Vietnam’s amended Law on Intellectual Property of 2022 (“Amended IP Law”) took effect on January 1, 2023, with the exception of a few provisions. However, subordinate legal documents (bylaws) providing necessary details and guidance on the new law still have not been issued, leaving some aspects of the law’s implementation in a state of limbo. This has caused a particular challenge for applications for establishing industrial property rights that were filed before January 1, 2023, but remain pending at the Intellectual Property Office of Vietnam (“IP Office”).
While waiting for the official bylaws to be promulgated, the IP Office has issued some internal protocols for handling applications in this interim period.
Partial Grant of Protection Titles
The Amended IP Law mentions, for the first time, the possibility of partial granting of protection titles for industrial property objects. Under the amended Article 118, the IP Office can issue a notice of its intention to grant partial protection to the allowable parts of a patent/design/trademark application. However, as an interim protocol, the intention to partially grant protection has been temporarily put on hold until further guidance is issued.
Security Control on Patents
For patent applications based on Vietnamese inventions, if there are any corresponding patent applications filed overseas, the IP Office will suspend the examination until the official new bylaws on security control are provided.
Applications for Designs which Are Not Visible During Use
The IP Office imposes a specific mechanism on design applications filed from August 1, 2020, until January 1, 2023, in which the designs are not visible during the exploitation of the utility of complex products. Accordingly, even if a notice of intention to grant was issued but there was no decision on granting by January 1, 2023, the IP Office will issue a new notice on the intended rejection, indicating that the design will be rejected because the design is not visible for the applicant’s response. This means that the prosecution will be prolonged, or even have a negative result.
Suspension of Trademark Applications
Upon the applicant’s request, the IP Office will suspend the substantive examination procedures for trademark applications until cancellation or invalidation actions against cited marks have been completed.
Registrability of Marks Provisionally Refused Based on Expired Marks
The Amended IP Law, under Article 74.2(h), reduced the time an expired mark can be used to block the registration of a later-filed trademark from five years to three years, presenting an interesting issue for applications that were already in the examination process when the Amended IP Law took effect. To address this situation, the IP Office has introduced the following interim protocol:
For applications filed prior to January 1, 2023, for which a decision on refusal has not yet been issued, if the IP Office issued a notification of substantive examination results citing only marks expired for more than three years to provisionally refuse the applicant’s mark, it will issue a replacement notification on the intention to protect the applicant’s mark if (i) the applicant failed to file a response to the intended refusal before the three-month deadline or (ii) the three-month deadline has not yet passed and the applicant has not filed a response.
If the notification of substantive examination results cited marks expired for more than three years along with other grounds to provisionally refuse the applicant’s mark, the IP Office will issue a refusal decision if no response was filed within the three-month deadline. If a response was filed, the IP Office will review the response to issue a decision on settlement of the case in accordance with the Amended IP Law and the currently available bylaws. In this case, prior marks expired for more than three years will be removed when the IP Office assesses the registrability of the applicant’s mark.
For other provisional refusals on grounds of Article 74.2(h) of the Amended IP Law, when prior marks expired for less than three years are cited (with or without other refusal grounds), the IP Office will continue to review and settle the cases in accordance with the Amended IP Law and the currently available bylaws.
For Applications Filed After January 1, 2023
For applications for establishing industrial property rights filed after January 1, 2023, but before the decree guiding the implementation of the Amended IP Law is promulgated, the protocol is to handle the examinations in accordance with the currently available decrees and circulars in the IP field, which were written to guide the previous version of the law. However, if any provisions in these decrees and circulars are contrary to the provisions of the Amended IP Law, then the provisions of the Amended IP Law will still be applied.