearing the filing dates (dates of priority, if any) of parent
applications.
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Before the NOIP issues any of notices specified at Point 17.1 .a of this
Circular, an applicant may request the NOIP to record the transfer of his/her
application to another person. Requests for recording of the transfer shall be
made according to a set form (not printed herein) and relevant provisions of
Point 17.1 of this Circular, and must contain documents proving that the
transferee satisfies the requirement on the right of registration.
18. Refusal to grant, grant or re-grant of
protection titles, grant of protection title duplicates
18.1 Refusal to grant protection titles
Applications for protection titles may be rejected if they fall into one
of the cases specified in Clauses 1 and 2, Article 117 of the Intellectual
Property Law. In these cases, the NOIP shall carry out the procedures for
refusal to grant protection titles according to the provisions of Clauses 3 and
4, Article 117 of the Intellectual Property Law.
18.2 Grant of protection titles
a) Within 10 days after applicants pay fully and on time the prescribed
fees and charges, the NOIP shall carry out the procedures for grant of
protection titles according to the provisions of Article 118 of the
Intellectual Property Law.
b) Upon receiving protection titles, if protection title holders detect
errors therein, they may request the NOIP to correct the protection titles
according to the provisions of Point 20.2 of this Circular.
c) As from the date the NOIP issues decisions on grant of protection
titles, the transfer of applications shall not be considered.
18.3 Grant of protection title duplicates and renewal of protection
titles
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b) In the following cases, an industrial property right holder who has
been granted a protection title/duplicate of protection title may request the
NOIP to renew the protection title/duplicate of protection title but shall pay
a renewal fee:
(i) The protection title/duplicate of protection title is lost;
(ii) The protection title/duplicate of protection title is damaged,
torn, stained or faded out that it can no longer be used.
c) Request for grant of duplicates/renewal of protection titles
Unless it is already included in the registration declaration of an
industrial property object, any request for grant of a duplicate/renewal of
protection title must be made in writing and comprise the following documents:
(i) Written declaration for the grant of duplicate/renewal of protection
title, made according to a set form (not printed herein);
(ii) One mark specimen; one set of photos of industrial design drawing
identical to the mark specimen, and one set of photos of industrial design
drawing in the original protection title;
(iii) Power of attorney (in case the request is filed through a
representative);
(iv) Receipt of the fee for grant of a protection title or the fee for
grant of a protection title duplicate.
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(i) Within one month after receiving an application, the NOIP shall
consider a request for grant of protection title duplicate/renewal of
protection title. If that request satisfies the above requirements, the NOIP
shall issue a decision on the grant of a protection title duplicate/renewal of
the protection title and record it in the section for registration of the
protection title in the National Register of Industrial Property;
(ii) A protection title duplicate must contain all information of the
original protection title. A renewed protection title/protection title
duplicate must contain all information of the initially granted protection
title/protection title duplicate and the indication renewed, duplicate or
renewed duplicate;
(iii) If a request for renewal/grant of duplicates of a protection title
fails to satisfy the requirements specified at Point 18.3.c above, the NOIP
shall issue a notice on its refusal to grant duplicates/ refusal to renew the
protection title, clearly stating the reason(s) for the refusal.
19. The National Register of Industrial Property,
publication of decisions on grant of protection titles
19.1 The National Register of Industrial Property
a) The National Register of Industrial Property serves as an official
and public database of the State, supplying all information on the legal status
of established industrial property rights. The National Register of Industrial
Property includes the following registers:
(i) National Register of Inventions;
(ii) National Register of Utility Solutions;
(iii) National Register of Industrial Designs;
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(v) National Register of Marks;
(vi) National Register of Geographical Indications;
(vii) National Register of Assignment of Industrial Property Rights;
(viii) National Register of Industrial Property Representation.
b) The national registers specified at Point 19.1 .a (i), (ii), (iii),
(iv), (v) and (vi) above contains various sections relevant to each protection
title, and consists of:
(i) Information on the protection title: serial number and date of
grant; name of the protected object, protection coverage/volume and validity
duration; name and address of the protection title holder/the registrant of the
geographical indication, name and address of the author of the invention,
layout design or industrial design;
(ii) Information on the application for grant of the protection title
(serial number, filing date, date of priority, name of the industrial property
representation service organization, if any);
(iii) All information on the amendment of the protection title, the
validity status of the protection title (maintenance, prolongation, termination
of validity, and invalidation); assignment of industrial property rights,
licensing of the industrial property object; serial number, date of grant and
grantees of duplicates or renewed protection title.
c) The national register specified at Point 19.1 .a (vii) above contains
various sections relevant to each registered contract on assignment of
industrial property rights, specifically as follows:
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(ii) Information on the registered contract (name, date and place of
signing, names and addresses of the assignor and the assignee, the assigned
object and scope of assignment);
(iii) Information on changes related to the contract (amendments or
supplements to, extension, termination and invalidation of the contract);
(iv) Information on compulsory licensing, termination of compulsory
licensing of the invention under decisions.
d) The national register specified at Point 19.1.a (viii) above contains
various sections relevant to each industrial property representation service
organization, specifically as follows:
(i) Information on the industrial property representation service organization
(full name, transaction name, address, recording or deletion of name,
modification of information on the industrial property representation service
organization);
(ii) Information about the list of industrial property representatives
of the organization (full name, permanent residence address and serial number
of the practice certificate of each representative on the list);
(iii) Information on changes in the list of industrial property
representatives (grant, renewal or withdrawal of practice certificates, etc.).
e) The national registers shall be made by the NOIP and archived in the
printed or electronic form or in other media. Any person may refer to the
electronic registers or request the NOIP to issue copies or extracts of the
registers but shall pay a fee for copy issuance.
19.2 Publication of decisions on grant of protection titles
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b) Information published according to the provisions of Point 19.2.a
above includes information written in relevant decisions: invention abstract;
set of industrial design photos or drawings; mark specimens and list of goods
and services bearing the mark; geographical indication and products bearing the
geographical indication.
20. Modification, change of holders of protection
titles, narrowing of protection coverage, maintenance or extension of validity
of protection titles
20.1 Recording of change in the name and address of the protection title
holder, narrowing of the protection coverage and modification of the
description of the nature/quality/reputation of the product bearing the
geographical indication, the map of the geographical area subject to the
geographical indication, and regulations on the use of collective or
certification marks
a) Requests for modification or change of holders of protection titles
The holder of a protection title may request the NOIP to record changes
in that protection title in the following cases:
(i) Change in the name or address of the protection title holder;
(ii) Change of the protection title holder (transfer of ownership on the
ground of inheritance, succession, merger, separation, split- up, joint
venture, association or establishment of a new legal entity under the same
owner, transformation of the business operation, or under a decision of a competent
state agency).
The requester for recording of the change in the name, address of or
change of the protection title holder shall pay the fee for protection title
modification and the fee for publication of a decision on recording of
modification of the protection title.
b) Requests for narrowing of the protection coverage and modification of
descriptions of the nature/quality/reputation of products bearing geographical
indications, maps of geographical areas subject to geographical indications,
regulations on the use of collective or certification marks
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(i) Request for modification of some details without any substantial
change in the mark specimen stated in the certificate of registered mark;
(ii) Request for exclusion of one or several goods or services or groups
of goods or services from the list of goods or services specified in the
certificate of registered mark without any change in the mark specimen;
(iii) Request for reduction of one or several independent or dependent
points within the (requested) protection coverage stated in the invention or
utility solution patent;;
(iv) Request for exclusion of one or several industrial design
variations, one or several products from the set of products stated in the
industrial design patent; request for removal of one or several basic design
features of the industrial design.
c) Written requests for modification of protection titles
Depending on contents which need to be amended or supplemented as
defined at Points 20.l.a and 20.l.b above and Point b, Clause 1, Article 97 of
the Intellectual Property Law, a written request comprises the following
documents:
(i) Written declaration requesting modification of the protection title,
clearly stating the request for recording of change in the name or address of
the protection title holdei change of the protection title holder, request for
narrowing of the protection coverage or modification of the description of the
nature/quality/reputation of the product bearing the geographical indication,
the map of the geographical area subject to the geographical indication, or
regulations on the use of collective or certification marks, made according to
a set form (not printed herein);
(ii) Original protection title;
(iii) Documents certifying the change of the name or address (the
originals or notarized copies of the decision on rename or change of address;
the business registration certificate that records the name or address change;
other documents of legal validity evidencing the name or address change) in
case the content requested to be modified is such name or address;
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(v) Documents explaining in detail the modified contents;
(vi) Five modified mark specimens (for a request for modification of
mark details); five sets of industrial design photos or drawings (for a request
for industrial design modification); two descriptions of the
nature/quality/reputation of the product bearing a geographical indication, the
map of the geographical area subject to the modified geographical indication
(for a request for geographical indication modification); or two regulations on
the use of the modified collective or certification mark (for a request for
collective or certification mark modification);
(vii) Power of attorney (if the request is filed through a
representative);
(viii) Receipts of the prescribed fee for modification of the protection
title, the fee for examination of the content of the request for narrowing of
the protection coverage, and the charge for publication of the modification
decision and registration.
A written request for protection title modification may be made for many
protection titles that have the same content requested to be modified, if the
requester pays fees and charges for each protection title.
d) Handling of requests for modification of protection titles
Within one month after receiving an application, the NOIP shall consider
the request for modification of protection title. If the request is considered
valid, the NOIP shall issue a decision on modification of the protection title,
register and publish it in the Industrial Property Official Gazette. If the
request is considered invalid, the NO1P shall send to the requester a notice on
its intended refusal to accept the modification, clearly stating the reason for
refusal and setting a time limit of one month from the date of notice issuance
for the requester to correct errors or make an opposition. If within the set
time limit the requester fails to correct errors or unsatisfactorily corrects
errors, makes no opposition or an unreasonable opposition, the NOIP shall issue
a notice on its rejection of the request for protection title modification.
20.2 Correction of errors in protection titles
a) When an error is detected in a protection title, the NOIP shall
revoke, on its own initiative or upon the request of the error-detecting
person, the erroneous protection title and grant a new protection title.
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20.3 Maintenance of validity of invention protection titles
To have the validity of his/her invention protection title maintained, a
protection title holder shall pay a validity maintenance fee within six months
before the expiration of the validity term. The payment of the validity
maintenance fee may be delayed for no more than six months after the expiration
of the current validity term but the protection title holder shall pay the
maintenance fee plus 10% for each month of delayed payment.
20.4 Extension of validity of protection titles
a) The validity of invention patents, utility solution patents and
certificates of registered layout designs shall not be extended. The validity
of an industrial design patent may be extended at most twice for a period of
five years each. The validity of a certificate of registered mark may be
extended many times for a period of ten years each.
b) To have the validity of an industrial design patent or certificate of
registered mark extended, the patent or certificate holder shall, within six
months before the date of expiration of the validity of the patent or
certificate, file an application for extension to the NOIP.
The filing of the application for validity extension may be delayed for
no more than six months after the expiration of the protection titles validity
but the protection title holder shall pay an extension fee plus 10% for each
month of delayed filing.
c) Applications for validity extension
An application for extension of validity of a protection title comprises
the following documents:
(i) Written declaration to request extension of the protection title
validity, made according to a set form (not printed herein);
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(iii) Power of attorney (if the application is filed through a
representative);
(iv Receipts of the prescribed fees for extension, publication and
registration of the decision on extension of the protection titles validity.
d) Handling of applications for validity extension.
The NOIP shall consider an application for validity extension within one
month after the date of its receipt. If the application is error-free, the NOIP
shall issue a decision on validity extension, record it in the protection
title, register and publish it in the Industrial Property Official Gazette.
The NOIP shall issue a notice on its intended refusal to extend
validity, clearly stating the reason for refusal and setting a time limit of
one month from the date of notice issuance for the applicant to correct errors
or make an opposition if the application for validity extension falls into one
of the following cases:
(i) It is invalid or filed in contravention of the prescribed procedures;
(ii) The applicant is not the protection title holder.
If within the set time limit the applicant fails to correct errors or
unsatisfactorily corrects errors, makes no opposition or an unreasonable
opposition, the NOIP shall issue a notice on its refusal to extend validity.
21. Termination or invalidation of protection
titles
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Requests for termination or invalidation of protection titles shall be handled
according to the provisions ofArticles 95 and 96 of the Intellectual Property
Law and this Point.
21.2 Written requests for termination or invalidation of protection
titles
a) A written request may invoke the same reason for termination or
invalidation of one or more than one protection titles, if the requester pays
the prescribed fee for each protection title.
b) A written request for termination or invalidation of a protection
title comprises the following documents:
(i) Written declaration to request termination or invalidation of the
protection title, made according to a set form (not printed herein;
(ii) Proofs (if any);
(iii) Power of attorney (if the written request is filed through a
representative);
(iv) Written justification of the reason for request (clearly stating
the serial number of the protection title, reason, legal grounds, contents of
the request for termination or invalidation of part of or the entire protection
title) and relevant documents specified at Points 7.2, 22.2 and 22.3 of this
Circular;
(v) Receipts of the prescribed fees and charges.
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a) In case a request for termination or invalidation of a protection
title is made by a third party, the NOIP shall notify in writing the third
partys opinions to the protection title holder, setting a time limit of two
months from the date of notification for the protection title holder to
respond. The NOIP may organize an exchange of opinions between the third party
and the protection title holder.
b) After considering opinions of the parties, the NOIP shall issue a
decision on termination/ invalidation of part of/the entire protection title or
notify its refusal to terminate! invalidate the protection title according to
the provisions of Clause 4, Article 95 and Clause 4, Article 96 of the
Intellectual Property Law.
c) If disagreeing with the NOIP s decision on handling of the request
for termination or invalidation of the protection title, the requester or an
involved party may lodge a complaint about that decision or the relevant notice
according to the procedures specified at Point 22 of this Circular.
d) A decision on termination or invalidation of a protection title shall
be published in the Industrial Property Official Gazette and recorded in the
National Register of Industrial Property within two months from the date of its
signing.
21.4 Termination or invalidation of international registrations of marks
a) For a third partys application for termination or invalidation of an
international registration of mark under the Madrid Agreement or the Madrid
Protocol, the NOIP shall notify the content of the request for termination or
invalidation to the proprietor through the international Bureau, setting a time
limit of three months from the date of notification for the proprietor to
respond.
b) A decision on termination or invalidation of an international
registration of mark shall be sent to the international Bureau for carrying out
relevant procedures under the Madrid Agreement or the Madrid Protocol and
published in the Industrial Property Official Gazette.
