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Pursuant to Decree No. 63-CP of October 24, 1996 of the
Government detailing the provisions on industrial property;
The Ministry of Science, Technology and Environment
issues this Circular to stipulate in details and guide the
implementation of the procedures for making, filing and
examining applications for titles of protection, the
procedures for approving and registering contracts for the
transfer of industrial property right, the procedures for
considering applications for non-voluntary licenses, the
procedures for amending and extending the validity of titles
of protections for international registration of inventions,
utility solutions under the PCT Agreement and applications for
international registration of trademarks under the Madrid
Agreement and the procedures for the grating of industrial
property representative licenses.
Chapter 1
GENERAL PROVISIONS
Terminology
The terms used in this Circular shall be construed as
follows:
“The Decree” refers to Decree No. 63-CP of October 24,
1996 of the Government detailing the provisions on industrial
property;
“Application” refers to an application for title of
protection;
“Invention application”, “utility solution
application”, “industrial design application”,
“trademark application” and “appellation of origin
application” refer to an application for an invention
patent, an utility solution patent, an industrial design
patent, a certificate of registered trademark and a
certificate of the right to use the appellation of origin of
goods, respectively;
“International application” refers to an application
for international registration of an invention or an utility
solution filed in accordance with the PCT Agreement;
“International registration application” refers to an
application for international registration of a trademark
filed in accordance with the Madrid Agreement on the
international registration of trademark;
“Trademark” refers to a “trademark” as provided for
in Article 2 of the Decree;
“The subject named in document” is an individual, a
legal person or an organization, that makes, issues or signs
to certify the validity of a document.
Other terms shall be construed in accordance with the
Decree.
Certification of
documents:
Certification of signatures:
In the process of filing the procedures for the
establishment, maintenance, extension, execution, transfer ...
of industrial property rights as prescribed in this Circular,
the signature of the person named in papers and/or documents
used in transaction with the competent agencies, must be
certified that it is the true signature of such person and in
case where the signatory is the representative of the subject
named in the document, he/she must be certified to be
authorized to represent the subject named in document, in
accordance with the following stipulations:
For a subject having a lawful seal, the certification of
signature shall be made affixing his/her/its seal in the
signature;
For Vietnamese subject having no lawful seal, the
certification of signature must be done at the State Notary
Public or the office of the administration of the locality
where the subject resides or has its head office;
For a foreign subject having no lawful seal, the
certification of signature must be done at the Notary Public
or at agency having equivalent competence.
Certification of copies:
Every document which is a copy of any form must be
certified that it is duly copied from the original as
prescribed in Paragraph b) before being used as official
document in the process of filing the procedures related to
industrial property at the competent agencies.
A document shall be considered a true copy of an original
document if such copy is certified by one of the following
agencies: (i) the notary public, (ii) the People’s Committee
or a competent agency, (iii) the State agency or social
organization which has made the original document: if the copy
has many pages, each page must be certified or every two
consecutive pages must be sealed.
Certification of translations:
Any Vietnamese translation of a document must be certified
that it is translated verbatim from the original as prescribed
in Paragraph b) before being used as official document in the
process of filing the procedures related to industrial
property at the competent agencies.
The certification of a translation may be done in one of
the following ways: (i) public notary; (ii) certification of
the subject named in the original document; (iii)
certification of all parties to the contract or agreement (if
the original document is a contract or an agreement); (iv)
recognition by the agency competent to use such translation in
the process of carrying out the relevant procedures.
The person acting on
behalf of the subject to carry out the industrial property
procedures
Only persons mentioned in points 3.2 and 3.3 below
shall be entitled to act on behalf of the subject to
file application, supplement and amendment to the documents of
the application; receive and reply tot he comments of the
National Office of Industrial Property related tot he
application; to decide the continuation or suspension of the
process of requesting the protection; receive the title of
protection; undertake the maintenance, amendment and extension
of the validity of the title of protection as well as other
industrial property procedures with regard to the National
Office of Industrial Property and the competent agencies.
The National Office of Industrial Property shall be
entitled to transact only with the above-mentioned persons and
such transactions shall be considered the official
transactions with the subjects.
For entities who are entitled to directly file applications
and conduct relevant procedures provided for in Clauses 2 and
3.a. Article 15 of the Decree, the following persons shall be
entitled to conduct on behalf of the subjects the activities
mentioned in point 3.1 above:
The very individual or his/her representative at law (if
the subject is an individual);
The representative at law of the subject: an individual who
is a member of the subject and authorized by the
representative at law of the subject to represent; the head of
the representative office or branch of the subject, or a
person who is authorized by the representative at law of the
subject (if the subject is a legal person or an entity of
other type);
The head of the representative office in Vietnam of a
foreign subject, who is authorized by such subject to
represent it; the representative at law of an enterprise
established in Vietnam with 100 percent of investment capital
of the foreign subject, who is authorized by such subject to
represent it;
A person meeting one of the conditions prescribed in
paragraphs (i), (ii) and (iii) above who is also one of the
individuals or belongs to one of the legal persons or other
subjects – if the subject includes many individuals, legal
persons or other subjects – and if such person is authorized
by such individuals, legal person and other subjects to
represent them.
For subjects that are entitled only to file applications
and carry out relevant procedures through an Industrial
Property Service Organization prescribed in Clause 3.b) of
Article 15 of the Decree as well as any other subject carrying
out the said procedures through an Industrial Property Service
Organization, only those who have been granted Cards of
Industrial Property Representative, belong to Industrial
Property Service Organizations and have the written
authorization of the subjects can conduct activities mentioned
in point 3.1 above.
Authorization to
carry out industrial property procedures
An authorization to carry out industrial property
procedures must be made in writing (letter of procuration),
which must include the following contents:
(i) The name (surname), full address, telephone number, fax
number (if any) of the authorizing party; (ii) The name
(surname), full address, telephone number, fax number (if any)
of the authorized party; (iii) the scope authorization (the
tasks to be performed by the authorized party on behalf of the
authorizing party); (iv) the term of authorization; (v) the
place and date of making the letter of procuration; (vi) the
signature of the person who makes the letter of procuration
(certified in accordance with the provisions on the
certification of signatures).
The authorized party must be an individual or organization
entitled to carry out industrial property procedures as
prescribed in points 3.2 (ii), (iii), (iv) and 3.3 of this
Circular.
Any change in the scope of authorization and termination of
the authorization before schedule must be reported in writing
to the National Office of Industrial Property.
In the authorization scope stated in the letter of
procuration includes many separate procedures, the authorized
party can submit the copy of the letter of procuration,
provided that he/she has submitted the original letter of
procuration to the National Office of Industrial Property and
indicated the number and date of submitting the dossier
containing the original of the letter of procuration.
Chapter II
APPLICATIONS AND HANDLING OF APPLICATIONS
General requirements
regarding the application
The application must ensure the consistency as required in
Clause 2, Article 11 of the Decree and satisfy the general
formality requirements mentioned in point 5.2 below.
The application must satisfy the following general
formality requirements:
Each application shall be filed for only one title of
protection, the type of title of protection to be granted must
conform with the industrial property object described in the
application;
All documents of the application must be made in
Vietnamese, except for documents that can be made in other
languages as stipulated in point 5.3 below;
All documents of the application must be laid out
vertically and on one side of A4-format (210 mm ´
297 mm) paper, with four margins on all sides, each 20 mm
wide, except for documents added tot he application for reason
of necessity to support and further illustrate the application
the sources of which are not for inclusion into the
application, therefore may be otherwise laid out;
For documents that need to be made according to set forms,
such forms must be filled with items at the proper places;
Each kind of document must have the required number of
copies; if a document has many pages, each page must be
numbered at its center-top position with Arabic numerals;
All documents must be clearly typewritten or printed with a
permanent ink without any erasure or correction.
