Introduction

 

The long-awaited Decree detailing and guiding certain articles of the Amended IP Law 2022, which took effect on 1 January 2023, finally became official on 23 August 2023.

 

Key points

 

• Decree No. 65/2023/ND-CP (“Decree No. 65”) was ratified and took effect on the same date, i.e. 23 August 2023. The new Decree includes 5 main parts and 125 articles.
• Decree No. 65 was built based on 02 former Decree No. 103/2006/ND-CP detailing and guiding the implementation of a number of articles of IP Law on industrial property (“Decree No. 103”) and Decree No. 105/2006/ND-CP detailing and guiding the implementation of a number of articles of IP Law on the protection of IPRs and state management of IP (“Decree No. 105”). As a result, Decree No. 65 introduces a comprehensive revision and/or supplementation guiding some articles of the Amended IP Law 2022 on protecting and enforcing industrial property rights and plant variety rights.

 

Details

 

1. Section 3 – Industrial Property Rights

 

a) Chapter I

 

• Added Article 14 – security control of inventions, including an annex listing the technical fields deemed to affect national security.
• Added Articles 16, 17, 18 – Amendment, supplementation, withdrawing, and dividing IP applications. It is noted that documents required for amendment regarding IP applications have been simplified.
• Supplemented Parts 2, 3 and 4 detailing procedures and required documents for PCT/Hague/Madrid applications.
• Supplemented Part 5 regarding registration certificates. Accordingly, the Decree confirms that registration certificates can be issued in electronic form and in paper form. However, hard copy registration will only be issued under explicit request in the application. It also provides various new forms, including application forms for patents, industrial designs, integrated circuits, trademarks, and geographical indications, among others. Also, Part 5 detailed required documents and procedures for amendment, renewal/annuity, cancellation, and invalidation of registration certificates. The most highlighted part is that minor disclaimed elements can be removed providing that such removal does not alter the distinctiveness of the registered mark (Article 29.3).

 

(b) Chapter II

 

• Deleted Article 17 of Decree 103/2006/ND-CP (Respect for previously established rights).
• Added Article 42 claiming compensation due to the delay in issuing the initial marketing authorization for pharmaceutical products manufactured under patent.

 

(c) Chapters III & IV

 

• These chapters are entirely new. There are regulations regarding (i) secret inventions, and (ii) patents, industrial designs, and integrated circuits as results of scientific research using the national budget.

 

(d) Chapter V Detailing procedures and required documents for:

 

• Request for issuing Decision on compulsory license of inventions (Articles 54, 55, 56);
• Request for cancellation of compulsory license of inventions (Article 57);
• Request for recordal of assignment and license agreement regarding industrial property rights (Articles 58, 59, 61);
• Restrictions regarding trademark assignment – Article 60.

 

(e) Chapter VI – IP representatives:

 

Added required documents and detailed procedures to proceed with the following requests:

 

• Request for attending the exam for IP representatives (Article 63);
• Request for issuing, re-issuing and withdrawing the certificate for qualified IP representatives (Article 64). This article also clarifies the procedure for lawyers who passed the training course of the IP Office of Vietnam to obtain the certificate for qualified IP representatives;
• Request for recording and deleting IP representatives as well as IP agencies (Article 65).

 

(f) Chapter VII – Measures to promote IP activities:

 

• Deleted Article 32 of Decree No. 103 – Accounting of expenses and prices related to industrial property

 

2. Section 4 – Protection of Industrial Property Rights and Plant Variety rights

 

(a) Chapter I – Determination of acts, nature and extent of infringement

 

• Amended factors that constitute the infringement of industrial design, trademark, tradename, and geographical indication (Articles 76, 77, 78, 79)

 

(b) Chapter II – Determination of Damage

 

• Detailed grounds for the determination of moral damage, reflecting a greater emphasis by the Vietnamese government on the value of moral rights (Article 84)

 

(c) Chapter III – Process of Handling IP Infringement

 

• Deleted “confiscation” measure (Article 32 of the Decree 105).

 

(d) Chapter IV – Procedure for Control of Imported and Exported goods related to IP rights and plant variety rights

 

• Added specific details regarding the authority, order, and procedures for proactively suspending customs procedures of goods that show clear signs of infringement.

 

(e) Chapter V – Assessment of Infringement

 

• Set up new regulations on the procedure of conducting IP assessment (expert opinion).

 

Conclusion

 

With the new issuance of Decree No. 65, it is expected that the Amended IP Law 2023 will definitively be enforced more efficiently and effectively. Meanwhile, we are still awaiting further guidance on opposition procedure among others as stipulated under the new Circular, which will replace Circular No. 01/2007/TT-BKHCN.