22. Complaints and settlement of complaints about
the procedures for establishment of industrial property rights
22.1 Persons with the right to complain, complaint objects and statute
of limitations for lodging complaints
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22.2 Complaints
a) Each complaint should mention one complained decision or notice. A
complaint may mention two or more decisions or notices that have the same
complained content and for the same complaining reason, if the complainant pays
the prescribed complaint fee for each complained decision or notice.
b) A complaint comprises the following documents:
(i) Written declaration for complaining, made according to a set form
(not printed herein;
(ii) Written explanation of the complaint and proofs supporting the
complaining reason (clearly stating the reason, legal grounds, complained
contents, enclosed list of proofs, if any);
(iii) Copy of the NOIPs complained decision or notice;
(iv) Copy of the decision on settlement of the first-time complaint (for
a second-time complaint);
(v) Power of attorney (if the application is filed through a
representative);
(vi) Receipts of the prescribed fees and charges related to the
complaint.
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(i) It may be a document in a foreign language enclosed with its
Vietnamese translation if the person competent to settle the complaint so
requests;
(ii) If it is a document made and signed by an individual or
organization that has no lawful seal or a foreign individual or organization,
the signature of that individual or organization must be certified by a notary
public or a competent agency;
(iii) If it is an information carrier (printed matter, video tape,
etc.), the origin and date of distribution or publication of that carrier, or
the origin or the date of publication of information stored in that carrier
shall be clearly indicated on a case-by-case basis;
(iv) An exhibit must be accompanied with a written description of its
features that are directly related to the complained contents.
22.3 Responsibilities of complainants
A complainant shall ensure the truthfulness of supplied proofs and are
liable for consequences of the supply of untruthful proofs.
22.4 Withdrawal of complaints
a) At any time, a complainant may notify in writing the withdrawal of
his/her complaint. If the withdrawal of a complaint is made by an industrial
property representation service organization, the mandated withdrawal must be clearly
stated in the power of attorney.
b) A withdrawn application shall be regarded as having not been filed.
The written complaint shall not be returned and the paid complaint fee and
charge amounts shall not be refunded to the complainant.
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a) Within ten days after receiving a complaint, a person competent to
settle complaints shall examine the complaint according to the formality
requirements and notify in writing the complainant of whether the complaint is
accepted or not, clearly stating the date of complaint acceptance or the reason
for its refusal to accept the complaint.
b) A complaint shall not be accepted if it falls into one of the
following cases:
(i) The complainant does not have the right to complain;
(ii) The complaint is lodged after the expiration of the prescribed
statute of limitations;
(iii) The complaint fails to satisfy the requirements specified at
Points 22.1 and 22.2 of this Circular.
22.6 Related parties
a) For an accepted complaint, the person competent to settle complaints
shall notify in writing the complained contents to persons with directly
related rights and benefits (related parties), setting a time limit of one
month from the date of notification for those parties to give their opinions.
b) Related parties may supply information or proofs supporting their
arguments within the time limit specified at Point 22.6.a above, and the
persons competent to settle complaints shall consider those information or
proofs while settling the complaint.
c) Upon the expiration of the above time limit, if related parties give
no opinions, the complaint shall be settled based on the complainants opinions.
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a) Based on arguments and proofs of the complainant and related parties,
the person competent to settle complaints shall issue a decision on complaint
settlement within the time limit for complaint settlement provided for by the
law on complaints.
b) Before issuing a decision on complaint settlement, the person
competent to settle complaints shall notify the complainant or a related party
of the other partys arguments and proofs used in the settlement of the
complaint, and complaint settlement conclusions.
c) A decision on complaint settlement must have the contents defined by
the law on complaints.
22.8 A decision on complaint settlement shall be published in the
Industrial Property Official Gazette within two months from the date of its
signing.
22.9 Validity of decisions on complaint settlement
Any procedure for establishment of industrial property rights that
depends on the complaint settlement results shall only be carried out on the
basis of:
a) A decision on settlement of the first-time complaint, if upon the expiration
of the statute of limitations for lodging second-time complaints the
complainant does not lodge a second-time complaint, or if upon the expiration
of the statute of limitations for institution of administrative lawsuits the
complainant does not file an administrative lawsuit; or
b) A decision on settlement of the second-time complaint if the
complainant fails to file an administrative lawsuit within a set time limit, or
under an effective court ruling if the complainant has filed an administrative
lawsuit.
Section 2.
PROCEDURES FOR REGISTRATION OF INVENTIONS
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23.1 An invention registration application (application) must satisfy
the general requirements specified at Points 7 and 10.1 of this Circular and
the specific requirements of this Point.
23.2 An application must clearly indicate that the object sought to be
protected is a product or process complying with the provisions of Clause 12,
Article 4 of the Intellectual Property Law.
23.3 An application must ensure uniformity as specified in Clauses 1 and
2, Article 101 of the Intellectual Property Law, which is guided as follows.
An application is considered uniform if:
a) It requests protection of only one object; or,
b) It requests protection of a group of technically interrelated objects
that demonstrate the sole inventive idea and fall into the following cases:
(i) An object is used to create (produce, manufacture or prepare)
another object;
(ii) An object is used to accomplish another object;
(iii) An object is used to utilize another object;
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23.4 When there is a ground (information, proof) to challenge the truthfulness
of information contained in an application, the NOIP may request the applicant
to supply documents certifying such information within one month from the date
of request notification, especially documents certifying the lawful right of
registration in case the applicant enjoys the filing right of another person
(certificate of inheritance right, certificate of or agreement on assignment of
the filing right; contract onjob assignment or labor contract, etc.); documents
disclosing the test results of a drug on humans or animals stated in the
description (when the object sought to be protected is a pharmaceutical for
humans, animals or plants).
23.5 Requirements for declaration
The applicant shall submit two copies of a written declaration made according
to a set form (not printed herein). In the section International patent
classification in the written declaration, the applicant shall state the
classification criteria of technical solutions sought to be protected according
to the latest International Patent Classification (under the Strasbourg
Agreement) published by the NOIP in the Industrial Property Official Gazette.
If the applicant fails to classify or correctly classify, the NOIP shall
conduct the classification and the applicant shall pay a classification service
charge as prescribed.
23.6 Requirements for invention description
The applicant shall submit two copies of an invention description. An
invention description must consist of the section of invention description and
the invention protection coverage.
a) The description section must completely disclose the nature of the
technical solution sought to be registered. It must contain sufficient
information based on which any person with average skill in the art can deduce
the solution. It must clarify the novelty, inventive steps and susceptibility
of industrial application of the technical solution (if the protection title
applied for is an invention patent); clarify the novelty and susceptibility of
industrial application of the technical solution (if the protection title
applied for is a utility solution patent).
Person with average skill in the art means a person who has ordinary
technical practice skills and is acquainted with publicly available general
knowledge in the art.
b) The description section must contain the following:
(i) Title of the invention, which briefly expresses the object or
objects sought to be registered (hereinafter collectively referred to as the
object). The title of the invention must be brief and must not be of a promoting
or advertising nature;
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(iii) Technical state of the use field of the invention: The technical
level in this field at the time of filing (known similar objects, if any;
(iv) Technical nature of the invention: The nature of the object, with
signs (characteristics) featuring the object as well as those considered novel
compared to those of known similar technical solutions clearly indicated;
(v) Brief description of accompanied drawings (if any);
(vi) Detailed description of invention realization variations;
(vii) Examples of invention realization;
(viii) Benefits (effects) expected to be achieved.
c) The invention protection coverage (hereinafter referred to as the
protection coverage or protection claim)
The protection coverage (claim) shall be used to determine the scope of
industrial property rights to inventions. The protection coverage (claim) must
be presented briefly and clearly in conformity with the description and
drawings, making clear signs of novelty of the object sought to be protected
(hereinafter referred to as the object), and comply with the following
regulations:
d) The protection coverage (claim) must be adequately demonstrated by
the description, including prerequisite and sufficient substantial technical
signs to identify the object, achieve the set objective and distinguish the
object from a known object.
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g) The protection coverage (claim) should not invoke the description and
drawings, except for invocation to parts that cannot be accurately described
with words, such as nucleotide sequences and amino acid sequences, diffraction
charts, workflow diagrams, etc....
h) If the application contains drawings illustrating the protection
claim, signs shown in the protection coverage (claim) may be accompanied with
indication numbers put in brackets. Those indication numbers are not considered
confining the protection coverage (claim).
i) The protection coverage (claim) should (is not required to) be
expressed in two sections: Restriction and Distinction. The section Restriction
covers the title of the object and signs of the object that are identical to
those of the latest known object and is connected to the section Distinction by
the phrase distinguishable by or characterized by or equivalent expressions.
The section Distinction covers signs that distinguish the object from the
latest known object and are combined with signs of the section Restriction to
constitute the object sought to be protected.
k) The protection coverage (claim) may include one or more than one
points. A multi-point protection coverage (claim) may be used to present an
object sought to be protected, with the first point (called independent point)
and subsequent point(s) used to concretize the independent point (called
dependent point(s)); or to present a group of objects sought to be protected,
with several independent points, each presenting an object sought to be
protected in the group. Such an independent point may have dependent point(s),
l) Points of the protection coverage (claim) must be numbered with Arabic
numerals, followed by a dot.
m) A multi-point protection coverage (claim) used to present a group of
objects must satisfy the following requirements: Independent points presenting
different objects must not invoke other points of the protection coverage
(claim), unless the invocation helps avoid total repetition of the content of
another point; dependent points must immediately follow the independent point
on which they are dependent..
23.7 Requirements for invention abstracts
An applicant shall submit two copies of an invention abstract. An
invention abstract is used to concisely describe (with no more than 150 words)
the nature of the invention. The abstract must disclose principal details of
the nature of the technical solution for the informatory purpose. The abstract
may contain typical drawings or formulas.
23.8 Additional provisions applicable to applications for registration
of inventions concerning biotechnologies
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b) The NOIP may request the applicant to submit electronic information
carriers (floppy disks, optical disks, etc.) readable by common electronic
devices on which nucleotide sequences and amino acid sequences identical to
those on the list of sequences in the description section are recorded.
c) Particularly, an invention for/concerning biological materials, which
can neither be described nor adequately described so that any person with
average knowledge of biotechnology can realize, shall be regarded as being
fully disclosed only if it satisfies the following conditions:
(i) The biological material sample is deposited at a competent
depositary office defined at Point 23.9 of this Circular no later than the
filing date;
(ii) The description section clearly discloses necessary information on
the characteristics of the biological material the applicant might obtain;
(iii) The written declaration clearly defines the biological material
depositary office, the identification number of the deposited biological
material granted by the depositary office, and documents certifying such
information shall be submitted to the NOIP within 16 months from the date of
priority or no later than the date of filing the request for early publication
of application (if any), whichever is earlier, except for the cases specified
at Point 23.9.d of this Circular.
d) If the applicant is not the depositor of the biological material, the
written declaration must clearly state the name and address of the depositor,
and documents certifying the lawful use of the biological material shall be
submitted to the NOIP within 16 months from the date of priority, or no later
than the date of filing the request for early publication of application (if
any), whichever is earlier, except for the cases specified at Point 23.9.d of
this Circular.
23.9 Deposit of samples of biological materials
a) The deposit of samples of biological materials aims to serve the
substantive examination of applications for registration of inventions
concerning those biological materials.
b) Samples of a biological material must be submitted to a competent
biological material depositary office no later than the date of filing the
application for registration of an invention concerning that biological
material.
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d) The deposit of samples of biological materials and certification
documents for international patent applications shall comply with the
provisions of the Patent Cooperation Treaty (PCT).
e) For samples of a biological material deposited at a foreign
depositary office, the NOIP may request the applicant to additionally deposit
samples of the biological material at a competent depositary office in Vietnam
when it finds it necessary to clarify the nature of the object sought to be
protected or to satisfy a third partys request for access to the object.
23.10 Additional provisions applicable to applications for registration
of inventions concerning pharmaceuticals.
Apart from the general requirements for an invention description
specified at Point 23.6 of this Circular, for an application for registration
of an invention concerning a pharmaceutical, the description section must state
the results of clinical trials and pharmaceutical effects of the
pharmaceutical, including at least the following information:
a Used substances/mixtures;
b) Employed trial method (system);
c) Trial results;
d) Correlation between the result of the pharmaceutical effects obtained
in the trials and the practical usage of the pharmaceutical in disease
prevention, diagnosis and treatment.
23.11 Additional provisions applicable to applications for registration
of inventions concerning gene source or traditional knowledge
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24. Formality examination and publication of
invention registration applications
The procedures for formality examination and publication of invention
registration applications shall comply with the general procedures specified at
Points 13 and 14 of this Circular.
25. Substantive examination of invention
registration applications
25.1 Request for substantive examination of an invention registration
application
a) The applicant or any third party may request the NOIP to conduct the
substantive examination of an invention registration application according to
the provisions ofArticle 113 of the Intellectual Property Law and the following
specific provisions:
(i) A request for substantive examination of an invention registration
application must be made in writing according to a set form (not printed
herein) and presented in the written declaration of the invention registration
application (if the requester is the applicant and such request is made upon
the filing of the application);
(ii) A request for substantive examination of an invention registration
application must be filed within 42 months from the date of priority if the
application contains a request for grant of an invention patent, or within 36
month from the date of priority if the application contains a request for grant
of a utility solution patent. The time limit for filing a request for
substantive examination may be prolonged for plausible reasons but must not
exceed 6 months;
(iii) A requester for substantive examination of an invention
registration application shall pay the prescribed search charge and substantive
examination charge. If a request for substantive examination is filed later
than the set time limit, the requester shall additionally pay a prolongation
fee according to the provisions of Point 20.4.b of this Circular. If the
substantive examination charge is not paid, the request for substantive
examination filed with the NOIP shall be considered invalid and the NOIP will
not conduct the substantive examination of the application .
b) A request for substantive examination of an invention registration
application filed after the application is published shall be published in the
Industrial Property Official Gazette in the second month after it is received.
If such a request is made by a third party, it shall be notified to the
applicant.
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c) In case no request for substantive examination is filed within the
time limit set at Point 25.1.a above, the application shall be regarded as
having been withdrawn upon the expiration of the said time limit.
25.2 Order for carrying out the procedures for substantive examination
The substantive examination of an invention registration application
shall be conducted according to the general order specified at Point 15 of this
Circular and specific provisions of this Point.
25.3 Assessment of compatibility of the object stated in the application
with the type of invention protection title
a) The object stated in an invention registration application shall be
considered incompatible with the type of invention protection title applied for
by the applicant (invention patent/utility solution patent) if it is not a
technical solution, particularly not a product or a process. The method of
identifying technical solutions is provided at Point 25.3.b below.
b) A technical solution an object to be protected as an invention - is a
collection of prerequisite and sufficient information on technical methods
and/or technical devices to accomplish a given task (solve a given problem.
A technical solution may take one of the following forms:
(i) A product in the form of a tangible object (tool, machine,
equipment, part, electric circuit, etc.) which is presented by a collection of
information identifying a man-made product, characterized by signs (features)
of its configuration, and functions (is utilized) as a device to meet a certain
human need; or a product in the form of a material (material, component, food,
pharmaceutical, etc.) which is presented by a collection of information
identifying a manmade product, characterized by signs (features) of its
presence, ratios and state of its elements, and functions (is utilized) as a
device to meet a certain human need; or a product in the form of a biological
material (gene, genetically modified plant/animal, etc.) which is presented by
a collection of information on a product containing genetic information
modified by human manipulations and capable of self-regeneration;
(ii) A process (technological process; diagnosing, forecasting, checking
or treating method) which is presented by a collection of information
identifying the method of performing a given process or job, characterized by
signs (features) of the order conditions, components methods and devices for
performing manipulations to achieve a certain objective.