The following documents may be made in any language other
than Vietnamese language but must be translated into
Vietnamese:
The letter of procuration (if any);
Documents certifying the lawful right to file application,
if the applicant is given such right by another person
(inheritance certificate, certificate or agreement on the
transfer of the application filing right, including the
transfer of the application already filed; contract for job
assignment or labor contract...);
Document on assignment of the priority right (if the
application has a request for the priority right and such
right is given by another person);
Relevant documents evidencing the basis of enjoying the
priority right (the first application exhibition certificate);
The original documents or copies thereof included in the
application to support the application.
Requirements
regarding invention/utility solution application
In addition to the general requirements prescribed in point
5 of this Circular. invention/utility solution application
must satisfy the requirements prescribed in this point.
The application must comprises the following documents:
The declaration requesting
the grant of invention/utility solution patent, made under the
form issued by the National Office of Industrial Property, 3
copies;
The invention/utility solution description paper
(hereinafter referred to as the description paper), 3 copies;
The request for protection, 3 copies;
Drawings, diagrams, calculation tables ... (if required) to
further clarify the nature of the technical solution indicated
in the description, 3 copies;
The summary of the invention/utility solution, 3 copies;
The document certifying the lawful right to file
application if the applicant is entitled to such right from
another person (inheritance certificate, certificate or
agreement on the transfer of the application filing right; the
contract on work assignment or labor contract...), 1 copy;
The letter of procuration (if required), 1 copy;
The copy of the first application or exhibition certificate
if the application has a request for priority right under the
international agreement, 1 copy;
The vouchers of payment of application filing fee and
application publicizing fee, 1 copy;
The documents mentioned in point 6.1 above must be
submitted together. For the following documents, they can be
submitted within 3 months from the date of filing the
application:
The Vietnamese version of documents 6.1
(ii), 6.1 (iii) and 6.1 (v), if the application
includes an English, French or Russian version;
The original of document 6.1 (vii) if the application
includes a copy thereof;
The document 6.1 (viii), including its Vietnamese
translation.
The description paper must totally reveal the nature of the
technical solution requested to be protected. The description
paper must provide information to such an extent that based on
which a person with the average professional level in the
corresponding technical area can apply such solution.
The description paper must clarify the novelty, creativity
(if the protection object is an invention) and applicability
of the technical solution requested to be protected.
The description paper must include the following contents:
The international criteria for invention classification
(under the Strasbourg Agreement);
The name of the technical solution;
The area in which the technical solution is applied or
involved;
The technical situation of the above-said area at the time
of filing the application (the technical solutions already
known);
The nature of the technical solution;
A brief description of the attached drawings (if any);
A model of application of the technical solution;
The obtainable benefits (the effectiveness of the technical
solution).
The protection request aims to determine the scope (volume)
of the protection of invention/utility solution. The
protection request must be briefly and clearly presented in
conformity with the description and drawings, in which the new
characters of the technical solution requested to be protected
must be clarified.
A summary of the invention/utility solution aimed at
briefly publicizing the nature of the invention/utility
solution. The summary must reveal the essentials of the nature
of the technical solution for information purpose.
The requirements with respect to presentation and contents
of the description paper, the drawings, the protection
request, the summary of the invention/utility solution and
other documents of the invention/utility solution application
shall be prescribed by the National Office of Industrial
Property.
Requirements
regarding the industrial design application.
In addition to the requirements mentioned in point 5 of
this Circular, the industrial design application must also
satisfy the requirements prescribed in this point.
The application must comprise the following documents:
The declaration requesting the grant of industrial design
patent, made in the form set out by the National Office of
Industrial Property, 3 copies;
The description of the industrial design, 3 copies;
A set of photos or drawing of the industrial design, 6
copies;
The document certifying the legal right to file
application, if the applicant is entitled to such right from
another person (certificate of inheritance right; certificate
or agreement on the transfer of application filing right;
contract on work assignment or labor contract), 1 copy;
The document certifying the label ownership right if the
industrial design includes a label, 1 copy;
The letter of procuration (if required);
A copy of the first application or exhibition certificate
if the application has a request for priority right under the
international agreements, 1 copy;
The vouchers of payment of application filing fee and
application publicizing fee, 1 copy.
The documents mentioned in point 7.1 above must be
submitted at the same time. The following documents may be
submitted within 3 months from the date of filing the
application:
A Vietnamese version of 7.1 (ii) document, if the
application includes an English, French or Russian version;
Document 7.1 (v);
The original document 7.1 (vi), if the application includes
a copy thereof;
Document 7.1 (vii), including the Vietnamese translation
thereof.
The description of the industrial design must fully and
clearly indicate the nature of the industrial design and must
be in conformity with the set of photos or drawings and
include the following contents:
The name of the industrial design;
The international index for the classification of
industrial designs (under the Locarno Agreement);
The area of use of the products made upon the industrial
design;
Similar industrial designs already known;
A list of photos or drawings;
The nature of the industrial design, clearly indicating the
main external shaping features of the industrial design
requested to be protected as distinguished from those of the
industrial designs already known.
The set of photos or drawings must fully expose the nature
of the industrial design as described in order to determine
the scope (volume) of protection of such industrial design.
The photos/drawings must be clear and sharp, not causing
any confusion between the products made upon the industrial
design requested to be protected and other products.
All photos/drawings must be made on the same scale. The
size of each photo must not be smaller than 90 mm ´
120 mm and not larger than 210 mm ´
297 mm.
The requirements regarding the description and the set of
photos/drawings of the industrial design shall be prescribed
by the National Office of Industrial Property.
Requirements
regarding the trademark application.
In addition to the general requirements mentioned in point
5 of this Circular, the trademark application must satisfy the
requirements prescribed in this point.
The application must comprise the following documents:
The declaration requesting the grant of certificate of
registered trademark, on which the trademark sample is
fastened, made in the form set out by the National Office of
Industrial Property, 3 copies;
The regulation on the use of trademark in case the
trademark requested to be protected is a collective trademark,
1 copy;
A sample of the trademark, 15 copies;
A copy of the document certifying the lawful business right
(business license or certificate of business registration,
etc.), 1 copy;
The document certifying the lawful right to file
application, if the applicant is entitled to the application
filing right from another person (inheritance certificate or
agreement for the transfer of application filing right,
including the application already filed; contract for work
assignment or labor contract...), 1 copy;
The letter of procuration (if required);
A copy of the first application or exhibition certificate
if the application has a request for enjoying the priority
right under international agreements, 1 copy;
The document certifying the origin, awards, medals, in case
the trademark contains such information , 1 copy;
The permit(s) of the competent agency, incase the trademark
id printed with symbols, proper names, etc., as prescribed in
point g Clause 2, Article 6 of the Decree, 1 copy;
The voucher of payment of application fee, 1 copy.
The above-mentioned documents must be submitted at the same
time. The following documents can be submitted within 3 months
from the date of filing the application:
The original of document 8.1 (vi), if the application
includes a copy thereof;
Document 8.1 (vii), including the Vietnamese translation.
The description of the trademark in the declaration must
clarify the particularities of the trademark, clearly
indicating all constituent parts and overall significance of
the trademark. If the trademark contains non-Vietnamese
characters and words, their pronunciation must be clearly
defined (transcribed into Vietnamese) and if such words have
meanings, they must be translated into Vietnamese.
In case the letters, characters or words requested to be
protected are displayed in geometric forms as distinctive
elements of the trademark, the geometric form of such letters,
characters and words must be described.
In case the trademark includes numerals other than Arabic
or Roman numerals, such numerals must be converted into Arabic
numerals.
