KENFOX:

Pursuant to Article 131, Law on Intellectual Property of Vietnam, provisional rights to inventions, industrial designs and layout designs are provided as follows:

1. Where an applicant for registration of an invention or industrial design knows that such invention or industrial design is being used by another person for commercial purposes without prior use right, the applicant may notify in writing the user of the filing of the latter’s application, clearly specifying the filing date and the date of publication of the application in the Official Gazette of Industrial Property so that the user may either terminate or continue such use.
2. For a layout design which has, before the grant date of the certificate of registered design of semi-conducting closed circuits, been commercially exploited by the person with the registration right or his or her licensee, if such person knows that such layout design is being used by another person for commercial purposes, then he or she may notify in writing the user of his or her registration right so that the user may either terminate or continue such use.
3. Where the person notified of contents stipulated in clauses 1 and 2 of this article continues using such invention, industrial design or layout design, then as soon as an invention patent, utility solution patent, industrial design patent or certificate of registered design of semi-conducting closed circuits is granted, the owner of the object shall have the right to request the user to pay compensation equivalent to the price for licensing of such invention, industrial design or layout design within the corresponding scope and duration of use.

Based on the above regulation, the pre-patent issuance damages are allowed from the date of patent application publication provided the followings:

• The infringer has no prior use right.
• The infringer has received a Notice of publication from Owner(s) of patent application(s) but still using the invention. This Notice should indicate filing date and date of publication. There are no guides, however, concerning determination of receiving such Notices (if any) from the infringer so far. Therefore, the best way of infringer’s notification is to send these Notices via registered mails and via media.
• Claims of publication are similar to infringed claims. There is just a newly established IP Assessment Office in Ministry of Science and Technology having rights for assessment and give conclusion on similarity between sets of claims.
• Claimed patent application(s) be granted later on.

In particular, if the infringer received a Notice of the publication from Owner(s) but still using the invention then upon granting Patent(s) for invention/design the Patent Owner(s) has/have the rights to request to pay compensation equivalent to the royalties for licensing such invention, industrial design or layout-design within the relevant extent and period of use.

KENFOX: There is one stipulation concerning attorney fees be awarded to Owner of Patent. In particular, Article 205 (3) of Vietnam IP Law stipulates as follows:

“Apart from the compensation as provided for in subparagraphs (1) and (2) of this paragraph, the Owner of IP rights shall have the right to request the court to compel organizations or individuals that have committed acts of infringement of Intellectual Property rights to pay reasonable attorney fees“

KENFOX:

Yes, an injunction and even preliminary injunction can be obtained under circumstances the patentee would face irreparable harm without an injunction (Legal basis: Civil Procedure Code 2015).

In addition, per Article 206 of Vietnam IP Law, right to request the court to apply provisional urgent measures is provided as follows:

1. Upon or after the initiation of a lawsuit, an intellectual property right holder shall have the right to request the court to apply provisional measures in the following cases:

• There is a danger of irreparable damage to such intellectual property right holder;
• Goods suspected of infringement of Intellectual Property rights or evidence related to the act of infringement of industrial property rights are likely to be dispersed or destroyed unless they are protected in time.

2. A court may make a decision applying provisional urgent measures at the request of an industrial property right holder as stipulated in clause 1 of this article before hearing the party subject to such measures.

Article 207 of Vietnam IP Law stipulates about “Provisional urgent measures” as follows:

1. The following provisional urgent measures may be applied to goods suspected of infringing Intellectual Property rights or to raw materials and materials, or facilities of production or trading of such goods:

• Retention;
• Seizure;
• Sealing; prohibiting any alteration of the original state; prohibiting any movement;
• Prohibiting transfer of ownership.

