Appeals of unfavorable decisions on protection in the IP field are very common in Vietnam. In 2023, there were 845 appeals filed at the IP Office, including 780 trademark appeals. In most cases, however, applicants view the appeal procedure as almost a last resort, as the lengthy examination process can lead to serious delays in appeal settlement. In fact, it can take four to seven years, or even longer, for an appeal to be resolved, and a disappointingly low number of cases are settled each year, despite the towering number of appeals pending. Nonetheless, there are reasons for optimism.

Inspection and Appeal Department

On 1 July 2024, the IP Office issued Decision No. 575/QD-SHTT promulgating the Regulations on Organization and Operation of the Inspection and Appeal Department – formerly the Enforcement and Appeal Department – whose functions include, among others, advising and assisting the Director General of the IP Office in resolving appeals related to the process of establishing IP rights.

The Inspection and Appeal Department has the duty to handle appeals and denunciations related to the process of establishing IP rights, as well as requests for termination and cancellation of the validity of registrations. In addition, it can provide expert opinions, and appoint knowledgeable personnel to participate in the IP Office’s Advisory Council to settle appeals.

While the renamed department’s responsibilities do not differ greatly, on paper, from those of the previous Enforcement and Appeal Department, the issuance of new regulations indicates the IP Office’s renewed focus on the importance of improving the appeal procedure.

Scope of IP appeals expanded

In addition, in November 2023, the Ministry of Science and Technology issued Circular No. 23/2023/TT-BKHCN (“Circular 23”) providing further guidance for implementation of the amended 2022 IP Law and its subordinate legislation. Article 35 of Circular 23 has clarified and extended the list of decisions and notifications that can be appealed under the IP Law.

As a result, the subjects of appeal proceedings under Circular 23 now clearly include relevant decisions pertaining to international industrial designs, decisions involving the first appeal by the IP Office, and other decisions or notices that meet the criteria specified in the laws on complaints. Furthermore, granting decisions for IP objects which are subject to an invalidation action can also be appealed – an option that was not previously available.

Circular 23 also clarifies other decisions that cannot be appealed and other contents that are not accepted in appeal procedures.

Definition of “new facts” remains uncertain

While appeals in the IP field are handled by the IP Office, they are subject to the Law on Complaints and Denunciations, which governs general complaints. Generally, under the Law on Complaints and Denunciations, “new facts or circumstances” are not accepted during the appeal period. This principle has also been extended to IP appeals. Specifically, under the previous IP circular, “new facts that have not been presented by the applicant … during the application examination process, which may change the appealed decision” are not accepted in the appeal procedure. This no-new-fact principle is not entirely suitable for many IP cases, such as cases with a letter of consent is newly obtained, or where an expiry date for a citation has passed the 3-year threshold by the time of the appeal.

Circular 23 seems to loosen the application of this principle. Specifically, under the wording of the new circular, the only “new facts” that are explicitly not accepted at the appeal stage are those that already existed during the application’s examination period but which, for some objective reason, the IP Office and other relevant parties did not learn about after the decision on granting or refusal was issued, unless the new fact is introduced by a third party (who is not the applicant or registration-seeker).

From this wording, one can interpret that facts that did not exist during the examination period but occurred prior to the time of the appeal, such as a newly obtained letter of consent, do not fall into the above provision and could be accepted at the appeal stage. As appeal cases take a very long time to be settled, and Circular 23 is just several months old, there is not yet any precedent regarding this new-fact issue. IP appeals are still generally subject to the Law on Complaints and Denunciations. Thus, clarification and guidance from the IP Office may still be required to clear up any doubt.

Outlook

Circular 23 and Decision 575 have shed more light on the IP appeal procedure. In addition, some improvements in the IP Office’s settlement of cases have been recently observed. For example, for faster delivery of original notifications/decisions, the IP Office has begun to first send soft copies of its notifications via email to applicants/IP agents, then sending the originals by courier. With this step, communication between the IP Office and applicants/IP agents has become timelier.

There is hope that appeal settlement may soon be improved as well.

This article first appeared in Managing Intellectual Property.