According to the previous regulations, in the process of searching/researching for information, when discovering a patent registration application, an utility patent registration application, an industrial design registration application or a trademark application in the name of other individuals/enterprises and believes that the registration of such IP Objects will affect their rights and interests, the owner of the earlier registered IP Objects has the right to file oppositions against the grant of a protection title to such IP Objects in Vietnam. In the amended, supplemented Law on Intellectual Property of Vietnam 2022 (IP Law 2022), regulations on the opposition procedures for IP Objects have been changed significantly. In particulars,
Firstly, a clear time limit for any third party to file an opposition against the registration of each IP Object is specifically regulated in the Article 112 a) 1) of the IP Law 2022. Instead of the former from the publication date an IP Object prior to the time of issuance of a decision on grant of a protection title, the amended and supplemented regulations are amended as follows:
- Duration time for filing an opposition against a patent application: nine (09) months from the publication date of the patent application;
- Duration time for filing an opposition against an industrial design application: four (04) months from the publication date of the industrial;
- Duration time for filing an opposition against a trademark application: five (05) months from the publication date the trademark application; and
- Duration time for filing an opposition against a geographical indication application: three (03) months from the publication date of the geographical indication application.
The advantage of amendment and supplement of the above-mentioned matter is to shorten the examination duration and somehow reduce the numbers of opposition request because the time duration for opposition is much shorter than it was before. In addition, based on such regulation, the examiner also has sufficient time to examine the application to meet the official required deadline and the time for examination of IP Objects may not be much prolonged.
Secondly, however, in the case that the time duration for opposition is over, as regulated by the IP Law 2022, it is acceptable for any third party to file their opinions in written. In this case, such opinion will be considered as supporting documents for the examiner to examine the application, not be considered as an opposition which is compulsory to be responded by the IPVN. In other words, The IP Law 2022 has separated the opinion of a third party into two procedures “Opposition to an industrial property registration application” (Opposition) (Article 112a) and the procedure “Third party’s opinion on grant of protection titles” (Opinion) (Article 112).
For the ease of reference, below is our comparison on the similarities and differences between the two procedures:
In summary, the opinion of a third party, according to the IP Law 2022, is separated into two procedures: Opposition and Opinion. A third party should understand the regulations and, case by case, choose the most sufficient way to protect their rights on IP matters in Vietnam./.
Huynh Dang Hoang Mai - Vietthink Law Firm
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References:
1. Article 112, 112a of the IP Law 2022.