As the impact of the COVID-19 epidemic continues to unfold, the government of Vietnam has taken strict measures to stem the outbreak with the help of various agencies and authorities. In connection with this, the Intellectual Property Office of Vietnam (IP Office) issued Notice No. 5277/TB-SHTT dated March 31, 2020 (Notice 5277), setting out several measures aimed at minimizing health risks to its officials as well as IP practitioners and applicants, while creating favorable conditions for rights holders to execute their rights and obligations in the procedures for establishment of industrial property rights in Vietnam.

The primary issue covered by Notice 5277 is the extension of certain deadlines. Specifically, the Notice reads as follows:

(i) Procedures falling due during the period from 30 March 2020 to the end of 30 April 2020 in relation to deadlines for procedures to establish rights with regard to industrial property objects (priority claims, supplementation of documents, responses to the IP Office’s decisions/notifications, renewal and extension of the validity of the protection titles, payment of fees and charges, and filing of appeal petitions) will automatically be extended to the end of 30 May 2020.

(ii) For other cases, if an applicant is still affected by the COVID-19 epidemic with regard to the implementation of its rights and obligations in the procedures for establishing rights to industrial property objects at the IP Office, such applicant may request [the IP Office] to apply the clauses on objective obstacles and force majeure as set out in Points 9.4 and 9.5 of Circular No. 01/2007/TT-BKHCN, as amended and supplemented by Circular No. 16/2016/TT-BKHCN.

Observations on the Content of Notice 5277

It is worth noting that the wording in Item (i) above covers only the procedures for “establishment of industrial property rights,” rather than all aspects of industrial property rights. Further, the way the notice is written, it could be understood that it provides a closed list of industrial property procedures that can enjoy this grace period, namely, that the deadline extensions would apply only to requests for claiming priority rights, submission of required documents, responses to the IP Office’s decisions/notifications, requests for renewal of registrations and maintaining validity of patents, payment of fees, and filing of appeal petitions. Thus, it is uncertain if the deadline extension to May 30, 2020, will also be automatically applied to the following procedures:

• Filing requests for invalidation;
• Filing requests for renewal of license agreements;
• Filing patent applications;
• Filing requests for substantive examination of patent applications;
• Filing industrial design applications.

If the deadline extension is not automatically applied to the foregoing procedures, rights holders will need to submit evidence to prove force majeure and objective obstacles to support their late action (if any).

In addition, if rights holders proactively request a deadline extension, it is unclear whether the new deadline will be counted from the actual deadline, or from May 30, 2020.

Recommendations

Due to the uncertainties involved in the procedures listed above, and the fact that all applications and requests can still be submitted by post and through the online filing system, to be on the safe side, it is recommended that rights holders take the necessary actions which are excluded from the closed list mentioned above (such as filing a request for trademark invalidation) by the actual deadlines, if possible.

While these actions should be taken by the deadline for such relevant actions, it is worth noting that the supplemental documents supporting such actions can enjoy the above grace period and can be submitted by May 30, 2020.

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