Circular 16/2016/TT-BKHCN officially came into force from 15 January 2018 amending and supplementing Circular No. 01/2007/TT-BKHCN dated February 14, 2007 of the Ministry of Science and Technology implementing Decree No. 103/2006/ND-CP regulating in detail and guiding the implementation of a number of articles of the Intellectual Property Law on Industrial Property (“IP”).
Purposes of the amendment is to (i) amend, supplement the missing or inappropriate regulations to ensure the effective implementation of policy and law, (ii) guide in detail and unify the application of law in order to create favorable conditions for applicants and clear procedures for the establishment of IP rights and (iii) solve the obstacles in the application of law to the settlement procedure of appeal, in order minimize the number of appeal in accordance with the Law on Appeal.
The new basic changes of Circular 16/2016/TT-BKHCN relating to several issues such as amendment on the establishment ground of IP right (authorization, fee refund, re-examination period, certificate issuing period, increasing period of responding to the NOIP’s Notices); appeal and settlement of appeal; procedure for processing international trademark application designating Vietnam; amending, supplementing and recording well-known trademark; supplementing provisions on industrial design application; supplementing provisions on invention. Details of the common and basic changes that the applicants should note are as below:
1. Procedure for establishment of IP rights
Article 6.4: Dealing with opinions of third party before issuing a decision on grant of protection title
In case there is a third party’s opinion relating to the registration of an IP object, if the NOIP has no idea whether the opinion is reasonable or not, it shall issue a Notice to the third party requesting to file a lawsuit at a competent Court in accordance with the provisions of civil procedure law. Within 01 month later, if the NOIP receives a Notice of Acceptance from the Court, it will base on the Notice to suspend the processing of the application and wait for the settlement result of the Court to then process the application in accordance with the Court’s decision. However, during this 01-month period, if the NOIP does not receive the Notice of Acceptance from the Court, it is opinion of the NOIP that the third party has withdrawn opinion and the NOIP will continue the examination of the application as there is no request from the third party.
Article 8: Regulations on fee refund
- The fee for filing application shall not be refunded in any circumstances;
- The fees paid for each procedure under the application process shall not be refunded when the time limit for carrying out such procedure has commenced, except when the NOIP collect them in contravention of regulations (ex. over collection, false collection).
Article 16.1: Clarification on the time limit for re-examination of the application due to dissenting opinion after issuance of notification of grant/refusal of grant of protection title:
- Invention: Not later than 12 months;
- Trademark: Not later than 06 months;
- Industrial design: Not later than 04 months and 20 days;
- Geographical indication: Not later than 04 months.
The re-examination of the application shall be carried out only 01 time/per applicant/per third party.
Article 18.2 (a): Within 15 days from the date the applicant submits full and timely fees, the NOIP shall proceed with the procedure for the grant of protection title.
Article 20.3: Maintenance of validity of invention/utility solution protection title
- To supplement a request form (No. 02-GH/DTVB): Previously, there has no request form to maintain the validity;
- Applicant or IP representative is required to submit letter to request maintenance of validity;
- The NOIP shall issue to Notice to record the maintenance of validity and publish the same on IP Gazette;
- Processing time: 01 month instead of 10 days as previously stipulated.
Other provisions: Increasing the time limit for examination to create favorable conditions for Applicant to file response to the NOIP’s Notice:
- Articles 13.6 a), b) and 20.1 d): In respect to the Notices relating to formalities, procedures: Increasing the time limit from 01 month to 02 months;
- Article 15.7 a (i), (ii) and (iii); 20.3.b) and 48.2 (a): In respect to the Notices relating to substantives and issues needed to be carefully considered: Increasing the time limit from 02 months to 03 months;
- Article 13.6 (a): To supplement provisions on the time limit for submission of documents claiming priority right under the Paris Convention: 03 months.
2. Appeal and settlement of appeal
Article 22.2 c): To supplement provisions in details stipulated that the written explaining appealing reason should clearly state the following contents:
- Object of the appeal;
- Reason of the appeal;
- Contents of the appeals;
- Request of the appealing applicant;
- List of attached evidences (if any).
Article 22.5: Acceptance of appealing application
- Within 10 days from the date of receiving the appealing application, the person in charge of settlement of the appeal must issue notice of acceptance of the appealing application or notice of refusal to accept the appealing application.
- The original Power of Attorney of the appealing application now can be submitted to the NOIP within 10 days from the submission date of such appealing application.
Article 22.6: The time limit for settlement of the appealing application is stipulated in Articles 28 & 37 of Law on Appeal, in particular:
- Article 28 of Law on Appeal: Time limit for settling the first-time appeal: Not exceeding 30 days from the acceptance date of the appeal; for complicated cases, the time limit may be extended but not later than 45 days from the acceptance date. In remote areas, the time limits are 45 and 60 days, respectively.
- Article 37 of the Law on Appeal: The time limit for settling the second-time appeal: Not exceeding 45 days from the acceptance date of the appeal; for complicated cases, it may be extended but not later than 60 days from the acceptance date of the appeal. In remote areas, the time limits are 60 and 70 days, respectively.