2. Other provisional urgent measures may be applied in accordance with the Civil Procedure Code.

Article 208 of Vietnam IP Law stipulates about “Obligations of applicants for provisional urgent measures” as follows:

1. Applicants for provisional urgent measures shall bear the burden of proving their right provided for in clause 1 of article 206 of this Law by producing the documents and evidence stipulated in clause 2 of article 203 of this Law.
2. An applicant for provisional urgent measures shall be obliged to pay compensation for loss caused to a person subject to such measures in a case where the latter is found not to have infringed industrial property rights. To secure the performance of this obligation, an applicant for provisional urgent measures shall deposit security in one of the following forms:

• A sum of money equal to twenty (20) per cent of the value of the goods subject to the application of provisional urgent measures, or at least twenty million (20,000,000) dong where it is impossible to value such goods;
• A deed of guarantee issued by a bank or other credit institution.

KENFOX: A preliminary injunction can be obtained under Vietnam IP Law

• A preliminary injunction (provisional urgent measures a stipulated in current Vietnam IP Law) can be obtained (please refer to the above answer).
• The bond must be posted to secure the injunction and to help compensate the infringer. The bond will be 20% of value of goods in violation or minimum 20,000,000 VND (about 950 USD) in case of not able to determine the value of goods in violation.

KENFOX: Yes, there is a requirement that the infringer be on Notice of the publication of patent application before past damages can accrue.

KENFOX: Not all applications for patent of invention examined by a government authority (National Office of Intellectual Property) after filing. In order to be examined, a request for examination as to substance must be filed. The request shall be filed within 42 months counted from earliest priority date.

There is no need to file a request of examination as to substance for Design applications.

KENFOX: There are no direct legal standards for invalidating a patent, however it could based on the legal standards for conclusion of Novelty, Obviousness. Therefore, it is possible to invalidate a patent via Novelty and/or via Obviousness;

There are no stipulations concerning “supporting issues” like in the US. The only legal standard relating to “supporting issue” may be “Applicant do not have the right to file application nor has been assigned such right” and it could be one of legal standards for invalidating a patent.

KENFOX:

The following procedures could be proceeded to challenge the validity of Patent outside of the courts:

Re-examination proceeding can be filed by a third party at the National Office of Intellectual Property of Vietnam (NOIP). In that case, the third party shall file arguments, legal bases and other proofs for invalidating of Patent. NOIP could arrange the meeting between third party and Owner of Patent.

KENFOX: Currently, there are no legal stipulations concerning indirect infringement in Vietnam.

KENFOX: The validity challenge will be handled in the same litigation if the followings are met:

• infringer files counter-claim; and
• this counter-claim must be accepted by Judge as to compensate to complaint and there is a relationship between complaint and counter-claim and if these would help to solve the case in a quick and exact way.

KENFOX: The average costs depend on complexity of the case.

KENFOX: The parties could conduct the following actions:

• Pre-filing investigation to collect proofs;
• Depositions;
• Request for production;

With reference to interrogatories or request for admission please be advised that there are no stipulations allowing such actions at the moment.

KENFOX:

Yes, the Vietnamese government can impose a compulsory license in Vietnam under the following circumstances:

• Where the use of the invention is in the public interest, or for non-commercial purpose, national defense, security, disease prevention and treatment, nutrition for people, or meeting other urgent needs of the society;
• Where the exclusive patent right holder fails to fulfill the obligation of using the invention as provided for in paragraph (1) Article 136 (The owner of an invention shall have the obligation to manufacture the patented product or use the patented process to meet the needs of national defense, national security, disease prevention and treatment, nutrition for people and to meet other urgent social needs. Where the needs provided for in this paragraph arise and the owner of an invention fails to perform such obligation, the State competent authority may grant licenses to use the invention to others without consent of the owner of the patented invention) and paragraph (5) Article 142 (A licensee under an exclusive patent license contract shall have the same obligation to use the invention as the owner of the invention as provided for in paragraph (1) of Article 136 of this Law) of VN IP Law 2005 after the expiration of four years from the date of filing of the patent application and the expiration of three years from the date of grant of the Patent for Invention depends on which comes later;
• Where the person who wants to use the invention fails, despite efforts made within a reasonable period of time for negotiation on reasonable considerations and commercial conditions, to reach an agreement with the exclusive patent right holder upon the conclusion of a patent license contract;
• Where the exclusive patent right holder is determined to perform an act of anti-competition prohibited under the law on competition;
• Where the owner of the dominant invention fails, without justifiable reasons, to satisfy the request made by the owner of the dependent patent, the competent authority may, without permission of the owner of the dominant invention, grant a license to exploit the dominant invention to the owner of the dependent patent.