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(i) It is merely an idea or a scheme that rather raises a question than
offers solution(s) to a problem, gives no answer to the question how and/or by
what means;
(ii) Problem (task) raised for solution is not a technical problem and
cannot be technically solved;
(iii) Natural products other than those created by humans.
25.4 Assessment of susceptibility of industrial application according to
the provisions of Article 62 of the Intellectual Property Law
a) A technical solution stated in an application shall be considered
susceptible of utilization if:
(i) information on the nature of the solution and instructions on
necessary technical conditions are presented so clearly and adequately that any
person with average knowledge in the art can create, produce, utilize, exploit
or realize that solution;
The concept person with average knowledge in the art is understood
according to the provisions of Point 23.6.a of this Circular;
(ii) The creation, production, utilization, exploitation or realization
of the above solution may be repeated with the same result identical to the
result stated in the invention description.
b A technical solution shall be considered unsusceptible of industrial
application in the following cases:
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(ii The object consists of elements or components which are not
technically interrelated or cannot be interlinked (through connections,
constraints, interdependence, etc.);
(iii) The object contains an inherent contradiction;
(iv) Instructions on the object can only be realized in a limited number
of times (unrepeatable);
(v) To be able to apply the solution, a person must have a special skill
which cannot be passed down or guided to others;
(vi) Results achieved at different times of realization are not the
same;
(vii) Achieved results are different from those stated in the
application;
(viii) The most important instructions to realize the solution are
totally absent or insufficient;
(ix) Other cases where there exist other justifiable reasons.
25.5 Assessment of novelty according to the provisions of Article 60 of
the Intellectual Property Law
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To assess the novelty of a technical solution stated in an application,
information search shall be conducted at least from (but not confined to) the
following mandatory sources:
(i) All invention registration applications received by the NOIP with
classification criteria the same as those of the object stated in the
application currently under examination - considering also division criteria
(third-class criteria), and having publication dates earlier than the filing
date or the date of priority of the application currently under examination;
(ii) Invention registration applications or invention protection titles
published by other organizations or countries within 25 years before the filing
date or the date of priority of the application currently under examination (if
that application enjoys priority) stored in the patent database of the NOIP and
other information sources defined by the NOIP, with the scope of search
specified at Point 25.5.a (i) above.
When necessary and possible, the search may be extended to scientific
presentations and reports on achievements of research programs and projects and
other documents in the same technical field published and stored at the
National Center for Scientific and Technological Information.
b) Purposes of the search
The purpose of the information search is to find a technical solution
with the nature similar or identical to that of the technical solution stated
in the application.
At this point:
(i) Two technical solutions are considered identical when all their substantial
signs (features) are identical or equivalent (interchangeable);
(ii) Two technical solutions are considered similar when most of their
substantial signs (features) are identical or equivalent (interchangeable);
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(iv) Control document means a document describing the control technical
solution or evidence proving that the control technical solution has been publicly
disclosed.
c) Search reports
Information search results must be shown in a search report which
clearly states the field and scope of search, and search results within that
scope (statistics on control technical solutions found, clear indication of identical
signs, titles of control documents, numbers of pages and lines, origins of and
dates of publication of those documents) and the full name of the report maker
(search person).
d) Method of assessing novelty of technical solutions
To assess the novelty of a technical solution stated in an application,
a comparison must be made between substantial signs (features) of that
technical solution and signs of a control technical solution found through the
information search, in which:
(i) Substantial signs of the technical solution may be its
characteristics in terms of function, utility, disposition, inter-connection,
composition, etc., which constitute, together with other substantial signs, a
prerequisite and sufficient combination to determine the nature (content) of
the object;
(ii) Substantial signs of the technical solution stated in the
application and protection titles are presented in the invention protection
coverage (claim;
(iii) Substantial signs of technical solutions stated in other documents
are expressed and noticed according to written descriptions or real forms of
expression of those technical solutions.
e) Conclusions on novelty of technical solutions
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(i) No control technical solution is found through the information
search; or
(ii) A control technical solution is found but the technical solution
stated in the application has at least one substantial sign not found in the
control technical solution (and such sign is called the distinctive substantial
sign).
25.6 Assessment of inventive steps according to Article 61 of the
Intellectual Property Law
a) Mandatory minimum information source
To assess inventive steps of a technical solution, information search
must be condijcted at least from (but not confined to) the mandatory source
defined at Point 25.5.a of this Circular.
b) Assessment of inventive steps
The assessment of inventive steps of a technical solution stated in an
application shall be conducted through assessing distinctive substantial
sign(s) stated in the protection coverage (claim) before concluding:
(i) Whether or not distinctive substantial sign(s) is/are regarded as
having been disclosed in the mandatory minimum information source, and;
(ii) Whether or not the combination of distinctive substantial signs is
considered obvious to a person with average knowledge in the art.
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c) In the following cases (but not only in those cases), corresponding
to a point of the protection coverage, a technical solution shall be regarded
as having no inventive step:
(i) The combination of distinctive substantial signs is obvious (any
person with average knowledge in the art knows that to perform a given function
or to achieve a set objective, it is a must to use that combination of signs
and once that combination of signs is used the set objective can necessarily be
achieved or the given function performed);
(ii) The combination of distinctive substantial signs has been disclosed
in the same or similar form in one/several known technical solutions in the
mandatory minimum information source;
(iii) The technical solution is a simple combination of known technical
solutions and its function, objective and effect are also simple combinations
of those of known technical solutions.
d) At this point:
(i) Two signs shall be considered the same if they have the same nature;
(ii) Two signs shall be considered equivalent if they have similar
natures, the same objective and basically similar ways to achieve the
objective.
25.7 Inspection of observance of the first-to- file rule defined in
Article 90 of the Intellectual Property Law
Before issuing a decision on the grant of a protection title, the NOIP
shall inspect the observance of the first-to-file rule for invention
registration applications already substantively examined and concluded as
having satisfied the protection conditions according to the following
provisions:
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To inspect the observance of the first-to-file rule, the information
search must be conducted at least from (but not confined to) the following
mandatory sources
All invention registration applications received by the NOIP (up to the
date of inspection) with classification criteria the same as those of the
object stated in the application currently under examination - taking into account
the division criteria (third-class criteria) and with filing dates or dates of
priority earlier than the filing date or date of priority of the application
currently under examination (if that application enjoys priority) and not yet
published, or with filing dates or dates of priority later than the filing date
or date of priority of the application currently under examination (if that
application enjoys priority);
b) The purpose of the search is to find application(s) for registration
of the same invention and identify the application with the earliest filing
date or date of priority;
c) Ifthere are many applications for registration of the same invention,
the protection title shall only be granted for the valid application with the
earliest date of priority or filing date among applications satisfying the
conditions for grant of protection title;
d) If there are many applications for registration of the same invention
satisfying the conditions for the grant of a protection title and having the
same date of priority or earliest filing date, the protection title may only be
granted for only one application among those applications as agreed upon by all
applicants. If no agreement is reached, all applications shall be refused;
e) If an invention registration applicant makes a claim for priority on
the basis of an initial application for registration of the same invention
already filed in Vietnam, the protection title may only be granted for the
accepted invention registration application containing a claim for priority
while the initial application filed in Vietnam shall be considered withdrawn.
25.8 Notification of substantive examination results
The notification of results of substantive examination of invention
registration applications shall be carried out according to the general
procedures specified at Point 15.7.a of this Circular.
26. Grant, registration and publication of
invention patents, utility solution patents
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27. Processing of international patent
applications
27.1 Application-receiving agency
The agency competent to receive international patent applications in
Vietnam is the NOIP.
The NOIP shall:
a) Receive international applications originating in Vietnam;
b) Collect the fee for sending international applications and notify applicants
of the prescribed fees to be paid to the International Bureau and the
International Search Office under the Patent Cooperation Treaty - PCT
(hereinafter referred to as the Treaty);
c) Check whether or not the fees are paid on time;
d) Check and process international applications originating in Vietnam
under the Treaty;
e) Identify objects sought to be protected: If objects sought to be
protected of applications are classified as national secrets, next steps shall
not be performed and paid fees shall be refunded to applicants, except for the
fees for sending and copying international applications;
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h) Send and receive mails to/from applicants and the International
Bureaus.
27.2 Languages
International applications originating in Vietnam and filed to the NOIP
must be in English. An application shall be made in three copies.
For applications with insufficient copies, the NOIP shall make
additional copies and applicants shall pay the copying fee.
27.3 International search offices and international preliminary
examination offices
For international applications originating in Vietnam, competent
international search offices and international preliminary examination offices
are patent offices, industrial property or intellectual property offices of
Australia, Austria, the Russian Federation, Sweden, the Republic of Korea and
the European Patent Office.
27.4 International applications designating Vietnam
a) If an international application designates Vietnam, the NOIP is the
designated office. In this case, in order to enter the national phase, the
applicant shall submit, within 31 months from the date of priority, to the NOIP
the following:
(i) Written declaration requesting invention registration, made
according to a set form (not printed herein;
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(iii) Vietnamese translation of the international application: The
description, consisting of a description section, protection request, annotations
for drawings and abstract (the published copy or initially filed original
application, if the application has not yet been published, and modified copy
and explanation of modified contents, if the international application has been
modified underArticle 19 of the Treaty);
(iv) National charges and fees.
b) International applications filed with the NOIP within six months
after the expiration of the time limit specified at Point 27.4.a above may be
accepted on the condition that applicants pay the prescribed charges and fees.
27.5 International applications electing Vietnam
a) If an international application elects Vietnam, the NOIP is the
elected office. In this case, if the election of Vietnam is made within 19
months from the date of priority, in order to enter the national phase, the
applicant shall submit, within 31 months from the date of priority, to the NOIP
the following documents:
(i) Written declaration requesting invention registration, made
according to a set form (not printed herein;
(ii) Vietnamese translation of the international application: The
description, consisting of a description section, protection request,
annotations for drawings and abstract (the published copy or initially filed
original application, if the application has not yet been published, and
modified copy and explanation of modified contents, if the international
application has been modified under Article 19 and/or Article 34(2)(b) of the
Treaty);
(iii) Vietnamese translations of annexes to the international preliminary
examination report (when substantive examination of the application is
requested);
(iv) National charges and fees.
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27.6 Claims for priority
To enjoy the priority, an applicant shall reaffirm it in the written
declaration, pay the charge for priority claim and submit, upon the NOIPs
request, Vietnamese translations of necessary documents already submitted to
the International Bureau as defined in Rule 17.1(a) of the Regulation on
implementation of the Treaty.
For PCT applications, the handling of claims for priority shall comply
with the Treaty and the Regulation on implementation of the Treaty.
27.7 Processing of international applications in the national phase
a) Amendment and supplementation of documents in the national phase
In compliance with Rule 5 ibis of the Regulation implementation of the
Treaty, an applicant shall submit the power of attorney and the paper on
assignment of the right to file an application in the national phase (if any)
within 34 months from the date of priority.
In compliance with Articles 28 and 41 of the Treaty and Rules 52.1(b)
and 78.1(b) of the Regulation on implementation of the Treaty, an applicant may
amend and supplement documents of the application in the national phase. Right
at the time of entry into the national phase, the applicant may also amend and
supplement the description. The above amendment and supplementation shall
comply with the provisions of Article 17 of this Circular.
Amended and supplemented documents submitted by the applicant to the
NOIP must be in Vietnamese..
b) Time of beginning of the national phase
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c) Examination of international applications
After entering the national phase, an international application shall be
put to formality examination and substantive examination according to the
procedures applicable to ordinary invention registration applications. If the
applicant requests in writing earlier examination of his/her application and
pay the prescribed charge, the international application shall be examined
earlier than the time limit specified at Point 27.7.b above in accordance with
the provisions of Article 2 3(2) of the Treaty.
d) International applications considered withdrawn
In addition to the cases where an international application is
considered withdrawn specified in the Treaty and the Regulation on
implementation of the Treaty, an international application designating or
electing Vietnam shall be considered withdrawn if the national fees are not
paid to the NO1P or there is no Vietnamese translation upon the expiration of
the set time limit.
27.8 International registration charges and fees
a) Applicants whose international applications enter the national phase
shall pay the prescribed charges and fees for invention registration
applications directly filed in Vietnam.
b) Applicants whose international applications originate from Vietnam
shall pay the charges and fees prescribed by the Regulation on implementation
of the Treaty and the Ministry of Finances Circular guiding the collection,
remittance, management and use of industrial property charges and fees.
Section 3.
PROCEDURES FOR REGISTRATION OF LAYOUT DESIGNS
28. Requirements for layout design registration
applications
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28.2 Documents, specimens and information presenting a layout design
defined at Point 7.l.a (ii) of this Circular include:
a) Four sets of photos or four sets of drawings of the layout design;
b) Four specimens of the integrated circuit manufactured under the
layout design, if that layout design has been commercially exploited;
c) Description of the integrated circuit manufactured under the layout
design, including information disclosing the nature of the layout design.
28.3 An application must ensure uniformity according to the provisions
of Clause 1, Article 101 of the Intellectual Property Law, i.e., it requests
protection of only one layout design of an integrated circuit.
28.4 When having grounds (information, proofs) to doubt the truthfulness
of information in an application, the NOIP may request the applicant to submit
within one month documents certifying such information, especially documents
certifying the lawful right of registration, in case the applicant enjoys the
right to file from another person (certificate of inheritance right,
certificate or agreement on assignment of the right to file; contract on
assignment ofjobs or labor contract, etc...);
28.5 Requirements for written declarations
An applicant shall submit two copies of a written declaration, made
according to a set form (not printed herein).
28.6 Requirements for sets of photos and drawings of layout designs
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For the above purpose, a set of photos! drawings of a layout design must
satisfy the conditions specified at Points 28.6.b, c and d below.
b) Types of document:
A set of photos/drawings of a layout design must include at least one of
the following three types of document:
(i) Automated drawings of the layout design for each integrated circuit
layer;
(ii) Drawings or photos of photolithographic mask for the fabrication of
each integrated circuit layer;
(iii) Photos of each layout design layer incorporated in the integrated
circuit;
c) Form of documents: A set of photos! drawings of a layout design must
be submitted in the paper form and may be annexed by carriers of the electronic
data of part of or the entire set of photos/drawings.
d) Presentation of documents
(i) A set of photos/drawings of a layout design must include (a
combination of) separate photos! drawings for each layout design layer,
annotated by the symbol of each layer, dimensions of the integrated circuit and
the magnification;
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(iii) Each photo/drawing of a layout design may be presented on anA4
paper sheet or a paper sheet of a larger size folded down to A4 size;
(iv) Photos/drawings of a layout design must be clear and well defined.
