Vietnam: Ignorance is not a strategy! – Part II/II

In first part of this article published in February 2007, we explained the importance of protecting patent rights in Vietnam. In the second and last part of this article, we summarize the framework for patent protection and enforcement in Vietnam.

Presently, the IP rights in Vietnam are governed by the Law on Intellectual Property 2005 and the Intellectual property related provisions of Civil Code 2005. These laws came into force on 1 July 2006, prior to that IP rights were governed solely by IP provisions stipulated in the Vietnam Civil Code. The administrative government body in-charge of handling IP matters is called – National Office of Intellectual Property (NOIP).

Vietnam is party to a number of international conventions and treaties on Intellectual Property. Vietnam became a party to Paris convention in 1967 and a member of Patent co-operation treaty in 1970. With the recent entry to World Trade Organization, Vietnam is also under an obligation to comply its domestic laws with TRIPS. In response to the various international obligations, Vietnam has been steadily improving the domestic IP infrastructure.

Patent Protection in Vietnam

Vietnam provides three types of patent protection viz. Invention patents, industrial design patents and utility solution patents.

(i) Invention is defined in Article 782 of the Civil Code as a technical solution that is worldwide novel, involves an inventive step and is capable of industrial application. Term of an invention patent is 20 years from the filing date.

(ii) Utility solution is defined in Article 783 of the Civil code as a technical solution that is worldwide novel and is capable of industrial application. Inventive step is not a requirement for patentability of utility solutions. Patent term for utility solutions is 10 years.

(iii) Industrial Design is defined as the shape of a product that is formed by lines, three-dimensional forms and colors or a combination thereof. To be patentable, an industrial design must have worldwide novelty and it must serve as a pattern for manufacture of industrial or handicraft products. The term of an industrial design is 5 years at first instance and is extendible for two further terms of 5 years each.

For inventions and utility solutions, certain type of subject matter is excluded from patentability. The excluded subject matter is summarized below –

(a) Discoveries, scientific theories;

(b) Systems, rules and methods for doing business;

(c) Systems and methods for education, teaching and training;

(d) Method for training animals;

(e) Linguistic systems, information systems, classification systems and documentation compiling systems;

(f) Designs and schemas for planning of constructions, projects for planning;

(g) Solutions which serve solely to obtain an ornamental or aesthetic result, but not technical result;

(h) Symbols, time tables, rules and regulations;

(i) Computer programs, layout-design of integrated circuits, mathematical methods and the likes;

(j) Plant or animal varieties;

(k) Diagnostic, therapeutic and surgical methods for the treatment of humans or animals;

Similarly, the following subject matter is excluded from patentability as industrial designs –

(a) External shape of products that is easily created by a persion with ordinary skill in the art

(b) External shape of products dictated merely by their technical or functional characters

(c) External shape of civil or industrial construction works

(d) Shape of product that is invisible in the process of normal utilization

Patent Enforcement in Vietnam

Patent enforcement infrastructure in Vienam is also constantly evolving and developing. To enforce a patent, infringement proceedings may be initiated at the NOIP. Proceedings for invalidation of a patent can also be initiated at the NOIP. Often, invalidation proceedings are part of an infringement proceding when the defendant invokes invalidation as a defense.

New IP laws provide for establishment of Experts for assessment of infringement. The NOIP plans to conduct professional examinations to assess individual candidates and certify them as ‘Experts’ for evaluation of infringements. Such candidates shall be assessed on their legal knowledge on IPR, technical qualifications and professional skills. In case of any dispute, these Experts shall be called upon by the NOIP or by the Courts for assistance in evaluating infringement.

During infringement proceedings in Vietnam, preliminary injunctions can be obtained to immediately stop the infringing activities. Once infringement is proven successfully, relief can be obtained in one of more of the three specified forms viz. (a) permanent injunction; (b) Damages and/or (c) account of profits. It should be noted that declarations as to non-infringement and relief against groundless threats are not available in Vietnam.

From the recent events like enactment of new IP laws and collaboration of NOIP with international patent offices, it appears that the patent protection and patent enforcement infrastructure in Vietnam is developing. Given the country’s rising importance on economic landscape coupled with the improvements of IP infrastructure, Vietnam may soon become a jurisdiction of strategic importance for patent applicants.