Withdrawing an already claimed invalidation action in Vietnam
1. Can we withdraw an invalidation action already filed in Vietnam? How will the claimant be disadvantaged when the invalidation action is voluntarily dropped? Should we, for example, re-issue an invalidation action against the same protection title on the same facts and grounds for a potential invalidation action?
Withdrawing an invalidation request which has been filed with the Intellectual Property Office of Vietnam (“IP Vietnam”) is not expressly provided for in the Law on Intellectual Property of Vietnam 2005, revised in 2009 and 2019 (“Vietnam IP Law”) and its by-laws. As a matter of practice, the IP Vietnam has accepted withdrawal of invalidation requests, provided that (i) the withdrawal authority is explicitly formed in the Power of Attorney and (ii) the requester of invalidation action has rendered reasons for such withdrawal. Therefore, a request for invalidation action already filed with the IP Vietnam can be withdrawn.
The Vietnam IP Law and its by-laws are also silent on re-filing of invalidation actions after the withdrawal thereof has been made. It is assumed, however, that the same evidence/facts and grounds as earlier submitted may be predicated upon to initiate an invalidation action against the same patent because such re-filing is not statutorily barred. As long as a filed invalidation request is grounded, it will be examined and resolved in compliance with the laws, and may not be negatively affected by the fact that the same invalidation action was withdrawn beforehand.
2. Additional costs will incur if no response is made to the current invalidation action? Even if no response is made to the ongoing invalidation proceedings, can the IP Vietnam make a decision of invalidation based on the grounds and evidence of invalidity submitted so far?
Official fees are not required for filing a response to the pending invalidation case.
It is not provided under the Vietnam IP Law and its by-laws that the invalidation will be ruled in favour of the claimant if the IPR holder fails to lodge a response to the IP Vietnam. Failure to make a response to the pending invalidation trial does not result in an invalidation against a protected subject matter. In practice, the IP Vietnam shall consider the arguments and evidence submitted by both parties, and then issue either a decision of invalidation of whole or a part of validity of the subject patent, or notification of refusal of invalidation of the validity of the protection title. If any of the relevant parties does not agree with the IP Vietnam’s decision/notification, he/she can appeal against such a decision/notification according to the appeal proceedings.
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