28.7 Requirements for specimens of integrated circuits manufactured
under layout designs
a) A specimen to be submitted must be part of or the entire integrated
circuit totally compatible with the layout design stated in the application. If
an integrated circuit manufactured under a layout design constitutes an
integral part of another product, such product shall be submitted together with
a document precisely indicating the section of the integrated circi.iit
manufactured under that layout design
b) For a layout design that is commercially exported anywhere in the
world before the filing date, the applicant shall submit the commercially
exploited specimen.
28.8 Requirements for descriptions of semiconductor integrated circuits
manufactured under layout designs
B A description must contain the following detailed information on a
semi-conductor integrated circuit manufactured under a layout design sought to
be protected:
a) Appellationlsign: A combination of letters andlor numerals used to distinguish
an integrated circuit from another when being circulated in the market;
b) Description of basic functions of the integrated circuit (for
example: memory or logic function or other functions);
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d) Description of the technology for manufacture of the integrated
circuit (for example: TTL or DTL or ECL or ITL or CMOS or NMOS or PMOS
technology or other technologies);
e) Description of main features to distinguish the integrated circuit
from other integrated circuits on the market at the time of filing the
application or the time of first commercial exploitation in the world,
whichever is earlier.
29. Confidentiality of information in layout
design registration applications
An applicant may file a written request for information confidentiality
together with a layout design registration application according to the
following provisions:
29.1 Permitted maximum degree of confidentiality:
a) For a layout design not yet commercially exploited: 50% of each
layers surface;
b) For a commercially exploited layout design: two layers in each group
of five layers in a top- down hierarchy.
29.2 To enjoy information confidentiality, an applicant shall file a
written request for information confidentiality made under the NOIPs guidance
and indicating documents and materials containing confidential information.
29.3 Documents containing confidential information must be put in
separate packs and may be submitted in the following forms:
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b) Electronic data;
c) Drawings or photos containing invisible sections, provided that
features of the layout designs are basically visible.
29.4 The NOIP is obliged to keep confidential information upon the
request of applicants in accordance with the provisions of Point 29.1 of this
Circular.
30. Formality examination of layout design
registration applications
30.1 The procedures for formality examination of layout design
registration applications shall comply with the general provisions of Points
13.1, 13.2, 13.3, 13.4 and 13.8 of this Circular and specific procedures
applicable to layout design registration applications specified at this Point.
30.2 Notification of results of formality examination
a) If an application falls into one of the cases specified at Point 13.2
of this Circular or still contains errors defined at Point 13.3 of this
Circular, the NOIP shall carry out the procedures specified at Point l3.6.a of
this Circular.
b) For a valid application, the NOIP shall send to the applicant a
notice on acceptance of valid application, clearly stating the name and address
of the applicant, the name of the representative (if any) and information on
the object stated in the application, the filing date, and concurrently
declaring that the object stated in the application may be granted a
certificate of registered layout design if no reasonable opposition is made by
a third party to the registration of that layout design within three months
after the layout design is published in the Industrial Property Official
Gazette.
30.3 Refusal to accept applications
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31. Publication of layout design registration
applications
31.1 A layout design registration application accepted as valid shall be
published according to the general procedures specified at Point 14 of this
Circular and this Point.
31.2 Access to detailed information on valid layout design registration
applications
a) After a layout design registration application is published in the Industrial
Property Official Gazette, any person may access detailed information on the
nature of the kyout design stated in the published application, except for
information kept confidential according to the provisions of Article 29 of this
Circular.
b) Only the agency competent to carry out procedures for invalidation of
protection titles or procedures for administrative handling of infringements of
rights to layout designs can access confidential information on layout designs.
32. Grant, registration and publication of
decisions on grant of certificates of registered layout designs
32.1 Notification of intended grant of certificates of registered layout
designs
If no opposition is made by a third party to the registration of a layout
design within three months after the layout design is published in the
Industrial Property Official Gazette or though an opposition is made, it is
later proved unreasonable through handling, the NOIP shall notify its intended
grant of a certificate of registered layout design for the object stated in the
application. The time limit for the applicant to pay the fees for publication,
registration and grant of a protection title is one month from the date of
notification.
32.2 Grant, registration and publication of decisions on grant of
certificates of registered layout designs
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32.3 Refusal to grant certificates of registered layout designs
If an opposition is made by a third party to the grant of a certificate
of registered layout design within three months after the layout design is
published in the Industrial Property Official Gazette and that opposition is
proved reasonable, the NOIP shall carry out procedures for refusal to grant a
certificate of registered layout design according to the general procedures
specified at Point 18.1 of this Circular.
Section 4.
PROCEDURES FOR REGISTRATION OF INDUSTRIAL DESIGNS
33. Requirements for industrial design
registration applications
33.1 Industrial design registration applications must satisfy the
general requirements specified at Points 7 and 10.1 of this Circular and the specific
requirements specified at this Point.
33.2 Industrial design registration applications must ensure uniformity
according to the provisions of Clauses 1 and 3, Article 101 of the Intellectual
Property Law and the following provisions.
An industrial design registration application is considered uniform if:
a) It requests protection of an industrial design of a product; or
b) It requests protection of industrial designs of more than one
products in a set of products, of which each product has its own industrial
design;or
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33.3 Requests for information supply
a) When there is a ground (information, proof) to doubt the truthfulness
of information in an industrial design registration application, the NOIP may
request the applicant to submit within one month documents certifying such
information, especially documents certifying the lawful right of registration
in case the applicant enjoys the right to file from another person (certificate
of inheritance right, certificate or written agreement on assignment of the
right to file; contract onjob assignment or labor contract, etc);
b) The NOIP may also request the applicant to submit within one month
documents certifying the lawful ownership or the lawful right to use trade
indications (marks, geographical indications or trade names), protected
industrial designs of other persons, if it has a ground to doubt that the
industrial design stated in the application contains those objects.
33.4 Requirements for written declarations
An applicant shall submit two copies of a written declaration made
according to a set form (not printed herein). Apart from sections that need to
be filled in, the written declaration must state the criteria for
classification of the industrial design sought to be protected in accordance
with the International Industrial Design Classification (under the Locarno
Agreement). If the applicant fails to classify or inaccurately classifies the
industrial design, the NOIP shall carry out the classification for which the
applicant shall pay a charge as prescribed.
33.5 Requirements for industrial design descriptions
An applicant shall submit one copy of the industrial design description
that contains the following contents:
a) Name of the industrial design, which is the name of the product
imbued with the industrial design, expressed in common words and phrases, not
of the advertising nature, does not contain symbols, annotations and trade
indications;
b) Field in which the industrial design is used, which is a specific
field in which the product imbued with the industrial design is used, clearly
stating the use purpose of the product;
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d) List of photos or drawings, which enumerates photos,
three-dimensional drawings, shadows, cross-sections, etc., of the industrial
design one after another according to the ordinal numbers of those photos or
drawings;
e) The section of description of the industrial design must satisfy the
following provisions:
(i) It fully discloses the nature of the industrial design sought to be
protected, adequately showing design features presenting the nature of the
industrial design as well as new design features that are distinguishable from
the most similar industrial design defined at Point 33.5.c above and consistent
with those shown in the set of photos or drawings;
(ii) Design features of the industrial design sought to be protected
must be presented one after another in the following order: Configuration and
line features, correlation between configuration and/or line features, color
features (if any);
(iii) For a product that have different usages (for example: a product
with cover or foldable), its industrial design must be described in different
states;
(iv) If an industrial design consists of many variations, distinctive
characteristics of the basic variation (the first variation stated in the
application) in comparison with those of remaining variations must be clearly
indicated);
(v) If an industrial design is the design of a set of products, the
design of each product in the set must be described.
g) Coverage of protection (or claim for protection) of the industrial
design must fully enumerate prerequisite and sufficient design features to
identify the nature of the industrial design sought to be protected and the
scope of industrial property rights to the industrial design, shown on photos
or drawings stated in the application, and including new and distinctive design
features as compared with known similar industrial designs.
33.6 Requirements for sets of photos or drawings of industrial designs
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a) Photos or drawings must be clear and well defined; drawings must be
presented with unbroken lines; the background of a photo or drawing must be
monochrome and contrast with the industrial design; a photo or drawing must
show only the product imbued with the industrial design sought to be protected
(not accompanied with another product).
b) Photos or drawings must show the industrial design on the same scale.
The size of the industrial design shown in photos or drawings must neither be
smaller than 90 mm x 120 mm nor larger than 190 mm x 277 mm.
c) Photos and drawings must show the industrial design viewed in the
same direction and in the following order: three-dimensional picture of the
industrial design, front, rear, right-side- left- side, top-down and down-top
shadows of the industrial design; shown shadows must be frontispieces.
d) For an industrial design with symmetrical shadows, its photos or
drawings are not required to show more symmetrical shadows, provided that such
is clearly stated in the list of photos and drawings in the description.
e) For the industrial design of an expandable product (for instance:
box, package), shadows of the industrial design may be replaced with photos or
drawings of the industrial design in an expanded state.
g) Depending on the complexity of an industrial design, more photos or
three-dimensional drawings from other angles, cross-sections or magnified
pictures of parts, pictures of knocked down components of the product, etc.,
may be required to clearly show new and distinctive design features of the
industrial design sought to be protected.
h) For a product that have different usages (for example: a product with
cover or foldable), there must be photos or drawings of its industrial design
in different states.
i) For the industrial design of a part of a complete product, there must
be more photos or drawings illustrating the position for fitting or use of such
part on the complete product.
k) For each variation of the industrial design, there must be a set of
photos or drawings fully presenting it according to the provisions of this
Point.
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33.7 Design features of industrial designs
a) Design features of an industrial design are elements presented in the
form of lines, configurations, colors, position or size correlation, which
constitute, in combination with other features (signs), a gathering necessary
and sufficient for the formation of that industrial design.
b) The following elements are not regarded as design features of an
industrial design:
(i) Configurations and lines dictated by the technical functions of the
product (for example: the flat shape of data-recording disks is dictated by the
relative motion between disks and reading heads...);
(ii) Elements whose presence in the combination of signs gives no
aesthetic impression (impression of the shape of the product remains unchanged
with or without those elements; for example: if a change in a familiar
configuration or line is not impressive enough to be noticed, the changed
configuration or line will therefore be taken as old one);
(iii) Materials used for manufacture of the product;
(iv) Signs affixed or stuck on the product merely for the purpose of
informing or guiding the origin, features, composition, utility and usage of
the product, for example: words in a goods label;
(v) Size of the product, except for change of size of patterns of a
fabric sample or similar materials.
c) Substantial and insubstantial design features
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Any design features that fail to satisfy the above condition are
referred to as insubstantial design features.
34. Formality examination and publication of
industrial design registration applications
Procedures for formality examination and publication of industrial
design registration applications shall comply with the general procedures
specified at Points 13 and 14 of this Circular.
35. Substantive examination of industrial design
registration applications
35.1 Assessment of similarity of industrial designs:
a) Two industrial designs are considered identical when they are used
for the same type of product and have the same gathering of substantial and
insubstantial design features;
b) Two industrial designs are considered similar when they are used for
the same type of product and have several identical substantial design
features;
c) Two industrial designs are considered most similar when the number of
their identical substantial design features is larger than that of all other
similar industrial designs.
35.2 Order for carrying out procedures for substantive examination of
industrial design registration applications
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35.3 Assessment of compatibility of objects stated in applications with
the type of industrial design protection title
An object stated in an application shall be considered incompatible with
the type of industrial design protection title when:
a) The object is not the appearance of a product;
b) The object stated in the application is:
(i) A products appearance dictated by its technical characteristics;
(ii) A civil or industrial construction works appearance;
(iii) Interior design (invisible part) of a product in use (exploitation
of a products utility by ordinary methods and by any consumei excluding its
maintenance, preservation or repair).
35.4 Information search
a) Purpose of information search
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b) The mandatory minimum information source used in the substantive
examination of an application consists of the following documents:
(i) Industrial design registration applications already received by the
NOIP and having dates of publications earlier than the filing date or date of
priority of the examined application (if it enjoys priority);
(ii) Industrial design registration applications and industrial design
protection titles published by other organizations or countries within 25 years
before the filing date or date of priority of the examined application (if it
enjoys priority), which are archived in the NOIPs database on existing
industrial designs;
(iii) Other information related to industrial designs collected and
archived by the NOIP;
(iv) Industrial design registration applications received by the NOIP
and having filing dates or dates of priority (if they enjoy priority) earlier
than the filing date or date of priority of the examined application (used to
inspect the observance of the first-to-file rule specified at Point 35.9 of
this Circular).
c) When necessary and possible, the search may be expanded beyond the
mandatory minimum information source.
35.5 Search reports
Search results shall be presented in a search report that clearly states
the searched field, search scope, search results within that scope (statistics
on and clear indication of control industrial designs found, information
sources and date of publication of information) and the full name of the report
maker (search person).
At this point, a control industrial design means an industrial design
identical or similar to the industrial design stated in the application and
compared with the latter upon assessment of novelty and creativity.
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a) The industrial design stated in the application shall be considered
susceptible of industrial application if any person with average knowledge in
the art can, based on information on the industrial design supplied in the
application, use that industrial design as a model to manufacture by an
industrial or manual method a product with an appearance identical to that
industrial design.
The concept any person with average knowledge in the art is understood
according to the relevant provisions of Point 23.6.a of this Circular.
b) In the following cases, the object stated in the application shall be
considered insusceptible of industrial application:
(i) It is the shape of a product with an unfixed state of existence (products
in gaseous or liquid form);
(ii) A product whose shape identical to the object stated in the
application can only be created with special skills or it is impossible to
repeatedly manufacture a product whose shape identical to the object stated in
the application;
(iii) Cases where there exist other justifiable reasons.
35.7 Assessment of novelty of industrial designs according to the
provisions of Article 65 of the Intellectual Property Law .
a) Method of assessment of novelty of industrial designs
To assess the novelty of an industrial design stated in an application,
it is necessary to compare the gathering of substantial design features of that
industrial design with that of an identical/the most similar industrial design
used as a control industrial design found through the information search.
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The industrial design stated in an application shall be considered novel
if:
(i) No control industrial design is found in the mandatory minimum information
source; or
(ii) Though a control industrial design is found in the mandatory
minimum information source but the industrial design stated in the application
has at least one substantial design feature not found in (not belonging to) the
gathering of substantial design features of the control industrial design; or
(iii) The control industrial design is the very industrial design stated
in the application published/disclosed in the cases specified in Clauses 3 and
4, Article 65 of the Intellectual Property Law.
