Patent enforcement related questions in Vietnam

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Patent enforcement related questions in Vietnam

Protecting your patent in Vietnam is crucial, but what happens if someone infringes on your rights? This article explores the various remedies available to patent holders in Vietnam, including civil lawsuits, administrative measures, and border control procedures. We’ll also discuss alternative approaches like cease-and-desist letters and the challenges of obtaining compensation.

1. What remedies are available against a patent infringer through civil route in Vietnam?

In Vietnam, patent holders can pursue several civil remedies against infringers through the court system. These remedies are outlined in Article 202 of the Law on Intellectual Property of Vietnam 2005 (revised in 2009, 2019 and 2022). In detail:

Compelling termination of the act of IPR infringement;
Compelling public rectification and apology;
Compelling performance of civil obligations;
Compelling compensation for damages;
Compelling destruction or distribution or put to use for non-commercial purposes of goods, materials and implements predominantly used for production and trade of the IPR infringing goods.

2. Whether patent holder may utilize alternative way to enforce patent right or get remedies through litigation in a court? (For example mediation, custom notice et al.)

Yes, patent holders in Vietnam have several options beyond litigation in court to enforce their patent rights in Vietnam. These alternatives can be faster and less expensive than a lawsuit.

Administrative enforcement: You can file a petition with the Inspectorate of Ministry of Science & Technology to handle the alleged infringement. They can issue warnings, impose fines, or order actions like seizing infringing goods.
Border control measures: You can request Vietnamese customs to monitor imports and exports for suspected infringing goods. This can prevent them from entering the market in the first place. Vietnam has adopted the customs recordal system which is very fruitful for the IPR holders to seize or prevent the infringing goods before they can find a way to penetrate into the mainland market. To this end, IPR holders just need to file a customs recordal request at Customs Supervision Department (“CSP”) under General Department of Vietnam Customs. After receipt of the customs recordal request, the CSP shall transfer such request and other supporting documents to all the provincial and city Customs Authorities throughout Vietnam for monitoring the import and export goods imported into Vietnam.
Informal Action (Cease & Desist Letter): Sending a cease-and-desist letter to the all eged infringer is a low-cost option. It demands they stop the infringement and may be effective for minor cases or if the infringer is unaware they’re violating your patent.

**3. How much cost does the above remedies have? (For example official fee/ attorney fee or posting bond et al.)**

The costs associated with enforcing patent rights in Vietnam can vary depending on the chosen enforcement route (civil litigation, administrative action, or border control measures) and the complexity of the case. To get a more accurate estimate of potential costs, please contact us.

4. How possible can we gain remedies?

The possibility of obtaining remedies for patent infringement in Vietnam depends on several factors.

Evidence of actual loss: To claim compensation for damages, you’ll need clear and verifiable evidence that the infringement directly caused your financial losses. This could include lost sales, profits, or licensing fees. Unfortunately, courts often reject damage claims due to insufficient proof of a direct causal link.
Compensation amounts: Even with successful claims, court-ordered compensation for damages in Vietnam may not be substantial.
Administrative remedies: If your primary goal is to quickly stop ongoing infringement, pursuing the administrative route might be more effective. However, administrative actions only impose fines and don’t offer compensation for damages.

5. How long from filing law suit to judgment / from filing to approval of the injunction under the laws of Vietnam?

The timeframe for obtaining remedies in Vietnam for patent infringement depends on the chosen enforcement route (civil lawsuit or administrative action).

Civil lawsuit: It’s difficult to provide a specific timeframe for judgments in civil lawsuits, as they can vary considerably depending on the case’s complexity and the court’s backlog.
Injunctions: Vietnamese law allows for injunctions (court orders to stop infringing activity) under both civil and administrative procedures.

However, it’s important to note that, according to our knowledge, there has been no award of injunction/injunctive relief issued by the Vietnamese Courts and/or the Vietnamese administrative enforcement authorities up to date.

6. How long is the validity period of the above remedies? (Ex: for injunction et al.)

While your question covers a broad range of remedies, we’ll focus on the validity period of injunctions under Vietnamese civil law.

