The National Assembly of Vietnam, on 19 June 2009, passed an amendment of some articles of the Intellectual Property Law (the current IP law) which takes effect on 01 January 2010. The amendment is gearing toward resolving the incompliance and inconsistence of several provisions of the current IP law.

Transitional provisions

The current IP law provides that “all rights and obligations conferred by a Protection Title granted under the laws and regulations applicable before the effective date of the current IP law and procedures for maintenance, renewal, amendment, licensing, assignment and resolutions to disputes related to such a Protection Title shall be subject to this Law, except for the grounds for cancellation of a Protection Title, which shall be subject to the laws and regulations applicable at the time of its grant”.

The provision that the grounds for cancellation of a Protection Title shall be subject to the laws and regulations applicable at the time of its grant seems unlogical and inconsistent with that “any application for registration of copyright, neighboring rights, invention, utility solution, industrial design, trademark, appellation of origin, layout-design or plant variety, which were lodged with the competent authority before the effective date of the current IP law shall continue to be processed in accordance with the laws and regulations applicable at the time of the filing of the application. Namely, there may be the case of an application for a trademark, for example, lodged before the effective date of the current IP law and granted registration after the current IP law came into effect, and in this case, the criteria for protection for the trademark are subject to the old law while the grounds for cancellation of the registration for the trademark are subject to the current IP law.

The amended IP law overcomes the above error, and provides that “the grounds for cancellation of a Protection Title shall be subject to the laws and regulations applicable to the grant of this title”

The time limit for substantive examination

The backlog of applications at the National Office of Intellectual Property is a big problem, and it directly affects business of IP owners as well enforcement of IP rights. The current IP law has provided the time limit of 12 months for substantive examination of patent applications and 6 months for applications for trademarks, industrial designs and geographical indications in order to meet the Government’s requirement of speeding up administrative reforms.

After 3 years from the date on which the current IP law came into effect, the backlog of applications does not seem to reduce while a number of applications increase significantly. To secure the quality of examination of applications as well to examine in due time, the amended IP law provides the time limit for substantive examination of patent applications is 18 months, and 9, 7 and 6 months for applications for trademarks, industrial designs and geographical indications respectively.

Secret inventions

The notion of “inventions belonging to the State secret” for the first time appears in the law. Although there are no specific provisions regarding secret inventions, the amended IP law provides that the restriction of IP rights conferred to secret inventions is implemented in accordance with governmental regulations.

The first-to-file principle

The first-to-file principle in the current IP law is used to determine the priority of applications filed by some applicants for the same and equivalent inventions or utility solutions, the same and unsubstantially different designs, and identical or confusingly similar marks, and it is silent when such applications are filed by the same applicant. The amended IP law provides clearly that the first-to-file principle shall also apply in cases where the same applicant files several applications for the same subject.

Prior use rights to inventions and industrial designs

Under the current IP law, the date of publication of applications for inventions and industrial designs was served as the date from which prior use rights to inventions and industrial designs are established. The amended IP law amends this provision, and accordingly, the prior use rights arise from the filing date or priority date, where applicable.  

Enforcement provisions

The current IP law provided that administrative remedies for infringement of IP rights may be requested by the IP rights holder only when a written notice has been served by the IP rights holder and the infringer continues to commit the act of infringement of IP rights. This provision was widely criticized by IP rights holders and practitioners because it has actually helped IP rights infringers to escape from being punished. The amended IP law removes this provision.

Administrative remedies are applied if an act of infringement of IP rights has caused harm to consumers or the society, as provided in the current IP law. Now, the amended IP law adds the acts of infringement of IP rights that cause losses to authors and IP rights holders.  

The current IP law provided that authorities can impose a monetary fine that must be at least equal to the value of the discovered infringing goods, but not exceed five times that value. The amended IP law removes this provision. Monetary fines are now in accordance with the law on administrative sanctions which provides that monetary fines shall not exceed VND 500 million (approximately US$ 27,000).

Term for protection of copyright

The term of copyright protection for cinematographic works, photographic works, applied art works and anonymous works is amended to extend from 50 years to 75 years from the first publication. For those cinematographic works, photographic works and applied art works not published within 25 years from the date of fixation, the term for protection is extended to 100 years from the date of fixation of the works.