35.8 Assessment of creativity of industrial designs according to the
provisions of Article 66 of the Intellectual Property Law
a) Method of assessment of creativity of industrial designs
To assess the creativity of an industrial design stated in an
application, it is necessary to compare the gathering of substantial design
features of that industrial design with that of each identical or similar
control industrial design found through the information search.
b) Conclusion on creativity of industrial designs
In the following cases, the industrial design stated in an application
shall be considered non- creative:
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(ii) It is a reproductionlimitation of part of or the whole inherent
natural shape of a tree, fruit or animal, shapes of geometric figures (round,
ellipse, triangle, square, rectangular, regular polygons and prisms,
cross-sections of which are foregoing figures), which are widely known;
(iii) It is a simple reproduction of the shape of a product or work well
known or publicly known in Vietnam or worldwide;
(iv) It is an imitation of an industrial design in another field, if
such an imitation is widely known in reality (for example: toys imitating cars,
motorcycles, etc...).
If not falling into the above cases, an industrial design is considered
creative.
35.9 Inspection of the first-to-file rule according to the provisions of
Article 90 of the Intellectual Property Law
a) To inspect the first-to-file rule, it is necessary to search
information from the mandatory source defined at Point 35.4.b (iv) of this
Circular.
b) The industrial design stated in the application shall be considered
satisfying the first- to-file rule if no identical or substantially
indistinguishable industrial design is found in applications that have
satisfied the conditions for grant of industrial design patents found through
information search.
c) The industrial design of a component of a product stated in the
application shall also be considered satisfying the first-to-file rule if no
identical or substantially indistinguishable industrial design of a component
of a product and! or a product is found in applications that have satisfied the
conditions for grant of industrial design patents found through information
search .
d) When different applications for registration of identical or
substantially indistinguishable industrial designs satisfy the conditions for
grant of industrial design patents and have the same date of priority or the
earliest filing date, the industrial design stated in the application is still
considered satisfying the first-to-file rule defined in Clause 2, Article 90 of
the Intellectual Property Law if all applicants reach an agreement on
designation of the applicant in only one application among those applications
to be granted an industrial design patent.
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The notification of results of substantive examination of industrial
design registration applications shall comply with the general provisions of
Point 15.7.a of this Circular.
36. Grant, registration and publication of industrial
design patents
Procedures for issuance of decisions on grant, registration and
publication of decisions on grant of industrial design patents shall comply
with the general procedures specified in Points 18 and 19 of this Circular.
Section 5.
PROCEDURES FOR REGISTRATION OF MARKS
37. Requirements for mark
registration applications
37.1 Mark registration applications must satisfy the general
requirements on application documents specified at Points 7 and 10.1 of this
Circular and the specific requirements at this Point.
37.2 Applications must ensure uniformity defined in Clauses 1 and 4,
Article 101 of the Intellectual Property Law. Each application may request
registration of a mark used for one or more than one goods or services.
37.3 If doubting about the truthfulness of information supplied in an
application, the NOIP may request the applicant to submit within one month the
following documents in order to certify such information:
a) Documents evidencing the status of the applicant:
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(ii) Agreement on or written certification that a manufacturer does not
use the mark and does not oppose the mark registration by a person conducting
commercial activities for the manufacturers product according to the provisions
of Clause 2, Article 87 of the Intellectual Property Law;
(iii) Establishment decision or license, or organization charter
certifying the function and competence to manage a collective mark or a mark of
certification of the quality or geographical origin of goods or services
according to the provisions of Clauses 3 and 4, Article 87 of the Intellectual
Property Law;
(iv) Agreement, business registration certificate or documents related
to the mark registration by co-proprietors according to the provisions of
Clause 5, Article 87 of the Intellectual Property Law;
(v) TDocuments certifying that the applicant enjoys the right of mark
registration from another person according to the provisions of Clause 6,
Article 87 of the Intellectual Property Law;
(vi) Written agreement or consent of the mark proprietor certifying the
right of mark registration in the name of a representative or agent according
to the provisions of Clause 7, Article 87 of the Intellectual Property Law and
Article 6septies of the Paris Convention for the Protection of Industrial
Property Rights.
b) Documents evidencing the status of the application owners
representative: the applicants original power of attorney; documents certifying
that the application owners representative is the representative at law of the
organization registering the mark or hisiher mandated person; papers certifying
that the applicants mandated person satisfies the requirements for acting as
the application owners representative according to the provisions of Point 3 of
this Circular.
c) Documents evidencing the right to usei register a mark containing
special symbols, for:
(i) Names, emblems, flags or armorial bearings of domestic or
international agencies and organizations or certification, control or warranty
hallmarks of international organizations as defined in Clauses 2 and 4, Article
73 of the Intellectual Property Law;
(ii) Names of characters or figures in publicly known works under
copyright protection or trade names, trade indications, origin indications,
prizes, medals or particular signs of a type of product, which may cause
confusion, as defined in Clause 5, Article 73 of the Intellectual Property Law;
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d) Documents evidencing the right of priority;
e) Information necessary for verification or affirmation of contents
specified in the regulation on use of a collective mark or a certification mark
or in other documents of the application.
37.4 Requirements for written declarations
An applicant shall submit two written declarations, made according to a
set form (not printed herein), with the following attentions:
a) The section of mark description in the application must clearly
indicate the type of mark sought to be registered (common mark, collective
mark, association mark, certification mark);
b) If the mark sought to be registered is an association mark, the
applicant shall clearly indicate associated elements being marks or goods or
services according to the following provisions:
(i) If associated elements are marks (similar to another mark of the
very applicant used for the same goods or service or used for similar goods or
services), the applicant shall clearly indicate a mark considered substantial among
those association marks (if any). If one or several of those marks have been
registered or stated in the previously filed applications, the applicant shall
clearly indicate the serial numbers of the protection titles and the previously
filed applications;
(ii) If associated elements are goods or services (a mark used for
similar or interrelated goods or services), the applicant shall clearly
indicate a goods or service considered substantial among those goods or
services (if any). If one of those goods or services has been previously
registered or stated in a previously filed application, the applicant shall
clearly indicate the serial numbers of the protection title and previously
filed application;
(iii) If the applicant fails to clearly indicate a substantial mark or a
substantial goods or service, then all marks and all goods or services related
to the mark stated in his/her application shall be considered independent from
one another. The assessment of distinctiveness of the mark stated in the application
may not exceptionally apply to association marks defined at Point e, Clause 2,
Article 74 of the Intellectual Property Law, but must comply with general
provisions on assessment of distinctiveness of Point 39 of this Circular.
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d) The declaration must contain the mark specimen and a written
description of the mark according to the following provisions:
(i) If the mark consists of many elements, those elements and their
combinations must be clearly indicated. If the mark contains configuration
elements, contents and significance of those elements must be clearly defined;
(ii) If the protection is claimed for a colored mark, such a claim must
be clearly stated and colors on the mark must be named;
(iii) If the mark contains letters, words or expressions in languages
other than Vietnamese, their pronunciations (transliterated into Vietnamese)
must be clearly annotated and their meanings (if any) must be translated into
Vietnamese;
(iv) If the mark contains numerals other than Arabic and Roman numerals,
those numerals must be transliterated into Arabic numerals.
e) The section List of goods and services bearing the mark in the
written declaration must be divided into groups in accordance with the
International Classification of Goods and Services under the Nice Agreement
published by the NOIP in the Industrial Property Official Gazette.
37.5 Requirements for mark specimens
In addition to the mark specimen attached to the written declaration,
the application must be enclosed with 9 identical mark specimens that satisfy
the following requirements:
a) A mark specimen must be clearly presented with the dimensions of each
element of the mark ranging between 8 mm and 80 mm, and the entire mark must be
presented within a mark model of 80 mm x 80 mm in size in the written
declaration;
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c) For a mark involving a claim for protection of colors, the mark
specimen must be presented with the very colors sought to be protected. If the
protection of colors is not claimed, the mark specimen must be in black and
white.
37.6 Requirements for regulations on use of collective marks and
certification marks
A regulation on use of a collective mark and a regulation on use of a
certification mark must have relevant contents specified in Clauses 4 and 5,
Article 105 of the Intellectual Property Law and clarify the following matters:
a) Brief information on the mark, the mark proprietor and goods and
services bearing the mark;
b) Conditions for the mark registrant to license the mark and conditions
for termination of the right to use the mark;
c) Obligations of the mark user (assuring the particular quality and
characteristics of a goods or service bearing the mark, submitting to the
control of the mark registrant, paying the mark management charge, etc.);
d) Rights of the mark registrant (controlling compliance with the
regulation on use of the mark, collecting the mark management charge,
suspending the mark use right of a person who fails to satisfj the conditions
specified in the mark use regulation, etc).
e) Mechanism of licensing, control and inspection of use of the mark and
assurance of the quality and reputation of goods and services bearing the mark;
g) Dispute settlement mechanism.
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a) For a mark certifying a geographical origin, in addition to the mark
use regulation and necessary documents evidencing the right of mark
registration, the application must also be enclosed with the local
administrations permission for the applicant to register a certification mark containing
signs indicating a geographical origin (geographical name, symbol or map of the
area or locality) for goods and services bearing the mark.
b) If the area or locality bearing the geographical origin indication
cannot be identified based on the administrative boundaries and the local
administrations permission mentioned at Point 37.7 above, the NOIP shall
request the applicant to supply a geographical map clearly indicating the area
or locality bearing the geographical origin indication of goods and services
with the concerned local administrations certification.
38. Formality examination and publication of mark
registration applications
Procedures for formality examination and publication of mark
registration applications shall comply with the general procedures specified at
Points 13 and 14 of this Circular.
39. Substantive examination of mark registration
applications
39.1 The NOIP shall conduct the substantive examination of valid
applications according to the general order specified at Point 15 of this
Circular and specific provisions of this Point.
39.2 Assessment of conformity of objects stated in mark registration
applications with requests for grant of certificates of registered marks
a) According to the provisions of Clause 1, Article 72 of the
Intellectual Property Law, signs eligible for being registered as marks must be
visible ones in the form of letters, numerals, words, pictures, images,
including three- dimensional images or their combinations, presented in one or
several given colors.
b) The following types of sign shall not be protected as marks:
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(ii) Signs pertaining to objects not protectable as marks according to
the provisions of Article 73 of the Intellectual Property Law;
(iii) Signs that are contrary to the public order or prejudicial to
national security.
39.3 Assessment of distinctiveness of signs in the form of letters or
numerals (hereinafter referred to as character signs) according to the
provisions of Clause 2, Article 74 of the Intellectual Property Law.
Except for the exceptions specified at Point 39.5 of this Circular, the
following character signs shall be considered indistinctive:
a) Characters of languages that are imperceptible and unmemorable to the
common knowledge of Vietnamese consumers (unreadable, incomprehensible and
unmemorable), such as characters not of Latin origin: Arabic, Slavonic,
Sanskrit, Chinese, Japanese, Korean or Thai characters, etc.; except when
characters of these languages combine with other components to formulate a
distinctive whole or are presented in a graphic form or other special forms
b) A Latin-origin character that consists of only one letter or consists
of numerals only, or consists of two letters which cannot be pronounced as a
word, even if it is accompanied with numerals, except when it is presented in a
graphic form or other special forms;
c) A combination of too many letters or words that is imperceptible and
unmemorable, such as a sequence of too many characters not arranged according
to a given order or rule, or a text or a paragraph;
d) A Latin-origin character that is a meaningful word, the meaning of
which has been so frequently and widely used in a relevant field in Vietnam
that it loses its distinctiveness;
e) A word or phrase that is used in Vietnam as the common name of the
very related goods or service;
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h) A word or phrase that is liable to describe the legal status or
business lines of the mark proprietor;
i) A character sign that is identical or similar to any of objects
covered by the protection of industrial property rights of other persons
according to the provisions of Points e, f, g, h, i, j and k, Clause 2, Article
74 of the Intellectual Property Law;
k) Character signs that cause misunderstanding or confusion or mislead
consumers as to the origin, utility, quality, value or other characteristics
such as ingredients, process of manufacture, materials or superiority of a
goods or service according to the provisions of Clause 5, Article 73 of the
Intellectual Property Law;
l) Character signs that are identical or confusingly similar to real
names, alias or pseudonyms of leaders, national heroes or personalities of
Vietnam or foreign countries; identical or confusingly similar to names of
characters or figures in other persons widely known works under copyright
protection, unless it is so permitted by the owners of those works.
39.4 Assessment of distinctiveness of signs in the form of pictures or
images (hereinafter referred to as figure signs) according to the provisions of
Clause 2, Article 74 of the Intellectual Property Law
Except for the exceptions specified at Point 39.5 of this Circular, a figure
sign shall be considered indistinctive if:
a) It is a common figure or geometric figure, such as round, ellipse,
triangle, quadrangle, etc., or a simple drawing; a picture or image used merely
as a background or ornamental pattern of a product or a product package;
b) It is a picture or image that is too tangled or complicated for
consumers to easily perceive and memorize its details, i.e. a sign that
consists of too many combined or overlapped images or lines;
c) It is a widely used picture, image, emblem or symbol;
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e) It is identical to or not substantially distinguishable from
protected industrial designs of other persons;
g) It is identical or confusingly similar to images of leaders, national
heroes or personalities of Vietnam or foreign countries; identical or
confusingly similar to images of characters or figures in other persons widely
known works under copyright protection, unless it is so permitted by the owners
of those works.
39.5 The following exceptions shall apply upon assessment of
distinctiveness of character signs or figure signs:
a) A sign that falls into the cases specified at Points 39.3.a, b, c, f
and g and Points 39.4.a, b, c, d and e of this Circular has been used as a mark
and widely known to consumers and that mark therefore become distinguishable
from relevant goods and services.
b) To be subject to the application of this exception, the applicant
shall furnish evidence of the wide use of that mark (the time of beginning of
the use, present scope and level of use, etc., in which, the mark shall be
considered in use when the use is made in lawful production, business,
commercial, advertising or marketing activities) and evidence of the marks
distinctiveness from the mark proprietors relevant goods and services. In this
case, that mark shall be recognized distinctive if it is presented in the form
in which it has been uninterruptedly and widely used in the reality.
39.6 Assessment of distinctiveness of signs being combinations of
character signs and figure signs (hereinafter referred to a combined signs)
A combined sign shall be considered distinctive when a character sign
combines with a figure sign in a distinctive whole, specifically as follows:
a) The character sign and the figure sign are all distinctive and
combined into a distinctive whole;
b) The strong component of the mark (the element that has a strong
effect on the senses of consumers, attracts their attention to and gives an
impression of the mark) is a distinctive character sign or figure sign, while
other components are indistinctive or insignificantly distinctive;
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d) The combined sign consists of indistinctive or insignificantly
distinctive character and figure components but that combined whole has become
distinctive through the use according to the provisions of Point 39.5 of this
Circular.
