Question: Per Article 112 of the Vietnam IP Law, Third party’s opinion on the grant of the protection titles in Vietnam can be submitted the Vietnam IP Office

– Third party’s opinions seem to be effective in order to block the granting of competitors. Is this tactic often used in practice?

KENFOX:

Article 112, the IP Law 2005: “As from the date an industrial property registration application is published in the Official Gazette of Industrial Property till prior to the date of issuance of a decision on grant of a protection title, any third party shall have the right to express opinions to the relevant state management agency in charge of industrial property rights on the grant or refusal to grant a protection title in respect of such application. Such opinions must be made in writing and be accompanied by documents or must quote the source of information“.

Third party’s opinions are actually effective in order to block the granting of protection title to competitors and this tactic is often used in Vietnam to prevent IP subject matters which are pending at the VIETNAM IP OFFICE from being matured into registration.

Article 112 of the IP Law of Vietnam 2005 (amended in 2009) provides for opposition proceedings. Under both laws and practice of Vietnam, any third party is entitled to file an opposition against a pending application in Vietnam from the publication date of the application till the date when the registration/protection for IP subject matter(s) is/are granted.

– Have you ever used this practice (Third party’s opinions) for patent in Vietnam?

KENFOX:

Yes, we have.

For your further information, as a matter of practice, opposition proceedings to a pending patent application is not often used in Vietnam although any third party are statutorily entitled to file a Notice of Opposition thereto. This results from the fact that the claims, which define the technical scope and features sought for protection, of the patent application are not published in the Official Gazette of Industrial Property (only the abstract is posted therein) and thus, the third party often does not have enough grounds to initiate opposition to the grant of the pending patent application. Moreover, opposition proceedings to a pending patent application prove more complicated and time-consuming.

– Have you ever used this practice (Third party’s opinions) for trademark in Vietnam?

KENFOX:

Yes, we have. We note, however, that filing a Notice of Opposition is just a way for any third party to express their opinions against the trademark application and the opposition documents are treated as a reference source for the VIETNAM IP OFFICE’s examination of trademarks. Despite the foresaid, it remains worth filing a Notice of Opposition. This results from the fact that if an opposition is filed, it is evident that the examiner is obliged to settle the opposition. In such regard, it will minimize the risk of technical errors which possibly make the examiners not to find out the citation(s) so that the trademark application may mature into registration.