It’s important to note that injunctions, though provided for in Vietnamese law (Article 209.1 of the IP Law 2005), haven’t been historically granted by Vietnamese courts. However, Article 209.1 offers some insight. It states that the court can cancel provisional measures (which can include injunctions) if the party subject to them proves the application was unfounded.

This suggests an injunction could potentially remain in effect until successfully challenged by the opposing party.

The Code of Civil Procedures (No. 92/2015/QH13) doesn’t specify a precise duration for injunctions

7. Is there any time-limitation of filing the law suit, filing a request for the injunction et al.? What document (proof) does the patent owner need to provide? Is there any standard of the proof or document? Is there any time limitation of filing the law suit, filing a request for the injunction et al.?

Time-limits for initiation of IPR disputes may vary. In detail:

The limitation period for initiating a legal action with the court to settle civil cases (“time-limit”) shall not be applicablein case of request for the protection of ownership rights under Article 155.2, Civil Code;
The time-limit shall be 03 yearsfrom the date on which the IPR owner is aware of or must be aware of infringement in case of initiating legal action claiming compensation for damage under Article 588, Civil Code.

In respect of time limitation for filing a request for the injunction, no explicit legislation under the laws of Vietnam on when the patentee must file a request for the injunction. Normally, the patentee may, at the earliest, file a request for the injunction to prevent irreparable damage thereto and/or to prevent the alleged infringe to disperse or destruct the goods suspected of infringing upon patent rights and relevant evidence if they are not protected in time.

8. What document (proof) does the patent owner need to provide? Is there any standard of the proof or document?

It is advised that patentees (patent holders) considering a civil lawsuit against an alleged infringer should follow these steps:

[i] File a complaint with evidence: Prepare and file a complaint (court petition) with the competent court. This complaint should outline the claims against the defendant and be accompanied by relevant documentary evidence.

[ii] Proof of ownership and infringement: For intellectual property rights (IPR) infringement cases, the plaintiff (person filing the lawsuit) must submit two key types of evidence:

Documents proving their valid ownership of the infringed IPR (The strongest evidence for ownership is usually a certified copy of the issued patent grant from the IP Office of Vietnam).
Documents proving that the defendant has infringed upon their IPR.
Assessment Conclusion from Vietnam Intellectual Property Research Institute.

[iii] Evidence requirements: All submitted evidence must comply with the specific court’s guidelines. In most cases, notarized documents are required.

[iv] Venue: For IPR infringement cases, lawsuits are typically filed in one of two locations:

The court of the province where the defendant resides, works, or has its headquarters.
In cases involving non-contractual damages, the plaintiff may file in the court of their residence, workplace, or headquarters, or the location where the damaging event occurred.

9. Could you advise us about counter-actions to be taken by the infringer against patent infringement claims in Vietnam?

As far as we know, upon being handled by the Vietnamese enforcement authorities, the infringer may take counter-actions to delay/discontinue settling the infringement or invalidate the patent. Practice indicates that one of the common counter-actions which the alleged infringer resort to in a patent infringement case is to challenge the validity of the granted patent (i.e. to file an invalidation request against the patent with the NOIP).

Some of other counter-actions may be available under the IP Laws and relevant Decrees of Vietnam for the alleged infringer are as follows:

The alleged infringer may argue that the accused embodiment does not fall within the patent claims if properly construed under Article 8 of Decree No. 105/2006/ND-CP;
Alternatively, the alleged infringer may argue that the alleged infringing acts are exempted from patent infringement under Article 125.2, IP Law of Vietnam.

10. How much cost does the infringer to invalidate the above remedies?

In our experience, the cost for taking counter-actions against the remedies will vary, subject to which actions will be taken by the infringer.

11. Please advise us chance of success in case the infringer take counter-actions against patent infringement claims in Vietnam

Chance of success in invalidating the remedies are dependent on various factors, such as strength and legitimacy of evidence submitted to support the invalidation actions.

12. Please advise us the duration for the request for invalidation of these remedies come out (ex: from filing request to revocation of the injunction)?

No specific regulation on how long the request for invalidation of the remedies will come out. Normally, the court needs to review the evidence submitted by the infringer to determine whether “the application of injunction was not well founded” or not to cancel/retain the provisional urgent measures applied to the infringer.

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