39.7 Minimum information source
a) To assess the ability of a sign stated in an application to cause
confusion, the NOIP shall conduct the search in the following minimum
information source:
(i) Mark registration applications filed with the NOIP with filing dates
or dates of priority earlier than the filing date or date of priority of the
application currently under examination and mark registration international applications
designating Vietnam notified by the WIPO to the NOIP with filing dates or dates
of priority earlier than the filing date or date of priority of the application
currently under examination for identical or similar goods and services;
(ii) Marks already registered or recognized for protection still
effective in Vietnam (including well-known marks), for identical, similar or
relevant goods and services;
(iii) Registered marks that have ceased to be valid for more than five
years, except for those invalidated for non-use defined at Point d, Clause 1,
Article 95 of the Intellectual Property Law, for identical or similar goods and
services;
(iv) Geographical indications currently protected in Vietnam;
(v) Indications to the geographical origin of goods and services;
geographical names, quality or control hallmarks; national flags and emblems of
nations; flags, names and emblems of Vietnamese and international agencies and
organizations; names and images of leaders, national heroes, names and images
of personalities of Vietnam and foreign countries, etc., collected and stored
by the NOIP.
b) When necessary, the search may be conducted in reference information
sources other than the minimum information source defined at Point 39.7.a
above, such as industrial design registration applications, trade names, etc;
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a) To assess whether or not a sign sought to be registered and stated in
an application is identical or confusingly similar to another mark (hereinafter
referred to as control mark), it is necessary to compare the disposition,
content and pronunciation (for character signs), significance and form of
expression of the sign (for character signs and figure signs), and concurrently
compare the goods and services bearing the sign with those bearing the control
mark defined at this Point.
b) Signs identical to control marks: A sign shall be considered
identical to a control mark if it resembles the control mark in terms of
disposition, content, significance and form of expression.
c) A sign considered confusingly similar to a control mark if:
(i) It is similar to the control mark in terms of disposition or/and
content or/and pronunciation or/and significance or/and form of expression in
such a way that makes consumers misjudge these two objects as one or an object
as a variation of the other or these two objects of the same origin;
(ii) It is merely a transliteration or translation of the control mark,
in case the control mark is a well-known mark.
39.9 Assessment of similarity of goods and services
a) Two goods or two services shall be considered identical (of the same
type) if these two goods or services have the following characteristics:
(i) They have the same nature (composition, ingredients) and the same
function and utility; or
(ii) They have similar natures and the same function and utility;
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(i) They are similar in nature; or
(ii) They are similar in function or utility; and
(iii) They are marketed in the same commercial channel (they are
distributed by the same mode, or sold together or compete with each other in
the same type of shop...);
c) A goods and a service shall be considered similar if they fall into
one or several of the following cases:
(i) They have a correlation in nature (a goods or service or a material
or component of a goods or service forms constitutes part of the other); or
(iiThey have a correlation in function (to accomplish the function of a
goods or service, it is necessary to use the othei or they are usually used
together); or
(iii) They have a close correlation in method of realization (a goods or
service is the result of the use or exploitation of the other); or
39.10 Inspection of the first-to-file rule
Before issuing decisions on the grant of certificates of registered
marks, the NOIP shall inspect the observance of the first-to-file rule defined
in Article 90 of the Intellectual Property Law.
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A sign shall be considered identical or confusingly similar to a control
mark used for identical or similar or relevant goods in the following cases:
(i) It is identical to the control mark and goods and services bearing
it are identical or similar to goods and services bearing the control mark;
(ii) It is identical to the control mark and goods and services bearing
it are identical to goods and services bearing the control mark of the same
mark proprietor;
(iii) It is confusingly similar to the control mark and goods and
services bearing it are identical or similar to goods and services bearing the
control mark, except when the similarity of goods and services and the
similarity of signs are unable to cause confusion when similar signs are used;
(iv) It is identical or similar to the control mark being a well-known mark
and goods and services bearing it are neither identical nor similar to goods
and services bearing the mark, but its use as a mark may make consumers believe
that there exists a relationship between goods and services bearing it and the
proprietor of the well-known mark and make it possible to reduce the
distinctiveness or damage the reputation of the well-known mark.
39.12 Assessment of the ability of signs to cause other confusions
The assessment of the ability of signs to cause other confusions shall
comply with the provisions of Article 73 and Clause 2, Article 74 of the
Intellectual Property Law and the following specific provisions.
a) A sign shall be considered having caused confusion of origin of goods
or services in the following cases:
(i) It is identical or similar to the name or emblem of a nation or
territory (national flag, national emblem, name of the nation or a locality) or
confusingly similar to the name or emblem of a nation or territory, causing a
mislead that goods or services bearing the mark originate from that nation or
territory;
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(iii) It is a word identical or similar to the trade name of another
person, which has been lawfully used for the same type of goods or service, and
able to make consumers believe that goods or services bearing it are
manufactured or provided by the person having above trade name; it is an image
identical or similar to the commercial logo of another person, which has been
lawfully used for the same type of goods or service, and able to make consumers
believe that goods or services bearing it are manufactured or provided by the
person having the above commercial logo;
(iv) It is identical or similar to real names, alias, pseudonyms or
images of leaders, national heroes or personalities of Vietnam or foreign
countries; it is identical or similar to names or images of typical human
characters or figures in widely known works, in case its use can make consumers
believe that goods or services bearing it are manufactured or provided by
owners of those works;
(v) It is identical to or not substantially distinguishable from
industrial designs of other persons protected on the basis of industrial design
registration applications with filing dates or dates of priority earlier than
the filing date or date of priority of the mark registration application.
b) In the following cases, a sign shall be considered able to cause
confusion or mislead to the nature and value of goods and services:
(i) The sign is a word, picture, image or symbol that gives a misleading
impression of properties or utilities of a goods or service, i.e., a sign
identical or similar to a mark or another sign used so widely that it has been
regarded as being associated with a function or utility of a given type of
goods or service and thereby making consumers believe that goods and services
bearing the sign also have such function or utility;
(ii) The sign is a word or image that gives a misleading impression of
composition or ingredients of a goods or service, i.e., a description of
another goods or service relevant to the goods or service bearing the sign
gives a misleading impression that the goods or service bearing the sign is
composed of or has the same nature as the described goods or service.
40. Grant, registration and publication of
certificates of registered marks
Procedures for grant, registration and publication of certificates of
registered marks shall comply with the general procedures specified at Points
18 and 19 of this Circular.
41. Processing of mark international registration applications
originating in Vietnam and mark international registration applications
designating Vietnam
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This Circulars provisions on procedures for processing mark registration
applications also apply to the processing of mark international registration
applications at the NOIP.
41.2 Right of international registration of marks is based on basic mark
registrations in Vietnam.
a) Persons who are granted certificates of registered marks in Vietnam
enjoy the right of international registration of those marks under the Madrid
Agreement;
b) Persons who have filed mark registration applications in Vietnam and
persons who are granted certificates of registered marks in Vietnam enjoy the
right of international registration of those marks under the Madrid Agreement.
41.3 Mark international registration applications originating in Vietnam
a) A mark international registration application that designates a nation
being a contracting party to the Madrid Agreement in which the protection is
sought to be registered and does not designate any nation being a contracting
party to the Madrid Protocol must be in French.
b) A mark international registration application that designates at
least one nation being a contracting party to the Madrid Protocol, and
designates also a nation being a contracting party to the Madrid Agreement must
be in English or French.
c) An applicant shall submit a written declaration requesting
international registration of a mark made according to a set form (not printed
herein) and a mark international registration application made according to a
form supplied free of charge by the NOIP. The applicant shall clearly indicate
in the written declaration countries being contracting parties to the Madrid
Agreement (which may concurrently be contracting parties to the Madrid
Protocol) as well as those contracting to only the Madrid Protocol in which
he/she seeks the protection of a mark. A mark international registration
application must be made by accurately and fully filling information in
sections reserved for the applicant and accompanied with mark specimens true to
those already registered in Vietnam.
d) An applicant should preliminarily calculate the total amount of fees
and charges according to the fee tariff printed in the application form or may
request the NOIP to notify the exact amount of fees and charges to be paid to
the International Bureau. He/she shall pay those fees and charges directly to
the International Bureau and additionally pay relevant fees and charges set by
the NOIP.
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g) All mails and transactions related to a mark international registration
application shall be communicated and conducted through the NOIP. The NOIP
shall promptly notify requests of applicants to the International Bureau and
vice versa under relevant treaties.
41.4 The agency receiving mark international registration application
originating in Vietnam
a) Mark international registration applications shall be filed with the
International Bureau through the NOIP. The NOIP shall transfer mark
international registration applications to the International Bureau within 30
days after receiving complete and valid application documents.
b) The date the NOIP receives a mark international registration
application shall be considered the date of filing a mark international
registration application in case the International Bureau receives that
application within two months from the date indicated in the NOIPs seal of
application receipt. If the application is not completed by the applicant
before it is sent to the International Bureau within the above time limit, the
date of receipt of the application by the International Bureau shall be
considered the date of filing the mark international registration application.
41.5 Supplementation, modification and transfer of mark international
registration applications, mark international registrations originating in
Vietnam
a) After an application is filed with the International Bureau, all
transactions between the applicant and the International Bureau related to the
modification of the name and address, narrowing of the list of goods and services
stated in the mark international registration application, mark international
registration and extension of validity of mark international registration shall
be established in writing according to a set form (not printed herein) and
effected through the NOIP. The applicant shall pay prescribed fees and charges
for those transactions.
b) A mark proprietor shall request, through the NOIP (or directly
request the International Bureau for international registrations of marks in
nations acceding only to the Madrid Protocol), the International Bureau to
record the transfer of the proprietorship under according to the international
registration of mark and relevant treaties and pay prescribed fees and charges.
41.6 Processing of mark international registration applications
designating Vietnam
a) After receiving a notice of the International Bureau on a mark
international registration application designating Vietnam, the NOIP shall
conduct the substantive examination of the application according to the procedures
applicable to mark registration application filed directly with the NOIP.
Within 12 months after the International Bureau issues the notice, the NOIP
shall make a conclusion on protectability of the mark.
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c) For a mark unprotectable or partially refused, the NOIP shall, before
the expiration of the above 12-month time limit, notify in writing the
International Bureau of the refusal for subsequent notification to the
applicant, clearly stating the reason for the refusal and the refused contents.
d) Within three months after the NOIP sends a notice on its refusal, the
applicant may lodge a complaint about the NOIPs refusal. Procedures for lodging
and settling complaints shall be carried out as for mark registration
applications filed directly with the NOIP. Results of complaint settlement
shall be notified by the NOIP to the International Bureau and the applicant.
e) As from the date a recognized mark international registration becomes
valid in Vietnam, the NOIP shall, upon the request of the mark proprietor,
grant a certificate of protection in Vietnam of internationally registered
mark, if the requester pays the prescribed fee.
41.7 Extension of validity of mark international registrations
originating in Vietnam
Within six months before the date of expiration of the valid duration of
a mark international registration (20 years from the filing date of a mark
international registration application for nations being contracting parties to
the Madrid Agreement, including those concurrently contracting to the Madrid
Protocol; 10 years from the filing date of a mark international registration
application for nations contracting only to the Madrid Protocol), the applicant
shall pay the fee for extension of validity of mark international registrations
according to notices of the International Bureau.
41.8 Mark registration applications converted due to invalidation of
mark international registrations
a) If a mark international registration in Vietnam of a mark proprietor
who is a national of a nation contracting only to the Madrid Protocol is
invalidated under Article 9quinquies of the Madrid Protocol, such person may
file a converted mark registration application made according to a set form
(not printed herein) to the NOIP for registration of protection of the very
mark for part of or the whole goods or services on the list of goods and
services recorded in the invalidated mark international registration.
b) A converted mark registration application shall be accepted if it
satisfies the following conditions:
(i) It is filed within three months from the date of invalidation of the
relevant mark international registration;
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(iiiIt satisfies all formality and substantive requirements according to
Vietnamese law and the applicant pays fully the prescribed fees and charges.
c) A converted mark registration application is allowed to bear the
filing date or the date of priority of the relevant mark international
registration application (if the mark international registration application
enjoys the right of priority under treaties).
d) The NOIP shall process applications for registration of converted marks
as for ordinary marks.
42. Recognition of well-known marks
42.1 Well-known marks are protected by Vietnamese law in accordance with
the provisions of Article 75 of the Intellectual Property Law and Article 6bis of
the Paris Convention for the Protection of Industrial Property.
42.2 Rights to well known marks are protected and belong to proprietors
of those marks without any registration procedures. Mark proprietors may use
documents specified at Point 42.3 of this Circular to evidence their ownership
of marks and prove that their marks satisfy the conditions for being considered
well-known.
42.3 Documents evidencing the ownership and reputation of a mark include
information on the scope, scale, level and continuity of the use of the mark,
including an explanation of origin, history and time of continuous use of the
mark; number of nations in which the mark has been registered or recognized as
a well-known mark; list of goods and services bearing the mark; the territorial
area in which the mark is circulated, turnover from products sold or services
provided; quantity of goods and services bearing the mark manufactured or sold;
property value of the mark, price of assignment or licensing of the mark and
value of investment capital contributed in the form of the mark; investment in
and expenses for advertising and marketing of the mark, including those for
participation in national and international exhibitions; infringements,
disputes and decisions or rulings of the court or competent agencies; surveyed
number of consumers knowing the mark through sale, purchase, use, advertisement
and marketing; rating and evaluation of reputation of the mark by national or
international organizations or the mass media; prizes and medals awarded on the
mark; results of examinations held by intellectual property examination
organizations.
42.4 If a well-known mark is recognized according to civil procedures or
under a recognition decision of the NOIP, that well-known mark shall be recorded
in the list of well-known marks kept at the NOIP.
Section 6.
PROCEDURES FOR REGISTRATION OF GEOGRAPHICAL INDICATIONS
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43.1 Geographical indication registration applications must satisfy the
general requirements specified at Points 7 and 10.1 of this Circular and
specific requirements of this Point.
43.2 Applications must ensure uniformity as required specified in Clause
1, Article 101 of the Intellectual Property Law. Each application may register
only one geographical indication used for one product.
43.3 Application documents: Written application, made according to a set
form (not printed herein); description of the nature/quality! reputation of the
product; map of geographical area subject to the geographical indication (all
made in two copies) and 10 specimens showing the presentation of the
geographical indication to be used, of a size of between 20 mm x 20 mm and 80
mm x 80 mm (if the geographical indication does not consist of words).
43.4 Requirements for the description of the nature/quality/reputation
of the product
a) A description of the nature/quality/reputation of the product must
have the following principal information:
(i) Enumeration of the given nature/quality of the product bearing the
geographical indication dictated by geographical conditions - by means of
sense, qualitative and quantitative indicators to physical, chemical and
biological properties, which can be tested by technical devices or experts
using a specified testing method; andlor
(ii) Reputation of the product bearing the geographical indication
dictated by geographical conditions - determined through the widespread
knowledge of interested consumers about that product, which can be tested; and
(iiiGeographical conditions liable to the nature/quality and reputation
of the product bearing the geographical indication, including unique
meteorological, hydrological, geological, topographic and ecological elements
and other natural conditions; unique elements being skills of producers,
including also a traditional production process of the locality (which might
cover one, several or all production stages, from production of materials,
processing of materials to making of products, and even the stage of product
packing if this stage has an effect on the nature/quality and reputation of the
product) if that process is liable to create and maintain the nature/quality
and reputation of the product bearing the geographical indication, which
contain information that is clear and detailed enough to be tested (if the
above information contains secrets or technical know-how not yet disclosed or
widely known beyond the locality, the applicant may refuse to supply detailed
information on those secrets or know-how without being assured of
confidentiality of those information upon his/her request); and
(ivCorrelation between particular nature/ quality and reputation of the
product bearing the geographical indication defined at Points 43.4.a (i) and
(ii) and geographical conditions defined at Point 43.4.a (iii) above.