In case the trademark is composed of many separate parts,
which are, however, displayed at the same time on one product,
the position of each part of such trademark on the product or
the product’s container must be clearly indicated.
The list of products, services bearing the trademark
described in the declaration must be in line with or identical
to the kinds of products, services specified in the business
license or in the certificate of business registration and
must be classified in groups in accordance with the table of
international classification of products and services (under
the Nice Agreement).
The trademark sample attached to the declaration as well as
other trademark samples must be clearly displayed with a size
not exceeding 80 mm ´80
mm and the distance between the two closest points must be
shorter than 15 mm.
In case of a request for protection of colors, the
trademark sample must be displayed in the exact colors
requested to be protected.
If there is no request for protection of colors, all mark
samples must be displayed in black and white.
Requirements
regarding the appellation of origin of goods application.
In addition to the general requirements stipulated in point
5 of this Circular, the appellation of origin of goods
application must satisfy the requirements stipulated in this
point.
The application must comprise the following documents:
The declaration requesting for the grant of certificate of
the right to use the appellation of origin of goods, made
under the form set out by the National Office of Industrial
Property, 3 copies;
The copy of the document certifying the lawful business
right (the business license, certificate of business
registration, etc.), 1 copy;
The explanation of the peculiar quality of the products
bearing the appellation of origin of goods, with the
certification by a competent State agency, 1 copy;
The document of the competent agency certifying that the
products produced or traded by the applicant have peculiar
characteristics and quality and are produced on the territory
corresponding to the appellation of origin of goods (in
conformity with the explanation in document (iii)), 1 copy;
A copy of the title of protection of the appellation of
origin of goods granted by the country of origin, or a
document of the country of origin certifying that the right of
the applicant to use the appellation of origin of goods is
currently protected in the country of origin (in case the
appellation of origin of goods comes from a foreign country),
1 copy;
A map of the territory corresponding to the appellation of
origin of goods, in which the place where the applicant
produces or conducts business is indicated, 1 copy;
The letter of procuration (if required), 1 copy;
The voucher of payment of the application fee, 1 copy.
If the applicant applies only for the certificate of the
right to use an appellation of origin of goods which has
previously been registered, the application can be filed
without documents (iii) and (iv). If the appellation of origin
of goods is from a foreign country, the application can be
filed without documents (ii), (iii) and (vi).
The above-mentioned documents must be submitted at the same
time. The original of document 9.1 (vii) can be submitted
within 3 months from the date of filing the application if the
application includes a copy of the original.
The agency competent to certify the particularities of the
products bearing the appellation of origin of goods and
certify that the products produced by the applicant have such
particularities shall be the product quality control agencies
at the central level or of the locality indicated in the
appellation of origin of goods.
Filing the
application
The application may be filed at the National Office of
Industrial Property or at any other application receiving
places set up by the National Office of Industrial Property.
The application may also be sent by registered mails through
the postal service to the above-said application-receiving
places.
Receiving the
application
Upon receiving the application, the National Office of
Industrial Property shall have to: (i) check the list of
documents specified in the declaration; (ii) affix a seal on
the declaration certifying the date the application arrives at
the National Office of Industrial Property; (iii) make notes
on the disparity between the list of documents specified in
the declaration and the number of documents actually attached
to the application; (iv) conduct preliminary examination of
the application to consider whether or not to accept the
application in accordance with point 11.2 below; (v) send to
the applicant a declaration already affixed with the seal
certifying the arrival date of the application, the serial
number of the application and the result of the check on the
list of documents, with name and signature of the application
receiver; (the above-said declaration shall substitute the
receipt of the application).
The National Office of Industrial Property shall not accept
the application if it finds that the application has one of
the following failings:
The application does not include one of the following
required documents: the declaration, which must contain the
trademark sample and the list of products, services (in case
of a trademark application); the appellation of origin of
goods and the type of goods (in case of an appellation of
origin f goods application), the description of the
invention/utility solution, the request for protection (in
case of an invention/utility solution application); the
description of the industrial design and the set of photos and
drawings of the industrial design (in case of an industrial
design application), the letter of procuration (if required),
the voucher of payment of fees;
The form of protection (the type of title of protection
requested to be granted) is not in conformity with the
industrial property object described in the application;
The declaration has no signature or/and seriously erased or
modified.
If the application id not accepted, the National Office of
Industrial Property shall notify the applicant of the
reason(s) for non-acceptance. In case of an application sent
by post, the National Office of Industrial Property shall
notify in writing within 15 days from the arrival date of the
application; the National Office of Industrial Property shall
not have to send back the application’s documents to the
applicant, but shall have to return the fees already paid
together with the unaccepted application after deducting the
expenses for the return of fees.
Handling of the
documents of the application already accepted
After being accepted, the application shall be handled as
follows:
A set of documents comprising the necessary documents shall
be set apart to maintain the original state of the application
(called “dossier set” of the application);
All remaining documents shall be made into a set used for
examination in accordance with provisions of this Circular.
Formality examination
After being handled in accordance with point 12 of this
Circular, the application shall undergo the formality
examination as prescribed in this point.
The application shall be considered improper if it has one
of the following failings:
The application is made in any language other than
Vietnamese, except the case provided for in point 5.3 of this
Circular;
The declaration lacks information on the author (of an
invention, utility solution or industrial design) and on the
applicant, who fails to sign thereon, or whose signature is
not certified or the information on the representative is
erased or corrected;
There is ground to confirm that the applicant is not
entitled to file the application;
The application is filed not in accordance with Article 15
of the Decree;
The description, the summary, the request for protection of
invention, utility solution, the description of industrial
design are made in English/French/Russian language but the
applicant fails to add the Vietnamese versions thereof within
the time limit prescribed in Points 6.2 and 7.2 of this
Circular;
The letter of procuration is only a copy and the applicant
fails to add the original within the time limit prescribed in
points 6.2, 7.2, 8.2 and 9.2 of this Circular;
There exist in the application failings mentioned in point
13.3 below which invalidate the application, and though the
National Office of Industrial Property has requested it, the
applicant does not made the correction or the correction is
not up to requirement;
The objects described in the application are objects which
shall not be protected by the State as prescribed in Clause 4
of Article 4, Clause 3 of Article 5, Clause 2 of Article 6 and
Clause 2 of Article 7 of the Decree.
Handling the failings of the application in the formality
examination period
If there are in the application the following failings, the
National Office of Industrial Property shall notify the
applicant thereof and within 2 months from the date the
notification is made, the applicant shall have to correct such
failings:
One of the required documents is insufficient in the number
of copies;
The application fails to satisfy the requirement for
consistency;
The application fails to satisfy the requirement for
presentation;
The trademark application fails to clearly indicate the
type of trademark to be registered, is filed without
description of the trademark, or the products on the list are
not grouped or improperly grouped;
The information on the applicant is not consistent in
separate documents or is erased and corrected;
The application fees are not paid in full.
The applicant can, on his/her own initiative, amend and/or
supplement the documents of the application but is not allowed
to extend the scope (volume) of the protection and change the
nature of the industrial property object described in the
application and must pay the prescribed fees. If the amendment
extends the scope (volume) of the protection or change the
nature of the object, the applicant shall have to file a new
application and all procedures shall have to commence from the
beginning.
Determination of the date of valid application filing.
The date of valid application filing shall be determined as
follows:
With regard to application having no failings stipulated in
point 13.2 above, the date of valid application filing shall
be the date the application arrives at the National Office of
Industrial Property indicated in the seal of receiving the
application on the declaration;
With regard to application having no failings stipulated in
point 13.3 above, and failings, which have been corrected
within the prescribed time limit, the date of the valid
application filing shall be the date the application arrives
at the National Office of Industrial Property indicated in the
seal of receiving the application. If the failings are
corrected after such time limit, the date of valid application
filing shall be the the date all the failings have been
corrected to make the application valid.