Article 22.8: Independent consultant, Advisory board
To stipulate in detail when to use the option of seeking advice from Independent consultant, Advisory board; specified role of the Independent consultant, Advisory board; source and standard of the Independent consultant; rule of organization and operation of the Advisory board. All opinions of the Independent consultant, Advisory board and working result of the Advisory board must be made in written.
Article 22.11: Announcement of decision on appealing settlement: The appealing settlement decision shall be published on the website of the appealing-settling agency within 15 days and in IP Gazette within 02 months from the date of issuance of the decision.
3. Procedure for processing of international trademark applications designating Vietnam
Article 41.6: Amendment, supplementation on processing registration applications of international trademark designating Vietnam
- The NOIP shall issue decision on protection of international trademark designating Vietnam. Previously, if a trademark meets the requirements for protection and is accepted to be protected in Vietnam, the NOIP does not issue any notice and the international trademark is considered in default to be protected in Vietnam;
- The NOIP shall publish the decision on protection in IP Gazette and record it in the National Register of international trademarks;
- In cases where the international application is refused to be protected in Vietnam, the NOIP shall issue a notice of provisional refusal and the Applicant shall have 03 months to directly respond to this notice to the Department of Registration of International Trademark rather than submit an appealing application at this stage;
- In cases where the international trademark designating Vietnam is partially refused, the NOIP shall issue a Notice of provisional refusal. If the Applicant respond to the Notice and this response fully meets the NOIP’s requirements, the NOIP shall issue Notice on grant of protection title of trademark in Vietnam.
- In cases the international mark designating Vietnam is partially refused and the Applicant does not have any response within the prescribed time limit, the NOIP shall issue a declaration of protection for the non-refused part and publish it on the IP Gazette and record it on the Register;
- The NOIP does not issue a Trademark Protection Title for an international trademark designating Vietnam, but only issues a trademark protection statement, sends it to WIPO, publishes it on the IP Gazette and records it on the Register of international trademark in Vietnam.
4. Amendment, supplementation and recognition of well-known trademarks
Article 42.3: Documents to prove ownership of trademark and to prove the famous of such trademark may include the following information:
- Information on the scope, extent and continuity of the use of the mark, including the explanation on origin, history and the period of continuous use of the mark;
- Number of countries where the mark has been registered or recognized as a well-known mark;
- List of goods/services bearing the mark;
- Territorial scope where the mark is circulated;
- Turn-over of the sale or supply of the goods/services bearing the mark;
- Number of goods bearing the mark that have been produced, consumed;
- The property value of the mark, assignment or license price, value of the investment capital contribution of the mark;
- Investment, expenses for advertisement and marketing of the mark, including participation in national and international exhibitions;
- Cases of infringement, disputes and decisions, judgments of the court or competent agencies;
- Survey data of consumers knowing about brand through purchase, sale, using, advertising and marketing;
- Rank, evaluation of reputation of the mark by national and international organizations;
- Awards and medals the mark has been obtained;
- Assessment results by IP assessment organizations.
5. Inventions
Article 13.2 (h): Supplementing provisions on the cases of refusing invention application: The invention application shall be refused to accept if such invention is owned by a Vietnamese person or was created in Vietnam but not registered in Vietnam before being registered abroad (implementing the regulation on security control over inventions in Article 23.b.2 of Decree No. 103/2006/ND-CP, which was amended and supplemented under Decree No. 122/2010/ND-CP).
Article 23.6 (b): Amendment and supplementation of the provisions on requirements for invention description. Accordingly, an invention description shall include:
- Field of use of the invention;
- Technical status of the invention;
- Purpose of the invention;
- Technical nature of the invention;
- Detailed description of the performance options of the invention;
- Examples of performance of the invention (if any);
- Benefits (effectiveness) can be obtained (if any and if it is not stated in the technical nature of the invention).
Article 23.7: Regulations on the abstract: All drawings, formulas (if any) are only presented in half of an A4 page and must be clear.
Article 25.1 (a) (ii): Supplementation of provisions on the time limit for submission of a substantive examination request:
- For invention application: 42 months from the filing date or priority date if the application is entitled to the priority right;
- For utility solution application: 36 months from the filing date or priority date if the application is entitled to priority right.
Articles 27.4 b) and 27.5 b): Deregulation of the provision allows grace period of 06 months to submit PCT documents when the PCT invention application enters into national phase in Vietnam since there is no legal ground to increase the inequality between the application directly submitted in Vietnam and PCT application.
6. Industrial design
Article 33.2 (b): Supplementation of the definition of products: Products are understood as materials, tools, equipment, means ... or parts used for assembling or incorporating such products, produced by industrial or handicraft method, having clear structure and function and circulated independently.
Article 33.7 (b): Supplementation of the regulation on "basic shaping features" of industrial design and “products of the same kind".
Basic shaping features are features that are easy to recognize/remember, necessary and sufficient to define the nature of industrial design and distinguish between an industrial design and other industrial design for products of the same kind.
Products of the same kind are products having the same purpose of use or identical/similar function to each other. Finished products and parts used for assembling or incorporating finished products are products in different kinds.