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43.5 Requirements for maps of geographical areas subject to geographical
indications
A map of a geographical area subject to a geographical indication must
be adequately informative, based on which the geographical area where exist all
natural conditions liable to the particular nature/quality and reputation of
the product can be accurately identified. The map may be submitted together
with documents describing the geographical area subject to the geographical
indication.
44. Formality examination and publication of
geographical indication registration applications
Procedures for formality examination and publication of geographical
indication registration applications shall comply with the general procedures
specified at Points 13 and 14 of this Circular.
45. Substantive examination of geographical
indication registration applications
45.1 Order of carrying out procedures for substantive examination
The substantive examination of geographical indication registration
applications shall be conducted according to the general order specified at
Point 15 of this Circular and specific provisions of this Point.
45.2 Assessment of compatibility of objects stated in applications with
certificates of registered geographical indications
An object stated in a geographical indication registration application
shall be considered incompatible with the type of geographical indication
protection title if it is not a visible sign used to indicate a product
originating in a specific area, locality, territory or nation according to the
provisions of Clause 22, Article 4 of the Intellectual Property Law.
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a) An object stated in an application shall be accepted for registration
and recorded in the national register of geographical indications if it fully
satisfies the conditions specified in Article 79 of the Intellectual Property
Law and does not fall into the cases specified in Article 80 of the
Intellectual Property Law. More specifically, all the following conditions must
be satisfied:
(i) There exists a geographical area subject to the geographical
indication stated in the application;
(ii) The product originates in the above geographical area;
(iii) The product has a given nature/quality and! or reputation dictated
by geographical conditions of the above geographical area according to the
provisions of Article 82 of the Intellectual Property Law;
b) In the following cases, a geographical indication stated in an
application is not registered:
(i) It has become a common name of goods in Vietnam;
(ii) It belongs to a foreign country and it is not protected or ceases
to be protected or has fallen into disuse in that country;
(iii) It is identical or similar to a protected mark in Vietnam and its
use can mislead as to the origin of a product;
(iv) It misleads consumers as to the true geographical origin of the
product bearing it.
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The assessment of a geographical indication based on the protection
conditions specified at Points 45.3.a and b above shall be conducted based on
information supplied by the applicant and information acquired from the
following mandatory minimum information source:
(i) Marks currently protected in Vietnam for products identical or
similar to the product bearing the geographical indication, with the dates on
which the protection starts earlier than the filing date of the geographical
indication registration application, including marks protected under treaties
to which Vietnam is a contracting party;
(ii) Marks recognized by the NOIP as well known marks.
If a mark identical or similar to the geographical indication is found,
the NOIP shall notify such to the mark proprietor for the latter to give
opinions on the registration of the geographical indication within one month
from the date of signing of the notice, clearly stating the mark proprietors
right of opposition to the registration of the geographical indication on the
condition of sufficient grounds to prove that the geographical indication falls
into the case specified in Clause 3, Article 80 of the Intellectual Property
Law. Opinions of the mark proprietor shall be considered according to the
provisions of Point 6 of this Circular on consideration of opinions of a third
party.
A geographical indication that misleads consumers as to the true
geographical origin of the product bearing that geographical indication when it
is considered identical or indistinguishably similar to a sign known to
Vietnamese consumers as an indication of geographical origin of a goods or
service.
45.Notification of results of substantive examination
Results of substantive examination of geographical indication registration
applications shall be notified according to the general provisions of Point
15.7 of this Circular.
46. Grant, registration and publication of
certificates of registered geographical indications
Procedures for issuance of decisions on grant, registration and
publication of certificates of registered geographical indications shall comply
with the general provisions of Points 18 and 19 of this Circular.
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PROCEDURES FOR REGISTRATION
OF CONTRACTS ON ASSIGNMENT OF INDUSTRIAL PROPERTY RIGHTS AND PROCEDURES FOR
MAKING DECISIONS ON COMPULSORY LICENSING OF PATENTS
Section 1.
PROCEDURES FOR REGISTRATION OF CONTRACTS ON ASSIGNMENT OF INDUSTRIAL PROPER
TYRIGHTS
47. Dossiers for registration of contracts on
assignment of industrial property rights
47.1 A dossier for registration of a contract on transfer of industrial
property rights comprises the following documents:
a) Two copies of the written declaration for registration of the
contract on transfer of industrial property rights, made according to a set
form (not printed herein);
b) Two originals or two valid copies of the contract; if the contract is
made in a language other than Vietnamese, it must be enclosed with its Vietnamese
translation; if the contract consists of many pages, each page must be appended
with the parties signatures for certification or every two adjoining pages must
be appended with a seal on their inner edges;
c) Original protection title;
d) Written consent of co-owners to the transfer of industrial property
rights, if those industrial property rights are under common ownership;
e) Power of attorney (if the dossier is filed through a representative);
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47.2 A dossier for registration of a contract on licensing of an
industrial property object (industrial property licensing contract) comprises
the following documents:
a) Two copies of the written declaration on the industrial property
licensing contract, made according to a set form (not printed herein);
b) Two originals or two valid copies; if the contract is made in a
language other than Vietnamese, it must be enclosed with its Vietnamese
translation; if the contract consists of many pages, each page must be appended
with the parties signatures for certification or every two adjoining pages must
be appended with a seal on their inner edges;
c) Written consent of co-owners to the licensing of the industrial
property object, if the relevant industrial property rights are under common
ownership;
d) Power of attorney (if the dossier is filed through a representative);
e) Fee and charge receipts.
48 Procedures for processing of registration
dossiers
48.1 If a dossier for registration of a contract on transfer of
industrial property rights contains no error defined at Point 48.3 of this
Circular, the NOIP shall carry out the following activities:
a) To issue a decision on the grant of a certificate of registration of
the contract on transfer of industrial property rights/licensing of an
industrial property object;
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c) To record the assignment of industrial property rights in the
national register of assignment of industrial property rights;
d) To publish the decision on grant of a certificate of registration of
the contract on assignment of industrial property rights in the Industrial
Property Official Gazette within two months from the date of signing the
decision.
48.2 If a dossier for registration of a contract on assignment of
industrial property rights contains errors defined at Point 48.3 of this Circular,
the NOIP shall carry out the following procedures:
a) To issue a notice on its intended refusal of registration of the
contract, clearly stating errors of the dossier and setting a time limit of one
month from the date of signing of the notice for the dossier-filing person to
correct the errors and make an opposition to the intended refusal of
registration of the contract;
b) To issue a notice on its refusal of registration of the contract if
the dossier-filing person fails to correct or unsatisfactorily corrects the
errors, makes no opposition or an unreasonable opposition to the intended
refusal of registration of the contract within the set time limit.
48.3 A dossier for registration of a contract on assignment of
industrial property rights shall be considered erroneous if it falls into one
of the following cases:
a) The written declaration is invalid;
b) One of the documents on the list of required documents is absent;
c) The power of attorney is invalid;
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e) The name and address of the assignor stated in the contract are not
consistent with the relevant information in the protection title or the
contract based on which the assigned rights arise, or in the power of attorney
or written declaration; the name and address of the assignee stated in the
contract are not consistent with those stated in the power of attorney or
written declaration;
g) The contract does not contain all signatures (and seals, if any) of
the assignor and the assignee;
h) The transferor is not the protection title holder;
i) The term of protection of the concerned industrial property object
has expired or there is a dispute over that object;
k) The assignment contract lacks required contents specified in Article
140 or Clause 1, Article 144 of the Intellectual Property Law;
l) The contract contains a content incompliant with the provisions on
conditions for restriction of transfer of industrial property rights specified
in Article 139 of the Intellectual Property Law or contains clauses on
unreasonable restriction of rights of the industirial property object licensee
specified in Clause 2, Article 144 of the Intellectual Property Law;
m) There is a ground to confirm that the transfer of industrial property
rights infringes upon industrial property rights of a third party.
48.4 The time limit for processing a dossier for registration of a
contract on assignment of industrial property rights is two months (not
including the time for the dossier-filing person to correct errors).
49. Recording of modification of contents,
extension and ahead-of-time termination of validity of contracts on licensing
of industrial property objects
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49.2 A dossier requesting recording of modification of contents,
extension or termination of a contract
a) A dossier requesting recording of modification of contents, extension
or ahead-of- time termination of validity of a contract on licensing of an
industrial property object must be made in writing and comprise the following
documents:
(i) Two copies of the written declaration requesting recording of
modification of contents, extension or termination of validity of the contract
on licensing of an industrial property object, made according to a set form
(not printed herein;
(ii) The original certificate of registration of the contract on
licensing of an industrial property object (in case of registration of
modification of contents or extension of validity of the contract);
(iii) Documents evidencing the modification of the names and addresses
of the contracting parties;
(iv) Agreements or documents on recording of specific contract clauses
that need to be modified or supplemented, including the extension or
ahead-of-time termination of validity of the contract;
(v) Power of attorney (if the request is filed through a
representative);
(vi) Fee receipt.
b) A dossier requesting extension of a contract must be filed at least
one month before the expiration of the contract term stated in the certificate
of registration of the contract on licensing of an industrial property object.
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a) If the dossier is valid, the NOIP shall issue a decision on recording
of modification of contents, extension or termination of validity of the
contract on licensing of an industrial property object; record the modified contents,
extension of validity of the contract on licensing of an industrial property
object in a certificate of registration of the contract on licensing of an
industrial property object; record the modified contents, extension or
termination of validity of the contract on licensing of an industrial property
object in the national register of assignment of industrial property rights;
publish the decision on recording of modification of contents, extension or
termination of validity of the contract on licensing of an industrial property
object in the Industrial Property Official Gazette within two months from the
date of signing of the decision;
b) If the dossier contains errors, the NOIP shall issue a notice on its
intended refusal to record the modification of contents, extension or
termination of validity of the contract on licensing of an industrial property
object, clearly stating the dossiers errors and setting a time limit of one
month from the date of issuance of the notice on its intended refusal for the
dossier-filing person to correct the errors or make an opposition to the
intended refusal of registration of the contract; issue a notice on its refusal
to record the modification of contents, extension or termination of validity of
the contract on licensing of an industrial property object if the
dossier-filing person fails to correct or unsatisfactorily corrects the
dossiers errors, makes no opposition or an unreasonable opposition within the
set time limit.
50. Dossiers for requesting issuance of decisions
on compulsory licensing of patents
50.1 Organizations or individuals that are capable, obliged or have a
need to use patents defined at Points a, b and c or are targeted by anti-
competitive practices specified at Point d, Clause 1, Article 145 of the
Intellectual Property Law may request competent persons defined in Clause 1,
Article 147 of the Intellectual Property Law to issue decisions on compulsory
licensing of patents to them according to the specific provisions of this
Section.
50.2 A dossier for requesting issuance of a decision on compulsory
licensing of a patent must comprise the following documents:
a) Two copies of the written declaration ft requesting compulsory
licensing of a patent, mad according to a set form (not printed herein;
b) Documents proving that the request ft issuance of a decision on
compulsory licensin of a patent is reasonably grounded according t law,
specifically:
(i) If the request for issuance of a decision o compulsory patent
licensing is based on th provisions of Point a, Clause 1, Article 145 of th
Intellectual Property Law, the dossier must contai documents proving that at
the time of filing th application, there exists a practical demand f use of the
patent for the public, non-commercia defense, security, disease prevention an
treatment or peoples nutrition purpose or to me other urgent needs of the
society, but the pater holder fails to use the patent and the non-use ( the
patent will affect the achievement of the abo\I purposes;
(ii) If the request for issuance of a decision o compulsory patent
licensing is based on th provisions of Point b, Clause 1, Article 145 ( the
Intellectual Property Law, the dossier mu contain documents proving that the
patent hold fails to perform the obligation to use the patel specified in
Clause 1, Article 136 and Clause Article 142 of the Intellectual Property Law
an by the time of filing of the dossier the time lim of four years from the
date of filing the inventio registration application and the time limit of thn
years from the date of grant of the patent ha expired;
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(iv) If the request for issuance of a decision on compulsory patent
licensing is based on the provisions of Point c, Clause 1, Article 145 of the
Intellectual Property Law, the dossier must contain documents proving that the
patent holder has committed acts regarded as prohibited anti- competitive
practices defined by the competition law;
(v) For a request for issuance of a decision on compulsory patent
licensing in the domain of semi-conductor technology, the dossier must contain
documents proving that the use of the patent is for the public or
non-commercial purpose only or produce documents proving that the patent holder
has committed acts regarded as prohibited anti-competitive practices defined by
the competition law;
c) Power of attorney (if the dossier is filed through a representative);
d) Fee receipt.
51. Procedures for processing dossiers for
requesting issuance of decisions on compulsory patent licensing
51.1 Dossiers shall be filed according to the following provisions:
aDossiers falling into the cases specified at Point b, c and d, Clause
1, Article 145 of the Intellectual Property Law shall be filed with the NOIP;
b) Dossiers falling into the cases specified at Point a, Clause 1, Article
145 of the Intellectual Property Law shall be filed with the ministries or
ministerial-level agencies in charge of patent management.
51.2 Examination of dossiers
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Within two months after receiving a dossier, the NOIP or the dossier
examination agency of the ministries or ministerial-level agencies (hereinafter
referred to as the dossier examination agency) shall consider it according to
the following provisions:
a) If the dossier is valid: Within 15 days after receiving the dossier,
the dossier examination agency shall issue a notice on request for patent licensing
under a compulsory decision to the patent holder and request the latter to give
written opinions within one month from the date of notice issuance; request
concerned parties to overcome divergent opinions to negotiate again on the
signing of a contract on patent licensing, when necessary; if no agreement is
reached by the parties and when considering the patent holders refusal to sign
the contract on patent licensing unreasonable, report on the dossier
consideration results and propose the Minister of Science and Technology and
heads of ministerial-level agencies to issue a decision on compulsory patent
licensing.
If the request falls into the cases specified at Point a, Clause 1,
Article 145 of the Intellectual Property Law and the use of the patent is for
public or non-commercial purposes, the ministries or ministerial-level agencies
may issue a decision ;1 on compulsory patent licensing without having to
request the patent holder to make opinions and the concerned parties to
negotiate.
b) If a request for issuance of a decision on patent licensing is not
reasonably grounded according to the provisions of Article 145 of the
Intellectual Property Law, the dossier examination agency shall report on the
dossier consideration results to and propose the Minister of Science and
Technology, ministers or heads of ministerial- level agencies to issue a notice
on intended refusal, clearly stating the reason for refusal and setting a time
limit of one month from the date of notice issuance for the dossier-filing person
to make opinions on the intended refusal.
