Time-limit for responding to Office Action concerning IP applications in Vietnam
1. Is there any time limit regulated in laws from filing to finish the following processes:
(1) Registration application:
(2) Response toward OA
(3) Invalidation
(4) Cancellation based on non-use
In detail:
(1) Registration application: Under Vietnam IP Law, the time period from application to registration for a straightforward application is 12 months.
(2) Response toward OA:
• For a Notice of Formality Deficiencies/Shortcomings: The IP Vietnam issues a Notice of Formality Deficiencies/Shortcomings, requiring the applicant to file a response within 02 months from the date of the Notice. If the response is satisfactory, a Notice of Formality Acceptance must be issued within 02 month after the filing date of the response (See Point 13.8b, Circular No. 01/2007/TT-BKHCN, as revised).
• For a Notice of a third party’s opposition: The IP Vietnam issues a Notice of a third party’s opposition, requiring the applicant to file a response within 01 months from the date of the Notice.
• For a Notice of Substantive Examination Result: 03 months from the date of the Notice. If the applicant files counter-opinions/arguments against the IP Vietnam’s refusal as stated in its Notice of Substantive Examination Result, the trademark application will be re-examined and the substantive examination must be concluded within 04 months (or 6 months in complicated cases) from the date of the response (See Point 16.1b, Circular No. 01/2007/TT-BKHCN, as revised)
(3) Invalidation & (4) Cancellation based on non-use
• Statutorily, 01 months after receipt of the invalidation request, the IP Vietnam issues a Notice of invalidation to the trademark owner and set a 2-month deadline set for the trademark owner’s response. The response is informed to the requester/petitioner and a time limit of 2 months is set for their counter-response.
• Several rounds of alternating submissions by the parties, until the submissions are deemed sufficient for their ruling.
• A decision on the Cancellation/Invalidation is issued within 3 months (with possible extension to 6 months) from the date of response by the Owner, or from the date of expiry of the time limit set for the said response.
2. How about the time usually spend in practice for the above process?
• Under Vietnam’s IP law, the time period from application to registration for a straightforward application is 12 months. In practice, this time period is often prolonged to 18-20 months.
• Formality examination for a trademark application in Vietnam may, in practice, be protracted to 3-5 months.
• Opposition is, in practice, settled at the conclusion of substantive examination against the opposed trademark which lasts to 18-20 months.
• Complicated cases involving trademark invalidation and/or cancellation requests may be prolonged to 2-5 years, even longer.
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