KENFOX IP & Law Office > IP Practice in Vietnam  > IP Practice – Trademark in Vietnam > Overcoming the NOIP’s refusal, appeal against the NOIP’s refusal decision

Overcoming the NOIP’s refusal, appeal against the NOIP’s refusal decision

1. Is ``re-examination`` provided in Paragraph 4, Article 117 of IP Law and Article 16.1 of Circular No.01/2007 different procedure from ``Complaints`` provided in Article 14 of Decree No.103/2006?

KENFOX: “Re-examination” under Paragraph 4, Article 117 of IP Law of Vietnam will be conducted when the applicant/third party objects to the NOIP’s Notice of intended grant of a protection title. However, “re-examination” under Article 16.1 of Circular No.01/2007/TT-BKHCN will be conducted when the applicant/third party objects to the NOIP’s issuance of a Notice on intended grant/intended refusal to grant a protection title. In Vietnam, a certain circular is statutorily issued to specify the provisions set out in a law. In view of the above-mentioned provisions, in this case, it seems that the provision in Article 16.1 of Circular No.01/2007/TT-BKHCN has been expanded in comparison with provision in Paragraph 4, Article 117 of IP Law of Vietnam.

 

We note that in practice, the “re-examination” procedure is conducted when the applicant/third party objects to the NOIP’s Notice. Such objection from the applicant/third party may serve as a reference for the NOIP to re-examine and then, makes a final decision. As such, the “re-examination” procedure may, by nature, be a procedure of settling an objection and the applicant/third party can not continue rendering their counterstatement after the NOIP makes its final decision. If the applicant/third party wishes to request the NOIP to consider their continuous counterstatement after the NOIP makes its final decision, the applicant/third party is statutorily required to file with the NOIP a complaint.

 

Under Article 14 of Decree No. 103/2006/ND-CP, if the applicant/third party is not satisfied with the NOIP’s decision on settlement of the complaint (first complaint), they may file another complaint (second complaint) to Ministry of Science & Technology (“MOST”), a superior body of the NOIP or initiate a lawsuit against the NOIP’s decision. After that, if the applicant/third party is not satisfied with MOST’s decision on settling the second complaint, they are still entitled to bring the case to the court.

 

In view of the foregoing, an objection may be filed against the NOIP’s Notice on intended grant/intended refusal to grant a protection title for its re-examination thereon. Such objection may be regarded as a reference (or providing information) for the NOIP’s re-examination. When the NOIP issues its final Decision, no more counterstatement from the applicant/third party will be accepted for settlement by the NOIP. In a broader sense, re-examination will be conducted at one level. Meanwhile, a complaint may be examined and settled at various levels as specified above.

2. Paragraph 4, Article 117 of IP Law reads ``4. Where there appears an objection to the intended grant of a protection title, the relevant industrial property registration application shall be re-examined with regard to the matters against which the objection is made.`` (English translation from noip.gov.vn). In what case does this provision apply?

KENFOX: “Re-examination” procedure under Paragraph 4, Article 117 of IP Law shall be conducted in the following conditions:

 

  • A written opinion is sent by the applicant to the NOIP during the period from the date of issuance of a notice on intended grant/intended refusal to grant a protection title to the date prior to the issuance of a decision on grant/an official notice on refusal to grant the relevant protection title; or a report is made by a third party, stating justifiable reason(s) for the absence of a reasonable condition or opportunity to express his/her/its opinions;
  • Opinions mentioned at Point (i) above are well-grounded and supported by proofs or references to reliable information sources;
  • Arguments or evidence to prove that opinions mentioned at Point (i) above are different from those previously furnished (if any), or though they are not different from the previously furnished ones but the NOIP has not yet replied according to the provisions of Point 6.2 of Circular No. 01/2007/TT-BKHCN.
3. Does ``intended grant of a protection title`` mean ``intended refusal to grant a protection title`` and the ``objection is made`` by the applicant? Or, ``intended grant of a protection title`` means the examinar is ready to grant and ``the objection is made`` by someone resisting the the grant? In the latter case, how can someone other than the applicant can know the examiner's intention to grant?

KENFOX: “Intended grant of a protection title” does not mean “intended refusal to grant a protection title” and the “objection is made” by the applicant. As a matter of fact, a Notice on “intended grant of a protection title” is issued when the NOIP’s examiner finds that the industrial property registration application meets requirements of protection. Meanwhile, a Notice on “intended refusal to grant a protection title” is issued when the NOIP’s examiner finds that the application does not meet requirements of protection.

 

In regard to “Notice of intended grant of a protection title”, an objection may be raised against such Notice in two cases, i.e. (i) the applicant files an objection and (ii) the third party files an objection.

 

In practice, the NOIP sends a Notice on intended grant of a protection title to the owners of industrial property registration applications, requesting them to pay the fees for grant of Protection Title within 01 month in conformity with Article 15.7.a (iii) of Circular No. 01/2007/TT-BKHCN. Besides, information on “intended grant of a protection title” is published in an INID code on the NOIP’s online IPLIB (NOIP’s website). Thus, in principle, to identify the examiner’s intention to grant, a regular check on the NOIP’s online IPLIB is advisable. However, in the NOIP’s online IPLIB, it is not possible to know the full contents of the examiner’s intention to grant for possible objections because such contents are not displayed for public access. Moreover, practice indicates that due to NOIP’s delayed inputs, information on “intended grant of a protection title” is often available upon expiry of the above one-month period. Thus, the applicant pays the granting fees already. Filing an objection/opposition to the NOIP’s Notice on intended grant of protection title after the granting fees are paid by the applicant will not be accepted by the NOIP.

 

In practice, a regular unofficial check with the NOIP’s examiner in charge of the application should be conducted to identify the examiner’s intention to grant for timely objection/opposition.

 

In case the industrial property subject matters in the application are matured into registration, a third party is entitled to file an invalidation/cancellation request with the NOIP against such protection title in accordance with Article 95 and 96 of the IP Law of Vietnam.

4. Are there section or articles of IP Law regarding complaints provided in Article 14 of Decree No.103/2006?

KENFOX: No, there are not sections or articles of the IP Law of Vietnam regarding complaints provided in Article 14 of Decree No.103/2006. However, complaint under Article 14 of Decree No.103/2006/ND-CP are specifically prescribed in Article 22 of Circular No. 01/2007/TT-BKHCN and complies with general legislations in Law on Complaint No. 02/2011/QH13 dated 11 November 2011.

5. What is the scope of Article 14 of Decree?

Does it include complaints:

 

  •  by an opposing party to the applicant about the validity of a patent,
  •  by the applicant about the rejection of his patent application,
  •  by both parties about the decision concerning Article 96 of IP Law, and
  •  by the applicant or an opposing party about the decision concerning Article 97  of IP Law?

 

KENFOX: We understand that your question concerning complaint as set out in Article 14 of Decree No. 103/2006/ND-CP.

 

Under Article 14 of Decree No. 103/2006/ND-CP, “applicants and all organizations and individuals with rights and interests directly related to decisions or notices concerning the processing of industrial property registration applications, which are issued by the state