The time limit for the dossier-filing person to correct the dossiers
errors or make an opposition shall not be counted in the time limit for dossier
consideration.
c) For a dossier falling into the cases specified at Point a, Clause 1
,Article 145 of the Intellectual Property Law, the dossier examination agency
of the ministries or ministerial-level agencies shall copy and send copies of
the dossier (through the NOIP) to the Ministry of Science and Technology for
comments before submitting it to the ministers or heads of ministerial-level
agencies for decision according to the provisions of Points a and b above.
Within 15 days after receiving the dossier, the NOIP shall consider and report
it to the Minister of Science and Technology for himlher to request in writing
the ministers or heads of ministerial-level agencies to issue a decision on
compulsory patent licensing or a notice on refusal.
51.3 Within 15 days after receiving a report of the NOIP on dossier consideration
results, the Minister of Science and Technology shall consider and issue a
decision on compulsory patent licensing, or send to the dossier-filing person a
notice on its refusal of compulsory paten licensing, clearly stating the reason
for refusal.
Within 15 days after receiving a written reques of the Minister of
Science and Technology, th ministers or heads of ministerial-level agencie
shall consider and issue a decision on compulsor patent licensing, or send to
the dossier-filin person a notice on its refusal of compulsory paten licensing,
clearly stating the reason for refusal.
If disagreeing with the request of the Ministe of Science and
Technology, the ministers or head of ministerial-level agencies shall notify th
disagreement in writing, clearly stating the reasot for disagreement .
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52. Requests for termination of patent licensin
under compulsory decisions
52.1 The termination of patent licensing unde compulsory decisions shall
be decided b ministers or heads of ministerial-level agencie who have issued
decisions on compulsor licensing.
52.2 A request for termination of paten licensing under a compulsory
decision mus comprise the following documents:
a) Written request for termination of paten licensing under a compulsory
decision;
b) TDocuments proving that the grounds fo patent licensing under a
compulsory decision no longer exist and are unlikely to revive, and at the same
time the termination of patent licensing will cause no damage to the patent
licensee;
c) Power of attorney (if the request is filed through a representative);
d) Fee receipts.
52.3 Procedures for receiving and handling requests for termination of
patent licensing under compulsory decisions and issuing termination decisions
shall be carried out like procedures for receiving and processing dossiers for
requesting patent licensing under compulsory decisions specified at Point 51 of
this Circular.
Chapter III
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Section 1. GRANTAND WITHDRAWAL OF
INDUSTRIAL PROPERTY REPRESENTATION SER VICE PRACTiCE CERTIFICATES
53. Grant of practice certificates
53.1 Conditions for grant of practice certificates
Only persons who fully satisfy the conditions specified in Clause 2,
Article 155 of the Intellectual Property Law may be granted industrial property
representation service practice certificates. To be granted certificates, those
persons shall file dossiers of application with the NOIP according to the
provisions of this Point.
53.2 Dossiers of application for practice certificates
a) A dossier of application for an industrial property representation service
practice certificate must comprise the following documents:
(i) Two copies of the written declaration for requesting grant of an
industrial property representation service practice certificate (practice
certificate), made according to a set form (not printed herein);
(ii) A copy of the notice on the pass of an examination of professional
qualifications for industrial property representation organized by the NOIP;
(iii) Two 3 cm x 4 cm photos;
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53.3 Processing of dossiers of application for practice certificates:
For a valid dossier, the NOIP shall, within one month after receiving
the dossier, base itself on the dossier consideration, issue a decision on
grant of a practice certificate and grant a practice certificate to the
dossier-filing person; record the grant of a practice certificate in the
national register of industrial property representation; publish the grant of a
practice certificate in the Industrial Property Official Gazette within two
months from the date of decision signing; or notify errors in the dossier and
set a time limit of one month for the dossier-filing person to correct the
errors; or issue a notice on its refusal to grant a practice certificate,
clearly stating the reason for refusal, if the dossier-filing person fails to
correct or unsatisfactorily corrects the errors or the dossier is invalid.
54. Withdrawal of practice certificates
If an industrial property representative commits a violation and is
imposed with the sanction of withdrawal of practice certificate, the NOIP
shall, based on a decision on withdrawal of industrial property representation
service practice certificate, issued by a state agency competent to handle
administrative violations, issue a decision on withdrawal of practice
certificate; delete the name of the industrial property representative from the
list of industrial property representatives of the industrial property
representation service organization; publish the withdrawal of practice
certificate in the Industrial Property Official Gazette within two months from
the date of decision signing.
55. Renewal of practice certificates
The NOIP shall carry out procedures for renewal of industrial property
representation service practice certificates upon written requests made
according a set form by industrial property representatives in case their
practice certificates are lost or irreparably damaged (torn, stained or faded).
Procedures for renewal of practice certificates shall be carried out
like procedures for grant of practice certificates specified at Point 53.3 of
this Circular.
Section 2. RECORDING MODIFICATION
AND DELETION OF NAMES OF INDUSTRIAL PROPER TV REPRESENTATION SER VICE
ORGANIZATIONS
56. Recording of industrial property
representation service organizations
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56.2 A dossier of request for recording of an industrial property
representation service organization in the national register of industri
property representation must comprise th following documents:
a) Two copies of the written declaration fc requesting recording of an
industrial propert representation service organization, mad according to a set
form (not printed herein;
b) List of the organizations member possessing industrial property
representatio service practice certificates enclosed with copie of their
employment decisions/labor contracts;
c) Copies of the organizations busines registration
certificate/operation registratio certificate;
d) The organizations industrial propert representation service charge
tariff ;
e) The organization heads written mandate c representation for one of
the members on the li specified at Point 56.2.b above (when necessary);
g) Fee receipt.
56.3 Within one month after receiving dossier of request for recording
of an industrh property representation service organization, th NOIP shall
consider it according to procedure similar to the procedures for grant of
industrh property representation service practic certificates specified at
Point 53.3 of this Circula .
57. Recording of modification of informatio on
industrial property representation servic organizations
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57.2 A dossier of request for recording of modification of information
on an industrial property representation service organization must comprise the
following documents:
a) Two copies of the written declaration for requesting recording of
modification of information on industrial property representation service
organization, made according to a set form (not printed herein);
b) Copies of the modified business registration certificate/operation registration
certificate of the industrial property representation service organization (in
case of change of the organizations name or address);
c) Decision on employment or decision on termination of the labor
contract of an industrial property representative being a member of the
organization (in case of change of a member on the organizations list of
industrial property representatives);
d) Fee receipt.
57.3 Procedures for processing dossiers of request for modification of
information on industrial property representation service organizations shall
be carried out like the procedures specified at Point 53.3. of this Circular.
58. Deletion of names of industrial property
representation service organizations
in the cases specified in Clause 2, Article 156 of the Intellectual
Property Law, the NOIP shall issue decisions on deletion of names of industrial
property representation service organizations; record the deletion of names of
industrial property representation service organizations from the national
register of industrial property representation; notify the deletion of names of
industrial property representation service organizations to competent agencies
that have granted business registration certificates or operation registration
certificates to those organizations; and publish the deletion of names in the
Industrial Property Official Gazette within two months from the dates of
decision signing.
Section 3. EXAMINATION OF
PROFESSIONAL QUALIFICATIONS FOR INDUSTRIAL PROPERTY REPRESENTATION
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The examination of professional qualifications for industrial property
representation (hereinafter referred to as the examination) according to the provisions
of Article 28 of the Decree on industrial property shall be conducted according
to the following specific provisions.
59.1 The Council for examination of professional qualifications for
industrial property representation:
The Council for examination of professional qualifications for
industrial property representation (hereinafter referred to as the Examination
Council) shall be set up by the NOIP director to prepare examination questions
and mark examination papers under the Regulation on examination of professional
qualifications for intellectual property representation promulgated by the NOIP
director (hereinafter referred to as the examination regulation).
The Examination Council is composed of the chairman being the NOIP
director, vice chairman, secretary and other members appointed by the chairman
from the list of experts qualified for joining the Examination Council. The
list of experts qualified for joining the Examination Council include experts
who are knowledgeable of the law on establishment of industrial property rights
and its practical enforcement from the NOIP and socio-professional
organizations engaged in industrial property representation approved by the
Minister of Science and Technology at the proposal of those agencies and organizations.
Decisions of the Council shall be adopted by votes of the Councils
members, of which two thirds are votes for.
Remunerations for the Councils members shall be paid with the collected
charge for examination of professional qualifications for industrial property
representation under the Examination Regulation.
59.2 Registration for participation in examination:
a) Only persons fully satisfying the conditions specified at Points a
through e, Clause 2, Article 155 of the Intellectual Property Law are allowed
to register for participation in examination according to the provisions of
this Point.
b) A dossier for registration for participation in examination filed
with the NOIP must comprise the following documents:
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(ii) Copy of the university diploma;
(iii) TDocuments proving that the dossier-filing person has been trained
in industrial property law or is experienced in this operation: Copies of
certificates of graduation from training courses on industrial property law
recognized by the Ministry of Science and Technology or certificate of the
training establishment where the dossier- filing person has made his/her
graduation or postgraduate dissertation on industrial property; written
certification of a competent agency that the dossier-filing person has been
personally engaged in the examination of industrial property registration
applications at a national or international industrial property office for five
or more consecutive years or in industrial property law-related activities
defined at Point d, Clause 1, Article 155 of the Intellectual Property Law
(including inspection, examination, procuracy, adjudication, legal affairs,
consultancy on industrial property law; or scientific research (with title of
industrial property researcher) or lecturing of industrial property);
(iv) Two 3 cm x 4 cm photos;
(v) Receipt of the examination fee.
59.3 For a valid dossier, the NOIP shall notify the dossier-filing
person of his/her qualification for participation in the examination, and
concurrently notify in detail the examination date, time, venue and schedule.
59.4 Examination contents and questions:
a) Examination contents include:
(i) Vietnams industrial property law and treaties to which Vietnam is a
contracting party;
(ii) Professional operation of compilation, filing and pursuit of
industrial property registration applications;
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(iv) Other contents, when necessary.
b) Examination questions accompanied with answers and a score frame
shall be prepared by the Examination Council, approved by the Examination Councils
chairman and kept secret until the examination starts.
59.5 Organization of examination
a) An examination shall be organized (irregularly) whenever there are
five or more persons properly register for examination.
b) Examination papers shall be marked by the Examination Council
according to the approved answers and score frame.
c) Examination results shall be notified by the NOIP to examinees.
Examinees may request the NOIP to review examination papers and the Examination
Council shall review examination papers according to the regulations of the
NOIP director.
Examination results shall be valid for two years for the grant of
industrial property representation service practice certificates.
Chapter IV
60. Building and management of a national database
on industrial property
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60.2 The national database on industrial property consists of disclosed
information specified below, which are collected in a selective and systematic manner
to suit the search purpose:
a) Industrial property registration applications;
b) Granted protection titles and industrial property rights recognized
for protection in Vietnam;
c) Invention patents granted by countries/regions with the most advanced
science and technology;
d) Some other types of industrial property protection title, depending
on information use purposes.
61. Access to and exploitation of industrial
property information in the national database
61.1 All organizations and individuals may access and exploit
information in the national database on industrial property after subscribing
as information users with the NOIP.
61.2 Persons who wish to access and exploit industrial property
information (information users) shall themselves search for information in the
national database. Information users may request the NOIP to search for
information in the national database and shall pay the prescribed search
charge.
62. Service of industrial property information
search
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62.2 Within one month after receiving a search request slip, the NOIP
shall reply to the information user.
For a valid search request (with a valid search request slip defined at
Point 62.1 of this Circular and a receipt of the search charge), the NOIP shall
reply by sending a search report to the information user, clearly stating the
results of information search made at the request of the information user.
For an invalid search request (with an invalid search request slip, unclear
search purpose and scope, no payment of the search charge), the NOIP shall
notify its refusal to fulfill the search request clearly stating the reasons
for refusal.
62.3 A search report contains only information found and indications to
origins of such information. If no information is found in sources requested to
be searched, the search report must also state that.
A search report must not contain comments or assessments of found
information.
62.4 A search report must clearly state the full name of the person
conducting the search and responsible for the search results.
63. Assurance of industrial property information
in localities
63.1 Depending on their respective conditions and capability, state administration
agencies in charge of industrial property (Science and Technology Services) in
provinces or centrally run cities may set up and manage industrial property
databases in order to assure industrial property information for research,
application, development, production and business activities and protect
industrial property rights in their respective localities.
63.2 State administration agencies in charge of industrial property in
the provinces or centrally run cities shall and may conduct activities to
assure industrial property information according to this Circular.
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64.1 All concerned organizations and individuals may request the NOIP to
issue copies of documents distributed or archived by the NOIP, including
certification of true copies of original or archived documents. Particularly
for documents related to unpublished applications, only applicants may request
issuance of copies. Persons requesting issuance of copies shall pay the
prescribed charge.
64.2 A request for issuance of copies of documents comprises:
a) Written request for issuance of copies of documents, made in two
copies;
b) Original documents distributed by the NOIP (if those documents are
not archived at the NOIP);
c) Receipt of the charge.
64.3 Within three working days after receiving a request for issuance of
copies, the NOIP shall issue copies or issue a notice on its refusal, clearly
stating the reason for refusal.
Chapter V
IMPLEMENTATION
PROVISIONS
65. Regulation on can-ying out of industrial
property procedures
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66. Transitional provisions
66.1 An invention registration application referred to in this Circular
means both an invention patent application and a utility solution patent
application referred to in previous regulations.
66.2 For an internationally registered mark already recognized for
protection in Vietnam according to previous stipulations, the issue of the
WIPOs Official Gazette or the NOIPs Industrial Property Official Gazette in
which that internationally registered mark is published is valid as an evidence
of rights to that mark.
66.3 Pending the promulgation of new charge and fee rates, the charge
and fee rates mentioned in this Circular comply with the Ministry of Finances
Circular No. l32/2004/TT-BTC of December 30, 2004, guiding the collection,
remittance, management and use of industrial property charges and fees.
66.4 Existing document forms will continue to be used until the NOIP
complete technical conditions and officially announce the document forms
specified in this Circular for application.
67. Implementation effect
67.1 This Circular replaces the following Circulars:
a) The Ministry of Science, Technology and Environments Circular No.
3055/TT-SHCN of December 31, 1996, guiding the implementation of the provisions
on procedures for establishment of industrial property rights and some other
procedures under the Governments Decree No. 63/CP of October 24, 1996,
detailing industrial property;
b) The Ministry of Science and Technologys Circular No. 29/2003/TT-BKHCN
of November 5, 2003, guiding the implementation of the procedures for establishment
of industrial property rights to industrial designs;
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67.2 This Circular takes effect 15 days after its publication in
CONGBAO.
MINISTER
Hoang Van Phong