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IPR assessment against IPR infringement, expert opinions in IPR infringement in Vietnam

1. Please advise if there exist any public institutions (e.g. IP office, court or governmental research institutions, etc.) which provide IPR analysis services to IPR holders in Vietnam.

There have been 3 public organizations which provide expertise opinions/ IPR assessment conclusions (IPR analysis services) in Vietnam, namely, (i) Intellectual Property Office of Vietnam (“IP Vietnam”), (ii) Vietnam Intellectual Property Research Institute (“VIPRI”) and (iii) Expertise Center of Copyright, Related Rights (“ECCR”).

Please see some details of the above-mentioned organizations in Vietnam as follows:

(a) Intellectual Property Office of Vietnam (“IP Vietnam”)

Address: No. 384-386, Nguyen Trai Street, Thanh Xuan District, Hanoi, Vietnam

Phone: (84-24) 38583069 – 38583425 – 38583793 – 38585156.

Website: http://ipvietnam.gov.vn/

Number of Staffs: approx. 350

Remark: IP Vietnam is an agency under the Ministry of Science and Technology, assuming the functions of exercising the State management and providing services in the field of industrial property.

(b) Vietnam Intellectual Property Research Institute (“VIPRI”)

Address: 39, Tran Hung Dao Street, Hoan Kiem District, Ha Noi, Vietnam

Phone: (84-24) 35563449 – 35563450 – 35563451 – 35563452

Website: http://www.vipri.gov.vn/

Number of Staffs: 30

Remark: VIPRI is an administrative agency under the Ministry of Science and Technology accredited for providing assessment services concerning industrial property subject matters

(c) Expertise Center of Copyright, Related Rights (“ECCR”)

Address: No. 33 Alley 294/2 Kim Ma, Ba Dinh District, Hanoi, Vietnam

Phone: (84-24) 37282118

Website: www.cov.gov.vn

Number of Staffs: 5

Remark: ECCR is an administrative agency under the Ministry of Culture, Sports and Tourism, competent to conduct assessments on copyright and related right infringement.

2. What kind of analysis is available in the IP Vietnam, the VIPRI and the ECCR?

(a) The IP Vietnam

The IP Vietnam (formerly, the National Office of Intellectual Property of Vietnam (“NOIP”)) is competent to provide search services to determine registrability, prior art search, FTO search, validity, invalidity of inventions, industrial designs and trademarks. However, due to the recent restructuring at the IP Vietnam, the IP Vietnam has not yet resumed officially accepting search requests at present. Instead, KENFOX may request the IP Vietnam’s officials to conduct unofficial searches and provide with preliminary opinion/analysis based on the search outcomes.

For your further information, as an agency assuming the functions of exercising the State management and providing services in the field of industrial property, upon being requested by the Vietnamese enforcement authorities, the IP Vietnam may provide its expertise opinions on alleged infringement cases concerning industrial property subject matters such as inventions, industrial designs, designs of semi-conducting closed circuits, trade secrets, marks, trade names, geographical indications and unfair competition.

(b) The VIPRI

VIPRI is an institute under Ministry of Science and Technology accredited for delivering expert opinions relating to IP infringement cases concerning industrial property subject matters such as inventions, industrial designs, designs of semi-conducting closed circuits, trade secrets, marks, trade names, geographical indications. The requesters may request the VIPRI to (i) determine scope of protection of industrial property rights, (ii) assess similarity, (iii) determine infringing element, and (iv) determine damages. However, at current stage, due to limited human resources, the VIPRI only provide assessment services concerning inventions, industrial designs, geographical indications and trademarks. The scope of assessment services only includes similarity assessment and assessment to determine infringing element based on invention, industrial design, geographical indications and trademark rights.

Recently, the VIPRI is also equipped with various functions to provide search services to determine registrability, prior art search, FTO search, validity, invalidity, but in recent practice, these functions are in the trial period and have not been readily available. Thus, at the moment, most of the search services are conducted by the IP Vietnam’s officials.

(c) The ECCR

The ECCR is competent to conduct assessments on copyright and related right infringement. The ECCR was established in 2016 and has just come into operation for some years. Thus, the ECCR’s officials always request to check all documents to be assessed before accepting to receive them for assessment purpose.

3. Who are entitled to request the IPR analysis? Further, can such person request the analysis anonymously through an agent (e.g. law firm or patent agent)?

As regards the search services provided by the IP Vietnam’s officials (e.g. registrability, prior art search, FTO search, validity, invalidity), there are no regulations limiting the entitlement of requesting the services. In practice, most of the search cases are requested anonymously through an agent (e.g., law firm or patent agent) without revealing the actual requesters.

With respect to the entitlement of requesting assessment conclusions of the VIPRI and the ECCR, per Article 40, Decree No. 105/2006/ND-CP of 22 September 2006 on detailing and guiding the implementation of a number of articles of the IP Law on protection of IPRs and State management of IP, amended and supplemented in 2010, those who are competent to solicit and request intellectual property assessment include:

(i) The Vietnamese enforcement agencies (e.g. courts, inspectorates, market management offices, customs offices, police offices and people’s committees at all levels) are competent to solicit intellectual property assessment.

(ii) Intellectual property right holders, organizations and individuals subject to a request for handling of acts of infringement or intellectual property-related complaint or denunciation and other organizations and individuals with related rights and interests in an intellectual property-related dispute, infringement, complaint or denunciation.

No regulations are laid down under the laws of Vietnam on requesting the analysis anonymously through an agent (e.g. law firm or patent agent). An IP agent, which is authorized by the IPR holders under a Power of Attorney, is entitled to file a request for assessment. For a request of assessment to be accepted, various information/documents must be included therein and submitted to the VIPRI or ECCR, including but not limited to the IPR subject matters on which the assessment is based, the name/address of the IPR holders.

4. Please let us know the involved cost and timeline for the IPR analysis by such public institutions.

(a) The IP Vietnam

Involved cost: For the search services conducted by the IP Vietnam’s officials, the official fees for these services have not been specified by the IP Vietnam. Thus, the payable fees vary on a case by case basis. For the IP Vietnam’s expertise opinion at the request of the Vietnamese enforcement authorities, no official fees are payable to the IP Vietnam.

Timeline: For the IP Vietnam’s expertise opinion at the request of the Vietnamese enforcement authorities, it may vary, ranging from 5-15 working days or longer

(b) The VIPRI

Involved cost: For the VIPRI’s assessment, official fee varies subject to various factors such as:

(i) Number of pages of the assessment conclusion;

(ii) Number of pages of patent specification and number of claims to be assessed (in case of patent infringement);

(iii) Number of contents to be assessed;

(iv) Number of subjects to be assessed.

Timeline: For the VIPRI’s assessment, it takes about 45 working days for obtaining the VIPRI’s Assessment Conclusion in normal cases. Upon acceptance of the VIPRI, it is possible to speed up the assessment process to get the assessment conclusion earlier, e.g. within about 25 working days or even less, subject to an extra cost

Involved cost: For the ECCR’s assessment, the official fee depends on the complexity of the case which will be undecided until the case is reviewed by the ECCR’s experts. An official schedule of fee is still being constructed and has not been available up to date. For the ECCR’s assessment, the ECCR’s officials always request to check all documents to be assessed before accepting to receive them for assessment purpose.

Timeline: For the ECCR’s assessment, it is still unknown about the timeline for issuing an assessment conclusion.

Readmore: Related Questions on IPR Enforcement in Vietnam