30 November 2021
Writer: Tuyen Pham
Industrial property right (“IPR”) brings many benefits to owners both physically and mentally. To fully exploit the potential of the intellectual property object, the owner may transfer the IPR. This is a form that not only helps the owner earn a sum of money or material benefits, but also contributes to the dissemination of technology, improving research efficiency. One of the steps to transfer IPR is registration of IPR transfer contract.
Through this article, BLawyers Vietnam will provide underneath 04 important notes on registering this transfer contract type.
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What is IPR? What is IPR transfer?
According to regulations, IPR means rights of an organization or individual to inventions, industrial designs, designs of semi-conducting closed circuits, trademark, trade names, geographical indications, and trade secret which such organization or individual created or owns, and the right to prevent unfair competition.
Transfer of IPR means the transfer of ownership right by the owner of such industrial property right to another organization or individual.
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Conditions restricting the transfer of property rights
When carrying out the transfer of IPR, organizations/individuals should pay attention to the following restrictive conditions:
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Industrial property rights owners may only assign their rights within the scope of protection.
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Rights to geographical indications shall not be assignable.
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Rights to trade names may only be assignable together with the transfer of the entire business establishment and business activities under such trade name.
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The right transfer to marks must not confuse as to properties or origins of goods or services bearing such marks.
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Rights to marks may only be assignable to organizations or individuals who satisfy conditions for persons having the right to register such marks.
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Contents of industrial property right transfer contract
The industrial property transfer contract is an important factor in deciding whether the registration of an industrial property transfer contract with the competent authorities shall be acceptable or not. Therefore, individuals/organizations should note that an IPR transfer contract must contain the following principal contents:
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Full names and addresses of the transferor and the transferee.
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Information of to-be-transferred IPR.
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Transfer price.
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Rights and obligations of the transferor and the transferee.
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Procedures for registration of IPR transfer contract
To be able to carry out the registration, individuals/organizations need to understand the process and procedures. According to prevailing regulations, the procedure for registration of an IPR transfer contract includes the following steps:
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Step 1: Preparing the dossier
At this step, individuals and organizations must prepare a by-law dossier for submitting to Vietnam National Office of Intellectual Property (“NOIP”).
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Step 2: Receiving of dossiers
Related parties can submit a dossier for registration of an industrial property transfer contract directly to or by post to the NOIP in Hanoi or its representative offices in Ho Chi Minh City and Da Nang.
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Step 3: Processing dossiers
This is the stage carried out by the NOIP, whereby this authority shall review the dossiers and make corresponding decisions on a case-by-case basis.
Firstly, considering that the registration dossier has no concerns, the NOIP shall issue a decision to record the transfer of the IP.
In case the registration dossier has errors, the NOIP shall issue a notice of its intention to refuse to register the contract. In which, the NOIP will clearly state the shortcomings of the dossier so that the applicant may correct the errors or give feedback on the intention to refuse to register the contract.
If the applicant fails to correct or unsatisfactorily corrects the omission, there is no objection or unwarranted objection to the intention to refuse to register the contract within the fixed time limit. NOIP shall decide to refuse to record the transfer.
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Effect of the transfer contract
Types of IPR for inventions, industrial designs, layout designs and trademarks established based on registration, IPR transfer contract shall be valid upon its registration with the State administrative body for IPR.
For IPR that are not required to be registered, the validity of the contract is based on the agreement of the parties.
In short, the registration of an IP transfer contract is a mandatory procedure to transfer this right from an individual or organization to another individual or organization. To save time and cost in carrying out this procedure, individuals and organizations should pay attention to the issues mentioned above.
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