For example, in some countries, the major milestones are as follows:

1. The patent holder must conduct a pre-filing investigation to ensure it has a good faith basis to file the lawsuit.
2. A complaint is prepared, filed and served on the defendant.
3. The defendant answers the complaint.
4. The court sets forth a scheduling order that dictates the deadlines in the case.
5. Discovery commences (written discovery, depositions, motion practice).
6. A hearing takes place where the scope of the claims is determined by the Court (Markman hearing).
7. Expert discovery takes place.
8. Pre-trial preparation begins after the close of discovery.
9. Trial takes place (typically 18-24 months after the filing of the complaint).
10. Appeal can be taken (typically decided within 12-18 months after the trial).

KENFOX:

The major milestones of a litigation in Vietnam are summarized as follows:

• The patent holder must conduct a pre-filing investigation to ensure it has a good faith basis to file the lawsuit.
• A complaint is prepared, filed and served on the defendant in due prescription time (two years from date of infringement).
• Court issues a Notice of handling the case
• Judge issues a Decision to hear the case
• Negotiation between parties in the presence of Judge before the Trial takes place
• Trial takes place (typically 03-05 months after date of Notice of handling the complaint).
• To file an appeal application against Decision in Trial within 15 days counted from date of declaring Decision
• Appeal can be taken (typically decided within 04-06 months after the trial).

KENFOX: No, software related inventions, business methods and/or computer programs are not patentable subject matters in Vietnam.

KENFOX: Yes, under Article 131.1 of Vietnam IP Law, a third party can file a request for examination.

KENFOX: Under IP Law and Regulations, the applicant is allowed to make an amendment to the filed specification as well as claim(s), provided that the amendment does not go beyond the originally filed description (Art. 115.3, Vietnam IP Law). Thus, it is not possible to add additional experimental data (Examples and Comparative Examples) to the specification by an amendment if such experimental data go beyond the originally filed description.

KENFOX: Yes, it is possible to request one extension of response period after the first deadline (Rule 9.2, Circular 01/2007/BKHCN).

KENFOX: It is possible to late enter PCT applications into Vietnam national phase (within 6 months counted from the expiration of 31 month period) (Rule 27.5b, Circular 01/2007/BKHCN). However, there is no provision on the extension of the Paris Convention priority period (12 months from the filing date of the first application).

KENFOX: Yes, it is possible to interview with examiners. We have usually conducted interviews with the Examiner either via telephone or in person. After the interview, we have usually concluded the discussed matters in writing in the form of working papers/reports which shall be considered as official opinion.

KENFOX: Per Vietnam Patent Law and Regulations, an expedited examination is allowed upon submission of a request for examination acceleration to the NOIP (Circular 01/2007/TT-BKHCN, Rule 9.3). However, in patent practice, the NOIP does not always accept to do expedited examination, except exceptional cases. We have to submit a request letter with reasons of requesting expedited examinations of the client’s application. The request letter must be agreed and approved by the examiner-in-charge and the manager of the Patent Department.

From our experience, an expedited examination may be easier to be accepted if a corresponding application in at least one of other jurisdictions such as, for example, US, CA, JP, RU, UK, SE, AT, ES, AU, CN, KR, DE, EPO, EAPO, has been allowed for a patent grant, and the claims of the Vietnam patent application are the same as the claims of the granted patent in the above-mentioned jurisdictions.

KENFOX: The third party observation is available in Vietnam (third party opinions) per Rule 6, Circular 01/2007-BKHCN. As from the date of publication of the application on the Official Gazette of Industrial Property until the date of issuance of a decision on granting a patent, any organization or individual shall have the right to submit a written opinion to the NOIP regarding the right to file an application, the priority right, protection criteria or other matters relating to the applications. The third party opinion shall be regarded as an information source during the prosecution of the applications.