Determination of the priority date
The priority date of the application shall be determined as
follows:
If the application does not claim the priority right, the
priority date shall be the date of valid application filing;
If the application claims the priority right, the priority
date shall be the date in such claim and adopted by the
National Office of Industrial Property.
The National Office of Industrial Property shall notify the
applicant of the result of formality examination of the
application in accordance with the following regulations:
If the application is considered valid, the National Office
of Industrial Property shall send to the applicant a
notification of acceptance of the application, clearly stating
therein the name, address of the applicant; the name of the
industrial property service organization (if the application
is filed through that organization); the name of the object
described in the application, the date of valid application
filing, the priority date; the serial number of the
application; the existing failings that have to be corrected
by the applicant and the time limit for the correction
thereof. If the applicant fails to correct within such time
limit, the consideration of the application shall not be
continued;
If the application is considered invalid, the National
Office of Industrial Property shall send to the applicant a
notification of non-acceptance of the application clearly
stating therein the name, address of the applicant, the name
of the industrial property service organization (if the
application is filed through that organization); the date the
application arrives at the National Office of Industrial
Property, the name of the object described in the application;
and the reasons for the non-acceptance of the application (the
reasons why the application is considered invalid);
If there still exist in the application failings mentioned
in point 13.3 above, the National Office of Industrial
Property shall send to the applicant a notification of the
result of the formality examination of application clearly
stating therein the name, address of the applicant, the name
of the industrial property service organization (if the
application is filed through that organization); the date the
application arrives at the National Office of Industrial
Property; the name of the object described in the application,
the failings that have to be corrected and the time limit set
for the correction.
The time limit for the formality examination is 3 months
from the date the application arrives at the National Office
of Industrial Property indicated on the application-receiving
seal; For an application with a document or documents being
filed late as described in points 6.2, 7.2, 8.2 and 9.2, the
time limit for the formality examination is 3 months from the
date such document is added to the application. Prior to the
expiry of the above time limit, the National Office of
Industrial Property shall have to conclude the formality
examination and notify the applicant in accordance with
provisions of point 13.7 above.
Announcement of valid
application
All invention, utility solution, industrial design
applications which are considered valid shall be announced by
the National Office of Industrial Property on the Industrial
Property Official Gazette within the following time limit:
An invention or utility solution application shall be
announced in the 19th months calculated from the
priority date, except the cases provided for in points b), c)
and d) below:
In case of a request for early announcement, the
application shall be announced within one month from the date
the National Office of Industrial Property receives the
request for early announcement or at a later date as
requested;
For an invention, utility solution application, if there is
a written request for content examination filed before the
date the application is properly accepted, the application
shall be announced within one month from the date of
acceptance of the valid application;
For an invention or utility solution application, if there
is a written request for content examination filed after the
date the application is properly accepted but prior to the
expiry of a time limit of 18 months calculated from the
priority date, the application shall be announced within one
months from the date the National Office of Industrial
Property receives a request for content examination;
An international application and industrial design
application shall be announced in the second month from the
date of acceptance of the valid application, except for cases
mentioned in point b) above.
The information related to a valid application shall be
announced on the Official Gazette and include: all information
on the valid application contained in the application
acceptance notification, excluding the information on the
failings which must be corrected; the summary of the invention
or utility solution accompanied by drawings if necessary; one
or a number of drawings and photos of the industrial design.
Every one can have access to more detailed information on
the nature of the object described in the application
announced on the Industrial Property Official Gazette, or can
request the National Office of Industrial Property to provide
such information and he/she shall have to pay the charges for
information supply in accordance with regulations.
Request for
examination of content of invention or utility solution
Within 42 months from the priority date of the invention
application and 36 months from the priority date of the
utility solution application, the applicant or any third party
can request the National Office of Industrial Property to
undertake examination of content of such
invention or utility solution.
The person who requests the examination of content of an
invention or utility solution filed after the announcement of
the application shall be announced on the Industrial Property
Official Gazette within one month from the date of receiving
the written request for examination and the applicant shall be
notified thereof.
The request for examination of content of an invention or
utility solution shall have to pay prescribed fees.
The request for examination of content of an invention or
utility solution filed after the announcement of the
application shall be announced on the Industrial Property
Official Gazette within one month from the date of receiving
the written request for examination and the applicant shall be
notified thereof.
The request for examination of content of an invention or
utility solution filed before the announcement of the
application shall
be announced together with the application in accordance with
points 14.1 c) and d) of this Circular.
15.3. Except for the case where the request for content
examination is written in the declaration by the applicant
him-herself, the request for examination of content of an
invention or utility solution must be made in writing, clearly
stating therein the name, address of the person who requests:
the serial number and the date of filing the application of
invention or utility solution the content of which is
requested to be examined; the name, address of the applicant,
the name of such invention, utility solution, and must be
accompanied by the receipt or voucher of payment of
examination fee.
16. Examination of
the content of the application
16.1. The examination of the content of the application
shall be undertaken by the National Office of Industrial
Property in accordance with this point with respect to:
All trademark, industrial design and appellation of origin
of goods applications if such applications have been properly
accepted and the applicants have paid content examination fees
All international registration applications, and
Invention or utility solution applications including
international applications, which have been properly accepted
and if there are requests for content examination filed at the
National Office of Industrial Property within the time limit
prescribed in point 15 of this Circular.
16.2. The content examination aims to determine the
possibility of protection of the object described in the
application in accordance with the criteria for the protection
or to determine the scope (volume) of the protection.
16.3. Within the time limit for content examination
application, the National Office of Industrial Property shall
have to notify the applicant and the person who has requested
the content examination of the result of the content
examination in accordance with the following regulations:
If the industrial property object is not up to the criteria
for protection, the notification of result of the content
examination must clearly state the reason(s) for refusal to
grant the title of protection and set the time limit of 2
months from the date of notification for the application to
appeal;
If the industrial property object is up to the criteria for
protection but the protection scope (volume) must be narrowed
or the application still has failings, the notification of the
result of the content examination must clearly state such
matters and set the time limit of 2 months from the date of
notification for the applicant to appeal or correct the
failings;
If the object is up to the criteria for protection,
including the case mentioned in point b) above, the
notification of the result of the content examination shall
request the applicant to pay the fee for announcement of title
of protection, the fee for registration and grant of title of
protection and the fee for maintenance of the first year’s
validity (with respect to inventions and utility solutions).
Within the content examination time limit, the applicant
can, on his/her own initiative, amend and/or supplement the
documents included in the application and shall have to pay
the prescribed fees.
The National Office of Industrial Property can request the
applicant to amend and/or supplement documents within the set
time limit. If the applicant fails to amend and/or supplement
at the request of the National Office of Industrial Property
without plausible reasons, the application shall be assumed
withdrawn.
The amendment and/or supplement must not charge the nature
of the object or extend the scope (volume) of the protection
defined in the application.
The content examination time limit shall be: (i) 18 months
for an invention application, 9 months for a utility solution
application calculated from the date of receiving the request
for content examination if such request is filed after the
announcement of the application, or from the date of
announcing the application if the request is filed before the
announcement of the application; (ii) 9 months for an
industrial design application and trademark application from
the date of signing the notification of acceptance of the
valid application; (iii) 6 months for an appellation of origin
of goods application calculated from the date of signing the
notification of acceptance of the valid application.
If during the application content examination, the
applicant wishes to, or at the request of the National Office
of Industrial Property, amends and/or supplements documents,
the content examination time limit can be extended to cover
the period for the amendment and/or supplement.
