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.

Introduction Currently, under Vietnam’s Law on Intellectual Property of 2005, as amended in 2009 and 2019 (“IP Law”), secret prior art cannot be used in evaluating patent applications. However, an approach to evaluate secret prior art has been included, for the first time, in the draft amendment of the IP Law. Below is our discussion of this interesting topic. Recognition in Other Jurisdictions Secret prior art is the name given to prior art that, at the time of filing of a new patent application, was not discoverable by the new applicant or not publicly available. It exists as a filed but unpublished application, unavailable to the public until publication. Until that point, only the applicants and the patent examiners of the unpublished application know of its existence. Even though it is not discoverable or available to the public, secret prior art can still be used as a bar for novelty in many jurisdictions. Secret prior art is not limited to situations in which the first applicant and the new applicant are different people; secret prior art applies regardless. There is, however, a domestic limitation: Applications filed and not yet published in a foreign country are not considered to be secret prior art. When the applicants are different people, the new applicant has no way of discovering the secret prior art that exists as a filed and unpublished application of the first applicant. Regardless of the completeness of the patent search, the previously filed and unpublished application cannot be discovered. At the time of filing, the new applicant’s invention would seem novel. Later, it would be discovered that the application was actually filed after another application for the same invention, barring patentability. This creates confusion and unfairness among multiple applicants. One applicant can also file two separate applications at different times, in which the later filed application claims subject matters disclosed in the earlier filed application. Thus, the earlier filed application—regardless of its availability to the public—can be used as secret prior art for barring novelty. This is called “self-collision.” Some jurisdictions allow for excluding this secret prior art because it arose from the same applicant. This is called the anti-self-collision exception. This is favorable to applicants, because otherwise their own disclosures may result in a bar to novelty in their own subsequent patent applications. The anti-self-collision exception is not a perfect solution to the problems secret prior art creates for an applicant filing two patent applications. Normally, the subject matter disclosed in the first application could not be subsequently claimed by another party, because the first application would be considered during novelty assessment. However, with this exception, that subject matter would not be considered, which could result in an unfair patent term extension for the applicant in jurisdictions employing the anti-self-collision exception. One method for solving this situation is requiring a terminal disclaimer filed with the new application, effectively limiting its term to that of the first application. In Vietnam Currently, although there is no “self-collision” based on secret prior art, the Intellectual Property Office of Vietnam (IP Office) has another method for disqualification of the later-filed application without using secret prior art. The IP Office targets the later-filed application using Article 91 of the IP Law—the priority principle. The below summary of a case study may clarify this practice by the IP Office. An applicant files two Vietnam applications—a prior application A1 (claiming priority to an unpublished application P1) and a new application A2 (claiming priority to an unpublished application P2). The inventions disclosed in A1 and A2 are considered as being similar in nature. The timeline of the related application is illustrated here for reference.   Under the current IP regulations, without any secret prior art concepts, A1 is not prior art against A2 if P2 is recognized as A2’s priority. However, at practical examination, this priority right is refused, creating a situation in which A1 may become a barrier for novelty of A2. See the below language from the IP Law: “Article 91. Priority principle: An applicant for registration of an invention, industrial design or mark may claim priority on the basis of the first application for registration of protection of the subject matter.” In the view of the IP Office, upon publication of A1, it becomes publicly known that P1 is the earliest application disclosing the A1/A2 inventions. Thus, P2 is invalid as priority for A2 because it was not the first application to disclose the subject matter. Because A2’s priority date is invalid, the basis for its novelty assessment is now its filing date. Any published applications can be used as prior art that were available to the public before the claimed date. Since A1 was published before A2 was filed, A1 is used as prior art against A2, resulting in A2 being considered not novel. This priority rule approach brings the same effect to the later-filed application as would the secret prior art approach. A New Approach Recently, an approach to add secret prior art to the next amended version of the IP Law has been drafted. The suggested amendment and supplement to Article 60.1 of the IP Law reads as follows: “An invention in the invention registration application with a subsequent filing date or priority date is considered having lost its novelty if it is disclosed in another invention registration application with earlier filing date or priority date but published on or after the filing date or priority date of such invention registration application.” With this amendment, the IP Office would be able to directly determine novelty over a secret prior art instead of using the current methods of applying the first-to-file rule and objecting directly to the priority claim from an earlier-filed application that results in a direct/indirect pathway for barring patentability. This proposed amendment, however, is not clear on several details. The language “another invention registration application” does not specify domestic application; thus, it is a grey area whether the secret prior art is only a Vietnam application or if

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.