The NOIP shall, within one month from the date of receipt of the written opinion from a third party, notify such opinion to the applicant and fix a maximum time period of one month for the applicant to respond. Upon receipt of the applicant’s response, if necessary, the NOIP shall notify the third party of the applicant’s response and fix a maximum time period of one month from the date of the notification for the third party’s response. The NOIP shall consider the third party’s and the applicant’s opinions on the basis of the evidence and arguments provided by such parties and on the basis of the application’s data.

If the NOIP considers that the opinion of the third party is ungrounded, they do not need to notify such opinion to the applicant, but they must notify the third party that they refuse to consider the opinion of the third party and must specify the reasons.

In case the opinion of the third party relates to the rights to file an application, and if the NOIP is unable to confirm whether or not such opinion is grounded, the NOIP shall notify the third party to request the third party to initiate a lawsuit before the court in order to resolve the matter. If within one month from the date of such notification, the third party shall not notify the NOIP that the third party has initiated the court proceedings; the opinion of the third party shall be deemed to have been withdrawn. If the NOIP is notified by the third party that the court proceedings has been initiated, the NOIP shall issue a stay of the prosecution to wait for the court’s decision. After receipt of the court’s decision, the application shall continue to be prosecuted in conformity with the court decision.

The NOIP may, if necessary and if the parties have requested, organize in-person discussion between the third party and the applicant in order to clarify the matters.

KENFOX: “Use” claims are no longer patentable subject matter in Vietnam.

KENFOX: As you may know, in the past, the “use” claims had been accepted by the National Office of Intellectual Property of Vietnam (NOIP ) to grant patent for rather a long time. It is worth to note that those use claims were accepted by the NOIP although there was no specific legal provision in Vietnam patent law and regulations specifying the same.

However, since the advent of the IP Law 50/2005 in July 2006, the NOIP changes their practice and does no longer accept “use” claims as patentable subject-matter. The reason the NOIP’s examiner(s) have usually used to reject use claims is that “In accordance with Article 4.12, Intellectual Property Law as well as Rule 25.3a, Circular 01/2007/TT-BKHCN, the subject matter of an invention is product or process only; the “use” subject matter is neither “product” nor “process”, therefore it is not considered as patentable subject matter”.

The NOIP’s refusal of “use” subject matter has been under a big debate in Vietnam. Our firm and other Vietnam IP agents have already submitted letters to request the NOIP to issue an Official Letter or Order, not only in the form of an Office Action, to explain the reasons and/or quote appropriate legal grounds for the change. However, until now we have not yet received any official reply from the NOIP.

In practice, in order to maintain the “use” claims in the claim set, the applicant may choose one of the following options, when appropriate:

• to reword the use claims into the “composition/compound for use” claims; or
• to re-format the use claims into the method/process format.

However, although the re-wording of the “use” claims into the “composition for use” may be acceptable at the formality examination stage, they are acceptable by the NOIP’s examiners on the case by case basic only. The NOIP’s examiners may raise further objections to the reworded claims for different reasons, for example, the re-worded (compound or method/process) claims are not literally supported by the description or the re-worded compound claims lack the technical features required therefor. Even when we tried to insert the technical features of the composition/compound (for example, chemical structure, chemical formula, etc.) into those claims, the NOIP examiners may still raise further objection that the composition/compound is already known.

In brief, it is really hard to advise what kind of claim format may be granted for a medical use invention for the time being. If the applicant(s) wishes to have a patent prosecuted right away, it is advisable to remove “use” claims from the set of claims. Otherwise, we may file a request for delay in examination (or even a appeal request if the application has been rejected) and see what shall be coming out in a later stage.

KENFOX: The connotation of the terms “variances” seems to be large. Thus, we assume that the terms “variances” may refer to the organizational structure and jurisdiction of the People’s Courts in provinces and municipalities. If so, we would like to note that no different legislations on People’s Courts in provinces and in municipalities are set out in the Law on organization of People’s Courts (Law No. 33/2002/QH10). In conformity with Article 27, 28 and 29 of Law No. 33/2002/QH10, the People’s Courts in provinces and municipalities have the same organizational structure and jurisdiction. To sum up, there are no variances between the Vietnamese People’s Courts in provinces and municipalities.

