Following on from our previous article on patent updates in Vietnam, this piece serves to summarise the key amendments made to both patent and trademark procedures by the NOIP commencing January 2018.
New regulations with regard to patent and trademark procedures in Vietnam came into force on 15th January 2018. These amended regulations aim to bring the Vietnamese intellectual property system in line with recent developments. Below are some of the main changes based on guidelines laid out in Circular No. 16/2016/TT-BKHCN from the Ministry of Science and Technology, Vietnam.
Late PCT National Phase Entry no longer allowed
Late entry into the PCT National Phase in Vietnam within 6 months of the 31-month deadline is now not allowed for applications having said deadline on or after 15 January 2018. This change entails that filing instructions by Applicants to their agents should be provided well before the 31-month deadline in order to allow ample time for preparation of the Vietnamese translation of the specification, which must be submitted at the point of national phase entry in Vietnam.
However, the National Office of Intellectual Property (NOIP) of Vietnam has not provided transition provisions in the newly-implemented Circular for PCT applications whose 31-month deadline has fallen before 15 January 2018, and whose 37-month time limit (after applying the previous 6-month grace period) falls on or after 15 January 2018. It is unclear as to whether a request for late national phase entry in Vietnam will be allowed for such applications. Clarification on this matter from NOIP should soon be forthcoming.
Security Regulations Concerning Inventions
Article 23(b) of Decree No. 122/2010/ND-CP of December 31, 2010 (“Decree 122”), specifies that inventions of Vietnamese organisations or individuals, or inventions created in Vietnam (by Vietnamese or by foreigners) must be filed firstly in Vietnam before filing at any overseas patent offices. Patent applications with regard to said inventions may be filed elsewhere after 6 months of having been filed in Vietnam, if they are determined not to be subject to secrecy restrictions.
An applicant must obtain permission to file overseas in addition to first filing in Vietnam. Article 23(b) also states that overseas filing is only permitted in jurisdictions with laws and regulations which recognise the protection of confidential inventions.
A provision within the new Circular permits the NOIP to refuse a patent application which has contravened security control regulations, as described in Decree 122. In light of this change, it is recommended that applicants abide with the aforementioned requirements of initial filing if they do not wish to risk losing the opportunity to protect Vietnamese inventions.
Changes to deadlines to respond to official communications from NOIP
The newly-implemented Circular affords Applicants more time to prepare and attend to issues or objections set out in Office Actions issued by NOIP. The deadline for responding to NOIP’s notices of formality examination has been revised from 1 month to 2 months (extendable one time only for 2 months). As for submitting a response to NOIP’s notice of substantive examination, the time limit has been revised from 2 months to 3 months (extendable one time only for 3 months).
Furthermore, the deadline to pay the fee for grant upon issuance of a notice of intention of grant is revised from 1 month to 3 months (extendable one time only for 3 months). All requisite fees in relation to requests for extensions of time must be paid before the expiration of the initial time limit for response.
International Registration of Trademarks
IP rights in Vietnam with respect to international registrations of trademarks through the Madrid system are established based upon the NOIP’s Decisions of Protection of International Registrations of Trademarks along with either the relevant copy of the International Registrations Gazette, issued by WIPO, or documents certifying the protection of an international registration in Vietnam, issued by the NOIP upon the applicant’s request.
Currently, applicants have 3 months to respond to Decisions of Refusal to grant protection title.
In another development, international registrations may now be either partially or totally refused upon substantive examination. Previously, all refusals were automatically deemed total refusals.
Responses to Notifications of Provisional Refusal of International Registrations of Trademarks will now be reviewed by the NOIP’s Geographical Indication and International Trademark Division. Previously, they had been handled by the Appeal and Enforcement Division. Presently, the Appeal and Enforcement Division will review Decisions of Refusal of International Registrations of Trademarks only.
Finally, in instances where an international registration application expires, it may now be converted to follow the national application procedure without need for substantive examination – NOIP will now only examine the application to check compliance with formality requirements. This shortens the examination procedure for international registrations designating Vietnam.
Responses to Notices of Examination
The deadline for responding to the NOIP’s notices of formality examination is now within two months of the notice having been issued – this is extendable for a further two months. Previously, this was set at just one month, with scope for a further month’s extension.
Similarly, the deadline for responding to the NOIP’s notices of substantive examination has increased to within three months of issue, extendable for a further three months. This was previously set at two months, with two months’ possible extension.
Lastly, the time-frame required for re-examination of applications is not supposed to exceed six months.
The NOIP will now examine notices of opposition before serving the notice on the applicant.
Where the NOIP considers an opposition to be baseless, it will not serve the opposition upon the applicant. The office will now merely inform the applicant of its refusal of the opposition. Previously, the NOIP’s practice was to serve the notice of opposition on the applicant regardless of whether there was any merit to the opposition.
If the opposition relates to the right of registration, and the NOIP is unable to identify whether the opposition should be accepted, the NOIP will inform the opponent so that they may decide whether to initiate court proceedings.
It is hoped that the provisions of the above Circular will be clarified, with supplementary guidance, in future Circulars and/or Decrees to be issued by NOIP and/or the Vietnamese Government, so that the amendments can be efficiently applied into practice.