Introducing Decree No. 65/2023/ND-CP, a game-changing update to the Intellectual Properties (“IP”) regulation. This new decree brings forth a variety of modified and supplementary provisions that aim to enhance the protection and management of intellectual properties. Prepare for a shift in the IP landscape as we dive into the section Patent on this legal update.
Overview of the IP legal system
The Vietnam government has recently released Decree No. 65/2023/ND-CP (referred to as “Decree 65”) on August 23, 2023, which came into effect on the same day. Decree 65 serves the purpose of providing specific regulations that align with several provisions of the amended Law on Intellectual Properties (IP Law) that became effective on January 1, 2023. Importantly, Decree 65 brings about changes and additions to the IP system in Vietnam.
Vietnamese laws typically comprise three types of provisions:
+ Directly applicable provisions.
+ Provisions that require further guidance.
+ Provisions that are expected to be specified by the Government.
As a result, the Government issues decrees to clarify and elaborate on provisions falling within the second and third types. Unfortunately, the delayed issuance of the Decree compared to the amended IP law led to delays in processing certain IP matters by the Intellectual Property Office of Vietnam (IPVN), as corresponding provisions were absent. Consequently, the issuance of Decree 65 brings positive news for handling these IP matters, addressing the previous gaps.
Furthermore, in Vietnam, decrees also consist of the three aforementioned types of provisions, with types two and three being further specified through circulars issued by the relevant ministries. Circulars play a crucial role in providing additional clarification on provisions of the law. Thus, it is expected that new circulars related to intellectual property will be issued in the near future, further enhancing the understanding and implementation of IP regulations.
Security control and Foreign filing license
a. Security control
The previous legal documents lacked clear provisions on this matter, but it has now been resolved. With the amendment of the IP law, the Decree now specifies detailed provisions regarding this issue. This makes it easier for applicants to determine whether their invention requires a security control.
Article 89a.1 of the amended IP law specifies that if an invention created in Vietnam falls within technical fields impacting national security or defense, the applicant (the owner or the person with the right to file the patent application) must be either a Vietnamese citizen with permanent residency in Vietnam or a Vietnamese organization (such as a Vietnamese company). In such cases, the applicant can file applications abroad only after filing a Vietnamese patent application for the invention for security control.
Article 14 of the Decree provides comprehensive regulations on the security control process. Specifically, Article 14.1 (Annex VII) lists the technical fields mentioned in the amended IP law that have an impact on national security or defense. With this specified list, the Decree helps applicants determine whether their invention requires a security control process before filing abroad. For instance, inventions in fields such as human necessities, agriculture, furniture, and others that do not impact national security or defense based on the list are exempt from security control and do not require filing in Vietnam first.
Conversely, inventions in fields like chemistry, physics, electricity, and others that may have some impact on national security or defense may be subject to security control procedures. The authorities of the Ministry of National Defense (MOD) and the Ministry of Public Security (MPS) conduct the assessment to determine if an invention falls within the technical fields that affect national security or defense.
b. Foreign Filing License
Under the Decree, if an applicant intends to file a patent application abroad after filing with the IPVN, they must notify the IPVN in writing of their intention. Within one month of receiving the notification, the IPVN will conduct a preliminary assessment to determine whether the invention falls under the technical fields that affect national security or defense. If there is doubt, the IPVN will refer the matter to the responsible authorities of the MOD and MPS for assessment. Within three months, the responsible authorities will issue the assessment results. The authorities will inform the applicant of the temporary suspension of the application examination process within seven days from the date of referral.
If the assessment by the MOD and MPS confirms that the invention falls within the technical fields that affect national security or defense, the IPVN will notify the applicant within 20 days. Unless the applicant can demonstrate that their invention does not impact national security or defense for domestic applications, they must convert the application into a patent application for a confidential invention within one month.
For international applications under the Patent Cooperation Treaty (PCT), the IPVN will destroy the application unless the applicant can prove that the invention does not fall within the technical fields that affect national security or defense. If the IPVN does not receive an assessment result from the MOD and MPS within three months, or if the assessment result shows that the invention does not belong to the technical fields that affect national security or defense, the IPVN will continue the examination process and notify the applicant within one month. The applicant can then proceed with filing applications abroad. Overall, the security control process takes approximately five months.
c. Notes
♦ The amended IP law and the Decree lack clarity in specifying the situation where an invention partially made in Vietnam.
♦ Similarly, these legal documents do not provide a mechanism for an applicant to request an independent assessment in order to file abroad earlier. According to the Decree, the applicant would need to file a patent application and undergo assessment.
♦ According to Article 20 of the Decree, as a PCT receiving office, the IPVN will review the claims of a PCT application to determine if the subject matter claimed is a State secret or a confidential invention. If it is, the IPVN will not transfer the application to the International Bureau of WIPO and the International Searching Authority. An entity or individual in Vietnam can file a PCT application with the IPVN as the PCT receiving office or directly with the International Bureau of WIPO. However, the Decree does not address the issue of State secrets in cases where the application is filed with the International Bureau.
Remuneration to investors
According to the IP law, patent owners have a responsibility to provide remuneration to inventors based on their agreement. In cases where no such agreement exists, the law establishes provisions for remuneration, including the concept of “a fixed remuneration”. However, the law does not specify the specific timeframes for making these payments, and that is where the Decree comes in. Article 35.3 of the Decree requires the owner to pay the remuneration within 30 days if there is no agreement with the inventor on payment timelines, starting from the date the owner receives payment from the license. In contrast, the owner should settle the remuneration no later than 90 days from the fiscal year’s conclusion when calculating it based on Article 135.1(a) of the IP law, constituting 10% of their earnings before interest and taxes from using the invention or design.
HMLF is always available to offer assistance in understanding the procedures with authorities.
Harley Miller Law Firm “HMLF”
Head office: 14th floor, HM Town building, 412 Nguyen Thi Minh Khai, Ward 05, District 3, Ho Chi Minh City.
Phone number: +84 937215585
Website: hmlf.vn Email: miller@hmlf.vn
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