Prior to expiry date of the content examination time limit,
the National Office of Industrial Property shall have to
notify the applicant and the person requesting the examination
of the result of the content examination in accordance with
point 16.3.
Chapter III
TRANSFER OF INDUSTRIAL PROPERTY RIGHTS
Contract for the
transfer of industrial property right
A contract for the transfer of industrial property right is
a contract for transferring the ownership over an industrial
property object or a contract for transferring the right to
use an industrial property object.
A contract for the transfer of the ownership over an
invention, utility solution, industrial design or trademark
must include the following main contents:
The name (surname) and full address of the transferor and
the transferee;
The basis for the transfer (title of protection already
granted or transferred to the transferor);
The object of the transfer (the whole ownership right over
the whole volume of the protection of the industrial property
object or over part of the volume of trademark protection or
part of the list of goods and services);
The price for the transfer;
The rights and obligations of each party, including
corresponding obligations which must not contravene Article 40
of the Decree;
The conditions for the amendment, termination or
invalidation of the contract;
The method of settling complaints and disputes;
The signing date and place;
The signature of the parties or their authorized
representatives, together with the names, titles of the
signatories and certification of signatures.
The contract for the transfer of the right to use the
invention, utility solution, industrial design or trademark
(“License contract”) must include the following contents:
The names (surname) and full address of the license
transferor and transferee;
The basis for transferring the license (the title of
protection already granted to the license transferor or the
exclusive license contract);
The scope of the license, which includes:
The type of license (exclusive/non-exclusive);
The object of license determined by the restrictions on the
right to use (the protected acts of use) and the restrictions
on the industrial property object (the volume of protection of
the industrial property object);
The territorial restriction (the Vietnamese territory);
The duration (the duration of protection of industrial
property object).
In case of a sub-license, the license scope must fall
within the license scope of the exclusive license contract on
the corresponding sub-license;
The license price;
The rights and obligations of each party, including
corresponding obligations which must not contravene Article 40
of the Decree;
The conditions for the amendment, termination or
invalidation of the contract;
The method of settling complaints and disputes;
The signing date and place;
The signatures of the parties or their authorized
representatives, together with the name and title of the
signatories and certification of the signatures.
The license contract must not contain any unjustifiable
provision on restrictions on the rights of the license
transferee, especially the restriction provisions not derived
from the rights of the license transferor over the industrial
property object or not for the purpose of protecting such
rights, such as:
Provisions directly or indirectly restricting the export of
products manufactured under the license to territories where
the license transferor is not the owner of corresponding
industrial property object;
Provisions compelling the transferee of a trademark license
to purchase the whole or part of the materials, components or
equipment of the license transferor or of a person appointed
by the license transferor, without aiming to ensure the
quality of products manufactured by the transferee;
Provisions forbidding the license transferee to modify the
industrial property object (except trademark), or compelling
the license transferee or the right to file application for
industrial property protection or industrial property right
over such modifications.
Provisions forbidding the license transferee to appeal
against the validity of the industrial property right, or the
license transferor’s right to transfer license.
If the transfer of industrial property right is part of
another contract, the content of the industrial property right
transfer shall be made into a part distinct from the other
parts of the contract and shall comply with the provisions of
this Point.
Types of contracts
for the industrial property right transfer which must be
approved and registered
18.1. According to Clause 5 Article 38 and Clause 5,
Article 62 of the Decree, all contracts for the transfer of
ownership over or the right to use industrial property object
in the following cases must be approved by the Minister of
Science, Technology and Environment before being registered in
accordance with Article 42 f the decree and point 20 of this
Circular:
One of the parties (the transferor or the transferee) is a
State organization or has capital contribution from the State,
and the other party is an individual or a non-State
organization;
The transferor is an individual, legal person or any other
Vietnamese entity and the transferee is a foreign individual
or organization.
18.2. Al contracts for the transfer of ownership or the
right to use an industrial property object - including
contracts already approved - must be registered in accordance
with Article 42 of the Decree and point 20 of this Circular.
Procedures for
approval of the contract for industrial property right
transfer
19.1. The dossier of approval of the contract (hereinafter
referred to as approval dossier) shall comprise the following
documents:
The declaration requesting the approval of the contract for
the transfer of industrial property rights, made according to
the form set out by the National Office of Industrial
Property, in 3 copies, in which the person who requests the
approval must be a State organization or an organization
having capital contribution from the State if the contract
falls into the category defined in 18.1 (i); or a Vietnamese
party if the contract falls into the category defined in 18.1
(ii);
Two originals or two copies of the contract, including
appendix or appendices (if any); If the contract is made in
any language other than Vietnamese, it must be accompanied by
the Vietnamese translation;
The original of the title of protection (in case of
assignment of ownership over an industrial property object),
or a copy of (in case of assignment of the right to use the
industrial property object), if the contract to be approved is
a sub-contract, it must be accompanied by a copy of the
certificate of registration of the exclusive contract on the
corresponding sub-contract;
The written agreement made by the co-owners on the transfer
of the right if the corresponding industrial property right is
under joint ownership; in the event such an agreement cannot
be reached, there must be a written report explaining the
reasons for the objection of the remaining co-owners;
The business license of the transferee in case of the
transfer of ownership right or the transfer of the right to
use a trademark;
The voucher of payment of the contract approving fee;
The letter of procuration (if any).
The approval dossier shall be filed to the National Office
of Industrial Property in accordance with provisions on the
filing of application (point 10 of this Circular).
The time limit for filing the approval dossier is 60 days
from the date of signing the contract. Such time limit can be
extended if the applicant can give plausible reasons for the
delay.
The National Office of Industrial Property shall have to
receive the approval dossier in accordance with provisions on
receiving application in point 11 of this Circular, with
proper amendments, including the documents mentioned in point
11.2 (i): the declaration; the contract for the transfer of
industrial property rights; the voucher of fee payment and the
letter of procuration.
The National Office of Industrial Property shall have to
examine the approval dossier within 2 months from the date of
receiving the dossier, in accordance with the following
regulations:
If the approval dossier is valid and the content of the
contract conform with the regulations, the National Office of
Industrial Property shall report the result of examination of
the approval dossier and propose to the Minister of Science,
Technology and Environment to issue a decision to approve of
the contract within 15 days from the date of receiving the
report of the National Office of Industrial Property.
If the dossier still has failings and such
failings are correctable (except for the cases defined in
paragraph c) below); the National Office of Industrial
Property shall suggest the person who has filed the dossier to
correct such failings within an appropriates time limit.
The time limit for person who has filed the
dossier to correct the failings of the dossier shall not be
accounted for in the time limit foe examination of dossier.
In the event the dossier is invalid for
following reasons, the National Office of Industrial Property
shall propose to the Minister of Science, Technology and
Environment to refuse approval of the contract for the
transfer of industrial property rights:
The person who has filed the approval dossier
fails to correct the failings within the time limit set by the
National Office of Industrial Property;
The person who has filed the approval dossier
is not the one defined in point 19.1 (i);
The transferor is not the owner of the title of
protection (in case of the transfer of the ownership over
industrial property objects); or is neither the owner of the
title of protection nor the transferee of an exclusive license
nor entitled to transfer the sub-license with respect to the
corresponding industrial property object (in case of the
transfer of the right to use industrial property object);
The transferee has no license for trading in
goods/services in conformity with the certificate of
registration of corresponding trademarks (in case of the
transfer of industrial property rights over trademarks)
The corresponding industrial rights is no
longer in the period of protection validity; or that
industrial property object is in dispute;
There is ground to confirm that the transfer
can infringe upon the industrial property rights of a third
party;
The contract has a content not in conformity with
provisions on the transfer restrictions, and/or has not the
required contents as prescribed in Article 38 of the Decree
and points 17.2, 17.3, and 17.4 of this Circular.
