Intellectual property experts from Tilleke & Gibbins were engaged by ARISE+ IPR, a regional support program funded by the European Union and implemented by the European Intellectual Property Office, to craft a series of IP enforcement guides for Southeast Asian countries, aimed at raising local awareness of the importance of IP protection. The five-year, EUR 5.5 million ARISE+ IPR program supports regional integration through IP cooperation and aims to upgrade national IP systems for creation, protection, utilization, administration, and enforcement to be in line with international best practices and standards and the strategic objectives of the ASEAN Intellectual Property Rights Action Plan 2016-2025. The guides were developed by Tilleke & Gibbins’ lawyers in cooperation with the IP offices of each participating country, and cover issues related to trademarks, industrial designs, and geographical indications. Each guide was produced in a compact leaflet form in English as well as the local language, and is considered an official publication of the respective national IP office. The guides can be accessed from the ARISE+ IPR site (under “Leaflets, brochures and booklets”), or by clicking on the links below: Cambodia: English | Khmer Indonesia: English | Bahasa Indonesia Thailand: English | Thai Vietnam: English | Vietnamese

As the Covid-19 situation in Vietnam has not improved since the beginning of August 2021, the Intellectual Property Office of Vietnam (IP Office) has issued Notice No. 8181/TB-SHTT dated September 9, 2021 (Notice 8181), providing a further two-month extension for IP deadlines. The contents of Notice 8181 are similar to those found in notices issued in March 2020 and August 2021. One notable difference is the addition of the term “such as” (“như”  in Vietnamese) to the list of IP procedures eligible for the extension, implying that this is now an open list: All procedures related to the establishment of industrial property rights (such as priority claims, supplementation of documents, responses to the IP Office’s decisions/notifications, annuities, renewal of the validity of protection titles, payment of fees and charges, and filing of appeal petitions) falling due during the period from June 30, 2021, to the end of October 31, 2021, will automatically be extended to the end of November 30, 2021. 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. It is our interpretation from Notice 8181 that procedures related to the establishment of industrial property rights that are not specifically listed in the notice, such as IP filings and substantive examination requests, will also benefit from the new extension. However, there has not been any official explanation from the IP Office.

As Vietnam continues to fight the latest wave of the Covid-19 pandemic with strict social distancing measures, the Intellectual Property Office of Vietnam (IP Office) has issued Notice No. 7581/TB-SHTT dated August 2, 2021 (Notice 7581), extending certain deadlines for IP applicants. The contents of Notice 7581 are similar to those found in Notice 5277 issued in March 2020 during the first wave of the pandemic. Specifically, Notice 7581 reads as follows: All procedures related to procedures to establish industrial property rights (priority claims, supplementation of documents, responses to the IP Office’s decisions/notifications, renewal and extension of the validity of protection titles, payment of fees and charges, and filing of appeal petitions) falling due during the period from June 30, 2021, to the end of August 31, 2021, will automatically be extended to the end of September 30, 2021. 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 7581 As with last year’s Notice 5277, it is worth noting that the wording of Notice 7581 covers only the procedures to “establish industrial property rights,” rather than all aspects of industrial property rights. Further, it could be understood that it provides a closed list of industrial property procedures that can enjoy this grace period, and that the deadline extensions would apply only to the specific items listed. Thus, it is uncertain if the deadline extension to September 30, 2021, 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 Filing responses to office actions in post-grant procedures 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 September 30, 2021. 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. Any necessary supplemental documents to support such actions will still enjoy the above grace period and can be submitted by September 30, 2021.

Due to the developing COVID-19 situation, the main Hanoi office of the Intellectual Property Office of Vietnam will stop receiving documents filed directly at the office and the IP Help Desk from May 27 until further notice, according to Notification No. 4670/TB-SHTT dated May 25, 2021. During this suspension, documents filed with the Hanoi office must be filed online or via postal filing. Since online filing is currently available only for certain services such as new filing, maintenance, and appeals, direct filing still accounts for most filing at the head office. Thus, most documents should be filed via post at this time. As it is not clear if the filing date will be recorded as the date the document is received or the date it is sent (postmarked), IP applicants using postal filing are advised to file their documents early, well before any deadlines, for safety. Rights holders can still choose to file their documents in person via the IP Office’s representative offices in Ho Chi Minh City and Da Nang, which are still operating fully.