Vietnam – Amendments Of The Law On Intellectual Property To Comply With The Comprehensive And Progressive Agreement For Trans-Pacific Partnership.

 

1. Regarding patents, Article 60 has been amended to extend the time limit for exceptions where the invention in a patent application shall not be considered as the lack of novelty due to the abused disclosure from six (6) months as promulgated in the 2005 IP Law, to 12 months counting from the date of such abused disclosure. This time limit of 12 months is also applied for the cases where the invention is disclosed in a patent application or a granted patent which has been published by the National Office of Intellectual Property (the “NOIP”) not in accordance with the prevailing laws or the patent application has been filed by a person having no filing rights therefor. In addition, the technical solution(s) disclosed in such cases shall not be used as prior art for valuation of the inventive step for such invention in question.

2. Article 80 specifies that the basis for determining whether or not a designation or an indication has become the generic name of goods in Vietnam, which is a subject excluded from protection as geographical indication in Vietnam shall be the perception or awareness of relevant consumers in Vietnam. Article 80 also specifies that in addition to protected trademarks, pending trademarks having earlier filing date or priority date, if applicable, shall be used as ground for considering the registrability of a geographical indication application, and the confusability to the customers as to the commercial origin of the goods bearing the filed geographical indication shall be the object of the examination.

3. In accordance with Articles 136 and 148, the use of a registered trademark by the licensee under a trademark license agreement without registration thereof with the NOIP shall be eligible for the prescribed trademark owner’s obligation of using such trademark.

 

In order to be compatible with Article 18.74.4 of the CPTPP, Article 205 specifies the grounds for determining physical damage suffered by the IPRs owner as the result of a concluded IPRs infringement, which shall be compensated by the infringer in question, comprising:

 

(i)  total damage attributed to money plus profits acquired by the infringer from the infringement if the lost profit suffered by the IPRs owner has not counted in the total physical damage; or

(ii)  price of IPRs license in the assumed arm’s length transaction; or

(iii)  other measures of counting such physical damage proposed by the trademark owner

in accordance with the prevailing law; or

(iv)  in case where it is impossible for applying the said grounds, as decided by the court

in question subject to the damage amount, but not higher than VND500 million.

 

However, Article 198 provides that in case of no infringement concluded by the court in a lawsuit, the IPRs owner shall compensate to the suspected infringer for its reasonable attorney's costs and other expenses in accordance with the prevailing laws. In addition, in case where a person abusing the IPRs enforcement and accordingly, causing damage to another person, the latter shall have the right to submit a petition to the court, requesting for compensation for its suffering damage, including reasonable attorney's costs.