However, if the terms “variances” refer to experience, expertise and knowledge of the judges in the Vietnamese People’s Courts in provinces and municipalities, we think that they are not the same. As a matter of fact, judges in the People’s Courts in municipalities have better experience, expertise and knowledge, especially on international intellectual property matters, than those in People’s Courts in provinces.

KENFOX: In respect of court jurisdiction, in conformity with Civil Procedure Code 2015, “disputes and requests […] which involve parties or properties in foreign countries or which must be judicially entrusted to overseas representative missions of the Socialist Republic of Vietnam or to foreign courts” fall under the jurisdiction of provincial municipal People’s Courts.

Under Article 35.1.a of Civil Procedure Code, territorial jurisdiction of courts to settle civil cases shall be determined as follows: “The courts of the localities where the defendants reside or work, if the defendants are individuals, or where the defendants are headquartered, if the defendants are agencies or organizations, shall have the jurisdiction to settle according to first-instance procedures civil, marriage- and family-related, business, trade or labor disputes prescribed in Articles 25, 27, 29 and 31 of this Code”.

In view of the foregoing legislation, if a foreign company has a patent and files an infringement law suit in Vietnam, the provincial municipal People’s Courts of the localities where the defendants reside or work, if the defendants are individuals, or where the defendants are headquartered, if the defendants are agencies or organizations, shall have the jurisdiction for the law suit.

KENFOX: Under Article 86.1b, Vietnam IP Law Intellectual Property Law (Vietnam IP Law), the entities or individuals who have invested finance and material facilities to the inventors in the form of a job assignment or job hiring, shall be entitled to file patent applications for those inventions created by such inventors while on the job, unless otherwise agreed by the parties.

Thus, employers shall be entitled to obtain patents for such inventions and be given an exclusive right over the patented invention, while employees shall enjoy some moral rights over the invented technology in addition to some remuneration. For example, the employee-inventor shall be named as inventor in relevant patent letters as well as in any documents in which the invented technology is published or introduced. Employees shall also enjoy some remuneration in accordance with the law, which is stipulated as at least 10% of benefits obtained from using the invention, and 15% of the sum amounted from each royalty for granting a license to use the invention, unless otherwise agreed by the parties (Art. 135.2, Vietnam IP Law).

To our knowledge, there has been no precedent case where the amount of remuneration was argued in Vietnam.

In Vietnam, there are not many cases relating to the remuneration matter. We know one fertilizer manufacturing company in Vietnam who specifies in its written regulations that the employed inventor(s) shall receive a remuneration of at least 20% of the benefits gained from the use of invention. The payment can be made in installments depending on the agreement between the relevant parties, and it is made for the whole life of the patent.

However, we do not know if such a regulation has been followed in practice since the relevant law and regulations in Vietnam contain no guidance/provision on how to determine the benefits obtained from using the invention. Since it is not easy to determine such benefits, it appears to be more common having the remuneration agreed by the parties.

KENFOX: Yes, per Article 18.39 of the CPTPP which provides for “Grace Period”,

[Each Party shall disregard at least information contained in public disclosures used to determine if an invention is novel or has an inventive step, if the public disclosure:

(a) was made by the patent applicant or by a person that obtained the information directly or indirectly from the patent applicant; and

(b) occurred within 12 months prior to the date of the filing of the application in the territory of the Party].

In Vietnam, per Notification No. 1926/TB-SHTT dated 01 February 2019, issued by the IP Office of Vietnam, as from the effective date of the CPTPP, the provisions of Article 60.3 of the IP Law regarding the circumstances where an invention shall not be considered as lacking novelty shall be applied as follows:

– The invention is publicly disclosed by the person having the right to registration or the person who obtained the information directly or indirectly from the person having the right to registration (regardless of whether this information is obtained with or without permission of the person having the right to registration); and

– The public disclosure in the above-mentioned circumstance occurs within no more than 12 months before the filing date of the patent application at the NOIP (without consideration of the priority date).

Information disclosed publicly in the above case shall not be used as a cited document (not in the “state of the art”) to determine the novelty or inventive step of the invention concerned