The long-awaited Circular No. 16/2016/TT-BKHCN amending and supplementing Circular No. 01/2007/TT-BKHCN (Circular 01), a critical guidance document for the implementation of Vietnam’s Intellectual Property Law, was recently published in the Official Gazette. The amendments will take effect on January 15, 2018.
The new circular will have a significant impact on IP practice in Vietnam, having modified 49 of the 67 points of Circular 01, which focuses on the examination of patent and trademark applications. The amendments clarify certain issues and generally push Vietnam’s IP law closer to international practice, but they also, in some cases, create more stringent requirements for IP owners.
Some of the most significant changes include the following:
- The time limit for entering the national phase of a PCT application in Vietnam is 31 months under both PCT Chapter I and Chapter II. Under the old circular, however, a late entry within 37 months was possible with an extra fee. This provision has been removed from the amended circular.
- Under the amended circular, applicants are expressly given the right to object to disclaimers of trademark elements issued by the NOIP in notifications of intention to grant certificate of registration. If the applicant does not agree with such disclaimers, it is entitled to file an objection within three months from the notification date.
- The amended circular fixes a previous discrepancy under the old circular between the time to overcome a refusal for trademarks filed via national application vs. Madrid application. Previously, provisional refusals for Madrid applications could only be appealed for 90 days. Under the amended circular, the applicant first has a three-month period to respond to the provisional refusal, and then 90 days to appeal the decision on refusal.