CIRCULAR 16 ON AMENDING AND SUPPLEMENTING CIRCULAR 1 ON IPR LAW

LEGAL UPDATE

Circular No. 16/2016/TT-BKHCN (Circular 16) entered into force on 15 January 2018 and will further align Vietnam with international Intellectual Property (IP) norms. Circular 16 amends and supplements 49 out of 67 points of Circular No. 01/2007/TT-BKHCN (Circular 1).

Circular 16 provides for application rules, examination procedures, deadlines, and some changes related to trademarks, patents and industrial designs.

We highlight hereafter some of the key changes.

1. Time limits

Circular 16 introduces new (longer) time limits for examination responses and payment of the registration fee. The time limit increased:

- from 1 to 2 months for the formality examination response;

- from 2 to 3 months for substantive examination response; and

- from 1 to 3 months for payment of the registration fee.

An extension can be requested once before the time limit expires and upon payment of an additional fee.

In case of ‘force majeure’ or an ‘objective obstacle’ as defined in Circular 16, an applicant can now request an extension of 6 months providing evidence.

2. Withdrawal

Circular 16 contains clear provisions on how requests for withdrawal of applications are dealt with. The NOIP has 2 months to issue the confirmation on acceptance of the withdrawal request.

3. Reconsideration and appeals

3.1 Reconsideration

In case the National Office of Intellectual Property (NOIP) refuses the registration after substantive examination, an applicant can now submit new [1] facts and evidence to try to repeal the refusal. The NOIP can withdraw the refusal after having considered the new facts and evidence and thus saves the applicant an appeal procedure.

3.2 Appeal

Besides the reconsideration procedure, the appeal procedure is open to applicants. However, no new facts and evidence are allowed at this stage.

4. Notifications by NOIP

4.1 Invalidation/termination

New is that in case a request for invalidation or termination of the rights of a right holder is submitted, the NOIP needs to inform the right holder. Time limit for the NOIP to do so is within one month of receipt of the request by the NOIP.

4.2 Opposition

New is also that the NOIP has to inform an opponent of the detailed examination results of the opposition if considered reasonable. In case the NOIP cannot confirm whether an opposition is founded or unfounded, it notifies the parties. The opposing party is required to start a proceeding before the civil court to resolve the matter and a copy of the information of the court that it will handle the case needs to be submitted to the NOIP within one month. Examination proceedings for the opposed mark will then be suspended by the NOIP until the civil procedure is concluded.

5. Patents

5.1 International applications

Applicants who filed an application under either Chapter 1 or 2 of the Patent Cooperation Treaty [2] (PCT) must enter the national phase in Vietnam within 31 months of the date of the international application. The grace period of 6 months, as provided for in Circular 1 no longer exists.

At the same time the specification in Vietnamese must be submitted. So, applicants need to take the time needed for translation into account in order not to submit too late.

Note that no protection is granted by Vietnam when a patent application for an invention of a Vietnamese organisation or individual, or an invention created in Vietnam has been:

- first-filed abroad,

- filed abroad less than 6 months from the date of first-filing in Vietnam, or

- filed abroad despite the invention being considered classified.

5.2 Examination of invention and utility model

For an invention application, applicants should submit a request for examination within 42 months from the priority date or filing date if no priority is claimed. For a utility model application, the request should be made 36 months from the priority date. Extension will only be permitted if necessary due to ‘force majeure’ or an ‘objective obstacle’, but not exceeding 6 months.

6. Trademarks

6.1 Disclaimer [3]

It happens that the NOIP proactively imposes a disclaimer on one or more elements of a trademark, when it issues the notice for granting registration. Circular 16 provides for a clear procedure on how an applicant can fix errors of its application or file an objection against such a disclaimer and that it needs to be filed within 3 months of the notification.

6.2 International applications [4]

Under Circular 16 a Madrid application applicant may, as in the national procedure, file a response against the provisional rejection within 3 months from the date the rejection date is sent to the World Intellectual Property Organsation. Appeal against any subsequent rejection decision by the NOIP is possible also within 3 months. It means that the position of a Madrid applicant to overturn a rejection has improved as the applicant is treated in the same way as a national applicant.

6.3 Well-known trademarks

Recognition of well-known trademarks happened on a case‑by-case basis and there was no list. Under Circular 16 a trademark may be recorded on the list of well-known trademarks to be identified and to protect intelligence property in case the recognition of a well-known trade mark leads to a decision:

- on settlement of infringement enforcing such well-known trade mark rights; or

- on refusal of another trade mark.

6.4 Applicant’s representatives

An applicant can (re-)authorise an unlimited number of qualified local representatives. It is important to realise though that the NOIP will consider the latest recorded representative as the authorised representative for a particular application or registration, regardless who dealt with it before.

7. Designs

Circular 16 gives a new definition for a product, which is ‘an object, device, equipment, means, or part for assembling or integrating these products, manufactured by industrial or handicraft methods, having a clear structure and function, circulated independently .’

For more information, please contact:

Mark Oakley / Managing Partner

mark.oakley@acsvlegal.com

Hieu Pham / Special Counsel

hieu.pham@acsvlegal.com

© 2018 ACS Legal Vietnam Company Limited – All rights reserved

This legal update is not an advice and should not be treated as such.

Open in pdf: Update on Circular 16 on Amending and Supplementing the IPR law

[1] New means that the facts and evidence were not available for consideration during the substantive examination.

[2] Under the PCT applicants can simultaneously seek protection for an invention in a very large number of countries. More information on www.wipo.int/pct/en/.

[3] A disclaimer is a statement that is included in an application to indicate that an applicant does not claim exclusive rights to an unregistrable portion of a mark.

[4] The Madrid System allows for a single trade-mark application in up to 116 countries. More information on www.wipo.int/madrid/en/.