The contract has no provision on price or the price for the
transfer is lower than the minimum price or higher than the
maximum price as prescribed;
The contract does not contain all the signatures of the
transferor and the transferee and/or the signatures are not
certified to be legitimate;
The signatory(ies) to the contract has (have) no competence
to sign.
Before proposing the refusal to approve the contract, the
National Office of Industrial Property shall notify the
applicant of the result of the examination of the approval
dossier, the planned refusal, the reason for refusal and the
appropriate time limit for the applicant to appeal. If after
such time limit the applicant has no protest or make an
unsound protest, the National Office of Industrial Property
shall officially propose to the Minister of Science,
Technology and Environment to reject the approval of the
contract.
The procedures for
registration of the contract for the transfer of industrial
property rights
20.1. Dossier requesting the registration of the contract
(hereinafter referred to as registration dossier) must
comprise the following documents:
The declaration to request for the registration of the
contract for industrial property right transfer, made in the
form set out by the National Office of Industrial Property, 2
copies;
Two originals or two copies of the transfer contract,
including appendix(ces) thereof (if any); in case the contract
is made in any language other than Vietnamese, there must be
the Vietnamese translation attached thereto;
The original of the title of protection (in case of the
transfer of ownership over industrial property object); or a
copy of such title of protection (in case of the transfer of
the right to use industrial property object), if the contract
to be registered is a sub-license contract, it must be
accompanied by the certificate of registration of the
exclusive license contract on the corresponding sub-license;
The written agreement made by the co-owners on the
transfer, if the transferred industrial property right is
under joint ownership, or if such an agreement cannot be
reached, there must be a written report explaining the reason
s for the objection of the remaining co-owners;
The business license of the transferee in case of the
transfer of the ownership over or the right to use trademarks;
The contract approval decision of the Minister of Science,
Technology and Environment (if the contract is required to be
approved);
The voucher of payment of contract registration fee;
The letter of procuration (if required);
Where the procedures for both the approval and registration
of the contract must be carried out, the documents of the
approval dossier already filed shall be considered those of
the registration dossier.
20.2. The registration dossier shall be filed and received
as the case with the approval dossier (points 19.2 and 19.3 of
this Circular).
20.3. The National Office of Industrial Property shall have
to examine the registration dossier within 2 months from the
date of receiving the dossier. For the contract already
approved, the time limit shall be 15 days.
If the registration dossier is valid and the content of the
contract conforms with the regulations, the National Office of
Industrial Property shall issue a decision to grant the
certificate of registration of the contract for the transfer
of ownership over industrial property objects, and the title
of protection in case of the transfer of trademark with
respect to a part of the list of products or services; or the
certificate of registration of license contract, and carry out
the following procedures:
Making entries into the national register of industrial
property and the register of contracts for the transfer of
ownership over industrial property objects or the register of
license contracts in corresponding cases;
Writing down in the title of protection (in case of the
transfer of ownership over industrial property object) and
granting the title of protection tot he transferee of
ownership over trademark with respect to a part of the list of
products or services;
Affixing a registration seal on 2 copies of the contract
and giving one copy tot he registration dossier submitter and
keeping the other copy;
Granting to the registration dossier submitter one copy of
the certificate of registration of the contract for the
transfer of ownership over industrial property objects or of
the certificate of registration license contract;
Publicizing the decision on granting the certificate of
registration in the Industrial Property Official Gazette;
If the dossier still has failings which are correctable
(except for the cases defined in paragraph c) below), the
National Office of Industrial Property shall notify the
registration dossier submitter and request him/her to correct
such failings within an appropriate time limit.
The time limit for the registration dossier submitter to
correct the failings of the dossier shall not be accounted for
in the time limit for examination of dossier.
If the registration dossier is improper for the following
reasons, the National Office of Industrial Property shall
reject the registration of the contract:
The registration dossier submitter fails to correct the
failings within the time limit fixed by the National Office of
Industrial Property or the correction does not meet the
requirement;
The registration dossier submitter is neither the
transferor nor the transferee of such transfer contract nor
the authorized industrial property representative as
prescribed;
The transferor is neither the owner of the title of
protection (in case of transfer of ownership over industrial
property object); nor the owner of the title of protection nor
the transferee of exclusive license entitled to transfer
sub-license with respect to industrial property objects (in
case of license transfer);
The transferee has no license for trading in the
products/services defined in the certificate of registration
of corresponding trademarks (in case of the transfer of
industrial property ownership over trademarks);
The industrial property right is no longer in the period of
protection validity; or is in dispute;
There is ground to confirm that the transfer of industrial
property rights shall infringe upon the industrial property
rights of a third party;
The contract has a content not in conformity with
provisions on transfer restrictions as prescribed in Article
38 of the Decree, and/or has not the required contents as
prescribed in points 17.2, 17.3 and 17.4 of this Circular;
The contract does not contain all the signatures of the
transferor and the transferee and/or such signature are not
certified to be legitimate;
The signatory(ies) to the contract has(have) no competence
to sign;
There is no decision on approval of the contract (in case
the contract is required to be approved).
Before making the official refusal to register the
contract, the National Office of Industrial Property shall
notify the registration applicant of the result of examination
of the registration dossier, the planned refusal, the reasons
therefore and set an appropriate time limit for the
registration applicant to make appeal. If after such time
limit the applicant does not have any protest or make unsound
protest, the National Office of Industrial Property shall
announce the refusal to register the contract for transfer of
industrial property rights, clearly stating the reasons.
Examination of the
application for non-voluntary license
21.1. The non-voluntary license application dossier must
comprise the following documents
The declaration to request for the non-voluntary license,
made in the form set out by the National Office of Industrial
Property;
The documents indicating its special significance on
security, national defense, protection of the people’s
health and environment of the relevant invention, utility
solution or industrial design and documents evidencing that
the relevant invention, utility solution, industrial design is
not used by the industrial property owner (or the person who
is transferred the whole right to use such object) without
proper reasons or used at a level not satisfying the needs of
security, national defense, protection of the people’s
health and the environment;
The documents showing the capability of the applicant of
using the invention, utility solution or industrial design and
the conditions which are proper in the applicant’s view and
already offered but not accepted by the industrial property
owner (or the person who is transferred the whole right to use
industrial property object) without any proper reason;
The vouchers of payment of fee for granting non-voluntary
license;
The letter of procuration (if required).
21.2. The non-voluntary license application dossier must be
submitted to the National Office of Industrial Property.
21.3. Upon receiving the non-voluntary license application
dossier, the National Office of Industrial Property shall
examine the dossier in accordance with provisions of Clause 5
Article 51 of the Decree. The procedures for examination of
the non-voluntary license application dossier are similar to
those for approval of the contract for the transfer of
industrial property rights (point 19 of this Circular).
Chapter IV
HANDLING OF THE
INTERNATIONAL APPLICATION OF INVENTION/UTILITY SOLUTION AND
APPLICATION FOR INTERNATIONAL REGISTRATION OF TRADEMARKS
The procedures
carried out with regard to the National Office of Industrial
Property
The regulation on the filing of application and carrying
out other relevant procedures before the National Office of
Industrial Property mentioned in Clauses 2 and 3 Article 15 of
the Decree and Point 3 of this Circular shall also apply to
the procedures carried out with regard to the National Office
of Industrial Property for international application with
respect to inventions, utility solutions or trademarks
mentioned in this Chapter.
Handling of
international application with respect to inventions/utility
solutions under the PCT Agreement.
