Appeals in the IP field are very common in Vietnam, but it can take a long time to for these cases to be resolved, and the number of appeals pending at the moment is rather high. One of the reasons for this is the lack of human resources allocated to resolving appeals.
The Law on Complaints offers a helpful mechanism to streamline the appeal process, enabling the appeal settlement agency to set up a special Advisory Council to assist in settling appeals at the second stage. Point 22.8 of Circular No. 16/2016/TT-BKHCN, which guides the implementation of the Law on Intellectual Property and took effect on January 15, 2018 (“Circular 16”), additionally lays out the specific framework for IP appeals, providing that the appeal settlement body, depending on the complexity of the case, can seek the opinions of independent consultants or an Advisory Council.
To provide more details on this matter, on February 12, 2020, the Intellectual Property Office of Vietnam (“IP Office”) issued Decision No. 362/QD-SHTT promulgating the Regulation on Advisory Activities in Appeal Settlements in Industrial Property Matters (the “Regulation”). The new Regulation goes into greater detail on the definitions, functions, qualifications, sources, operating principles, and other matters relating to Advisory Councils and independent consultants as introduced under Point 22.8 of Circular 16. We provide a summary of the Regulation below.
Summary of the Regulation
Scope and Definitions
The Regulation applies to all relevant units and individuals within the IP Office.
An “Advisory Council” is a council established by the Director General of the IP Office to advise the Director General on legal and technical issues and solutions in the course of settlement of appeals of one or more specific matters. Its members include independent consultants (as defined below) or individuals with other appropriate expertise.
“Independent consultants” are persons with suitable expertise who are selected from the list of industrial property consultants approved by the Director General of the IP Office as well as from other sources (if there are no suitable experts on the list).
Subject to the content and nature of the appeal, the Director General of the IP Office will decide to set up an Advisory Council or to consult an independent consultant.
The Advisory Council or an independent consultant can advise on legal and technical issues and their solutions relating to the following:
- The right to file applications for the registration of industrial property rights;
- The registrability of industrial property objects;
- The scope of protection of industrial property rights;
- Methods of identifying acts of bad faith and unfair competition related to industrial property rights;
- Assessment of the nature of evidence provided by the claimant and its appropriateness to the arguments; and
- Other contents as decided by the Director General.
Organization of the Advisory Council
An Advisory Council is established per the decision of the Director General of the IP Office, and consists of five to seven members, depending on the contents and nature of the respective appeal. An Advisory Council includes a chairman, vice chairman, and other members who are consultants. A staff member of the IP Office’s Enforcement and Appeal Division will serve as the administrative secretary of the Advisory Council.
The responsibilities of the Advisory Council members are as follows:
- The chairman shall determine the meeting timelines of the Advisory Council; chair and manage the operations of the Advisory Council; assign tasks to the members of the Advisory Council; sign the minutes and other related documents of the Advisory Council; take general responsibility for proposing the plans for the appeal settlement; request the IP Office to hold direct discussions with the claimant, the defendant, and persons with related rights and interests; conduct on-site surveys for appeals with complicated details and multi-claimant appeals in accordance with the law, where necessary; etc.
- The vice chairman shall perform the tasks and powers of the chairman if the chairman is absent, and report to the chairman the outcome of the meetings; assist the chairman in directing and implementing the tasks of the Advisory Council during the meetings; check on and urge the Advisory Council members to implement their work per the assignment of the chairman; perform the tasks and powers of a member of the Advisory Council; etc.
- The other members shall fully participate in the meetings and activities of the Advisory Council when summoned; have the right to propose, discuss and vote on matters within the responsibilities of the Advisory Council; be responsible for and be entitled to reserve their own opinions; etc.
Independent consultants are obligated to give their opinions on the appeal matters honestly, subjectively, and fairly, in accordance with the laws and practices of Vietnam.
An effective way to resolve IP appeals?
It is worth noting that according to the Law on Complaints, only second-stage complaints/appeals can be resolved through an Advisory Council. However, according to the Regulation, the IP Office can also set up and seek advice from the Advisory Council and independent consultants for first-stage appeals at the IP Office. This is expected to result in reasonable, sensible decisions, while shortening the appeal examination period. However, it is not indicated in the Regulation whether the Advisory Council and independent consultants will be involved in second-stage appeals at the Ministry of Science and Technology.
Nevertheless, the Regulation brings much hope for Vietnam’s IP practitioners and IP owners that their appeals will be resolved efficiently in the near future.