The National Office of Industrial Property has the
responsibility to:
Receive Vietnamese-origin international applications;
Collect fees and remit such fee to the International Bureau
and the International Search Office in accordance with
provisions of the Agreement;
Check to see whether such prescribed fees are paid in time
or not;
Examine and handle Vietnamese-origin international
applications in accordance with provisions of the Agreement;
Determine the object requested to be protected: if the
object requested to be protected involves a nation secret ,
the following procedures shall not be continued and the paid
fees shall be returned to the applicant after deducting fees
for sending and copying the international application;
Send one copy (dossier copy) of the Vietnamese-origin
international application to the International Office and
another (reference copy) to the International Reference
Office;
Send and receive mail from the applicants and from
international offices.
Languages
The Vietnamese-origin international applications to be
filed to the National Office of Industrial Property must be
made in English or Russian. Each application shall be made in
3 copies.
In cases the number of copies is insufficient, the National
Office of Industrial Property shall provide the remaining
copies and the applicant shall have to pay fee for copying
international application.
The International Search Office and the International
Preliminary Examination Office
With regard to Vietnamese-origin international
applications, the competent International Search Offices and
the International Preliminary Examination Offices shall be the
Patent Offices of Australia, Austria, Russia, Sweden and the
European Patent Office.
The international application designating Vietnam
If the international application designates Vietnam, the
National Office of Industrial Property shall be the designated
office. In this case, in order to enter into the national
phase, within 21 months from the priority date, applicant must
file to the National Office of Industrial Property:
The declaration to request the grant of invention/utility
solution patent, made in the form set out by the National
Office of Industrial Property, 3 copies;
Three copies of the international application (if the
applicant wishes to enter into the national phase before the
date of international publication);
The Vietnamese translation of the international application
(including: the description, the request for protection (the
original thereof already filed; the amended version and
explanation under Article 19 of the PCT Agreement), the
summary, legends of the drawings), 3 copies;
The national fee.
The application selecting Vietnam
If the application for international preliminary
examination selects Vietnam, the National Office of Industrial
Property shall be the selected agency. In this case, and if
the selection of Vietnam is made within 19 months from the
priority date, in order to enter into the national phase, the
applicant must, within 31 months from the priority date, file
to the National Office of Industrial Property:
The declaration requesting for the grant of an
invention/utility solution patent, made in the form set out by
the National Office of Industrial Property, 3 copies;
The Vietnamese translation of the international application
(including: the description, the request for protection (the
original thereof already filed, the amended version and the
explanation under Article 19 of the PCT Agreement), the
summary, legends of the drawings), 3 copies;
The Vietnamese translation of the appendice and reports on
the international preliminary examination, 3 copies;
The national fee.
Documents requesting the priority right
To be entitled to the priority right, the submitter of an
international application must submit to the International
Office the necessary documents in accordance with Rule 17.1
(a) of the Regulation on the Implementation of the Agreement;
and must submit to the National Office of Industrial Property
3 copies of the Vietnamese translation of such documents
within the time limit mentioned in points 23.4 and 23.5 above.
Amendment and supplement to documents in the national phase
Pursuant to Rule 51bis of the Regulation on the
Implementation of the PCT Agreement, the applicant must submit
the letter of procuration, the document on the transfer of the
right to file application in the international phase (if
any)… within 24 months from the priority date in case of the
international application designating Vietnam and 34 months in
case of the international application selecting Vietnam.
Pursuant to Article 2 and Article 41 of the PCT Agreement,
in the national phase the applicant can amend, supplement the
documents of the application in accordance with provision of
point 16.4 of this Circular.
The time limit for commencing the national phase
The time limit for commencing the handling of the
international application designating Vietnam or selecting
Vietnam in the national phase shall be calculated from the
first day of the 22nd months from the priority date
in case Vietnam is selected and such selection is made prior
to the end of 19-month period calculated from the priority
date, of the applicant does not wish to enter into the
national phase prior to the above-mentioned time limit.
Examination of the international application
The international applications shall be examined in terms
of their formality and contents in accordance with procedures
applicable to the national applications.
International applications assumed to be withdraw
Besides the cases assumed to be withdrawn as provided for
in the PCT Agreement and the Regulation on the Implementation
of the Agreement, in the event the national fee is not paid to
the National Office of Industrial Property or there is no
Vietnamese translation after the expiry of the time limit
prescribed in points 23.4 and 23.5, the international
applications designating Vietnam shall be assumed to be
withdrawn.
Fees
The submitter of the Vietnamese-origin international
application must pay fees at levels and in accordance with
procedures provided for in the Regulation on the
Implementation of the PCT Agreement and in accordance with
Regulations of the Ministry of Finance, the Ministry of
Science, Technology and Environment.
Making and filing the
application for international registration of
Vietnamese-origin trademark abroad under the Madrid Agreement
24.1. Every individual, legal person or other entity shall
have the right to file application for international
registration of Vietnamese-origin trademarks under the Madrid
Agreement provided that such trademarks have already been
registered in Vietnam.
24.2. Application for registration
An application for international registration of
Vietnamese-origin trademarks must be made in French and in the
form provided free of charge by the National Office of
Industrial Property, by way of filling in items for the
applicant (except items for the National Office of Industrial
Property and the International Office) and must be accompanied
with trademark samples. The application must clearly specify
the Madrid Agreement member countries where the applicant wish
to have his/her trademark protected. The applicant must
estimate the total of fees to be paid to the International
Office in accordance with the fee index printed in the
application form. If the applicant believes that the estimated
fee amount is correctly calculated or after being notified by
the National Office of Industrial Property of the exact amount
of fee to be paid, the applicant shall have to pay such fee to
the International Office. In addition, the applicant has to
pay additional fee to the National Office of Industrial
Property as prescribed.
The application-receiving agency
The application for international registration of
trademarks shall be filed to the International Office via the
National Office of Industrial Property.
The date on which the National Office of Industrial
Property receives the application shall be considered the date
the application is received by the International Office if the
International Office receives the application within 2 months
from such date.
Filing of application to the International Office
After the application is filed to the International Office,
all transactions between the applicant and the International
Office must be conducted through the National Office of
Industrial Property including the amendment of documents,
restrictions on the list of products, assignment of registered
rights.
Handling of
application for Vietnam-designated international registration
of trademarks
25.1. After receiving the notice from the International
Office on the application Vietnam-designated international
registration of trademarks, the National Office of Industrial
Property shall examine the content of such application as is
the case with the trademark application directly filed to the
National Office of Industrial Property. Within 12 months from
the date the trademark is internationally registered, the
National Office of Industrial Property shall have to confirm
the possibility of the mark being protected. If the trademark
is impossible to be protected or partly rejected, the National
Office of Industrial Property shall, within the above-said
time limit, notify in writing the applicant through the
International Office of the reason for the rejection.
Also within the above time limit, if there is no
notification of rejection from the National Office of
Industrial Property, the trademark shall be protected in
Vietnam.
Within 3 months from the date the National Office of
Industrial Property sends the notification of rejection, the
applicant can file a complaint against the decision of the
National Office of Industrial Property, the procedures for
making and settling the complaint are similar to those for
trademark application directly filed to the National Office of
Industrial Property. The National Office of Industrial
Property shall notify the applicant and the International
Office of the result of the settlement of the complaint.
25.3. The trademark accepted for its protection in Vietnam
under the Madrid Agreement shall be publicized on the
Industrial Property Office Gazette. The scope (volume) of the
protection shall be defined upon the content of registration
of such trademark endorsed by the World Intellectual Property
Organization (WIPO) and certified by the National Office of
Industrial Property.
Chapter V
AMENDMENT OF TITLE OF
PROTECTION; MAINTENANCE OF VALIDITY OF TITLE OF PROTECTION OF
INVENTION, UTILITY SOLUTION; EXTENSION OF VALIDITY OF TITLE OF
PROTECTION OF INDUSTRIAL DESIGN; TRADEMARK AND APPELLATION OF
ORIGIN OF GOODS
Amendment of title of
protection
The owner of a title of protection is obliged to notify in
writing the National Office of Industrial Property of every
change in the name address of the owner of title of
protection.
The owner of title of protection has the right to request
the National Office of Industrial Property to narrow the scope
(volume) of industrial design and trademark protection by
excluding a number of details of the trademark without
substantially changing such trademark; reduce a number of
products on the list of products and/or services specified in
the title of protection of mark.
To amend the above-said contents, the owner of the title of
protection must file an application foe amendment of the title
of protection to the National Office of Industrial Property
accompanied with (i) the original of the title of protection;
(ii) documents certifying the changes in the name and address
of the owner of the title of protection; (iii) two sets of
photos or drawings of the industrial design plans to be
excluded; (iv) 10 samples of the trademark already modified;
(v) the voucher of payment of fee for amendment of the title
of protection; (vi) the letter of procuration (if required).
The National Office of Industrial Property shall examine
the application for amendment of the title of protection
within 2 months from the date of receiving the application. If
it deems that the application is valid and the amendment
neither extends scope (volume) of the protection nor
substantially change the nature of the protected object, the
National Office of Industrial Property shall amend the title
of protection, register and publicize such amendment on the
Industrial Property Official Gazette. Otherwise, the National
Office of Industrial Property shall notify the applicant of
the rejection of amendment and clearly define the reasons
therefor.
Maintenance of
validity
To have the validity of his/her title of protection of
invention, utility solution maintained, the owner of the title
must pay the fee foe maintenance of validity within 6 months
prior to the date of validity expiry. Such fee may be paid
later than the above-said time limit, but not later than 6
months from the expiry date. Failing this, the owner of the
title of protection shall have to pay an additional 10% of fee
for each month of delayed payment.
Extension of validity
To have his/her title of protection extended, within 6
months prior to the date of validity expiry of the title of
protection, the owner of the title must file an application
therefor to the National Office of Industrial Property.
The application for extension of validity can be filed
later than the above-said time limit, but not later than 6
months from the expiry date of validity of the title of
protection. Failing this, the applicant must pay a fee for
extension of validity and an additional 10% for each months of
delayed payment.
The dossier of application for the extension of validity of
title of protection must include the following documents:
The declaration to request for extension of validity of the
title of protection, made in the form set out by the National
Office of Industrial Property, 2 copies;
The original of the title of protection;
The voucher of payment of fee for extension;
The letter of procuration (if required).
The National Office of Industrial Property shall have to
examine the application foe extension within 2 months from the
date of receiving the application. The National Office of
Industrial Property shall issue a decision on extension, note
down such extension in the title of protection, register and
publicize such extension on the Industrial Property Official
Gazette, except for the following cases:
The extension application is invalid, or filed not in
accordance with prescribed procedures;
There is ground to confirm that the owner of certificate of
the right to use the appellation of origin of goods does not
use such trademark or appellation of origin of goods or has
not used such object for the last 5 consecutive years prior to
the expiry date of the title of protection without plausible
reasons;
The applicant for extension is not the owner of the title
of protection of the corresponding trademark appellation of
origin of goods or industrial design.
If the application falls into one of the above-said cases,
the National Office of Industrial Property shall issue a
notification of refusal of extension together with the clear
reasons.
Chapter VI
THE PROCEDURES FOR GRANTING REPRESENTATION LICENSE
The dossier of
application for representation license
A representation license shall be granted by the National
Office of Industrial Property after considering the dossier of
application for the representative license as prescribed in
points 29.2 and 29.3 below. The applicant shall have to pay
the prescribed fee.
The dossier of application for the certificate of
industrial property representation service organization shall
comprise:
The application for the certificate of industrial property
representation service organization, with a proposed list of
industrial property representatives of the organization;
The copies of the operating statute and certificate of
business registration;
The copy of the decision on appointment to the leading
posts of the organization or a written document signed by the
head of the organization to authorize a member of the
organization on the above-said proposed list to represent the
organization;
The table of service fees for the industrial property
representation of the organization after being registered in
accordance with regulations on management of fees and charges;
The voucher of payment of fee for grant of representation
license.
The dossier of application for the certificate of
industrial property representation service organization must
be filed together with dossiers of application the industrial
property representative cards of individuals on the above-said
proposed list.
The dossier of application for industrial property
representative card shall comprise:
The application for the industrial property representative
card, with the certification of the permanent address of the
applicant by the People’s committee of ward, commune or
township;
A copy of the university diploma;
A copy of the certificate of graduation from an official
industrial property training course; or a certificate of
working experience and earlier assignments as prescribed in
Clause 1 Article 58 f the Decree;
A copy of the certificate of having passed the examination
on current industrial property legislation of Vietnam issued
by the National Office of Industrial Property;
The voucher of payment of fee for application filing.
Consideration of the
dossiers of application for representation license
Within one month from the date of receiving the dossier of
application for a representation license, the National Office
of Industrial Property shall have to consider and decide
whether or not to grant the representation license. In case of
refusal, the National Office of Industrial Property shall have
to notify the applicant of the reasons therefor. In case of
grant, and after the applicant pays the fee for the grant of
representative license, the National Office of Industrial
Property shall have to carry out the following procedures:
Granting the representation license;
Making entry of the grant of the representative license
into the Register of Industrial Property Representatives;
Publicizing the grant of the representative license on the
Industrial Property Official Gazette.
Chapter VII
FINAL PROVISIONS
Complaints
If the applicant disagrees with the decision related to the
handling of the application, as well as the approval and
registration of contract for the transfer of industrial
property rights, consideration of application for grant of
non-voluntary license, the extension of title of protection,
grant of representative license, he/she shall be entitled to
lodge a complaint or protest in accordance with the order and
procedures prescribed in Clauses 2, 3 and 4 Article 27 of the
Decree.
Handling of
applications filed during the period from July 1st,
1996 to the date when this Circular takes affect
The applications filed during the period from July 1st,
1996 to the date when this Circular takes affect are allowed
to use document forms in accordance with Circular No. 1134/SC
of October 17, 1991 of the Ministry of Science, Technology and
Environment guiding the implementation of Decree No. 84-HDBT
of March 20, 1990 of the Council of Ministers, and shall be
handled in accordance with this Circular. The time limit for
handling such applications shall be extended to equal to the
time period from the date of filing the application to the
date when this Circular takes affect.
Document forms and
regulations on examination of applications
The Director of the National Office of Industrial Property
shall have to issue necessary document forms related to the
application, the approval and registration of contracts for
the transfer of industrial property rights, and issue the
Regulation on examination of applications.
Implementation
This Circular replaces the following documents of the State
Committee for Science and Technique and the Ministry of
Science, Technology and Environment:
Chapters II, III and IV of Circular No. 1134/SC of October
17, 1991 guiding the implementation of Decree No. 84-HDBT of
March 20, 1990 of the Council of Ministers;
Circular No. 437/SC of March 19, 1993 providing additional
guidance on the registration of trademarks;
Circular No. 163/TT-SHCN of April 15, 1994 guiding the
implementation of the regulations on approval and registration
of license contacts;
Circular No. 238/TT-SHCN of May 2, 1994 providing guidance
on the filing and handling of international applications for
protection of invention, utility solution under the Agreement
on Patent Cooperation in Vietnam;
Decision No. 199/QD of December 21, 1992 stipulating
regulations on industrial property representatives.
This Circular takes affect 15 days after its signing.
Minister of Science, Technology and Environment
PHAM GIA KHIEM
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