Amendments to Vietnam’s IP Laws to take effect on 1 Jan 2023

On 16 June 2022, amendments to several IP laws were officially passed by the National Assembly of Vietnam to comply with Vietnam’s obligations under various treaties and to align Vietnam laws more closely with international standards.

The following are some key aspects of the changes.

Patents

1. Grounds for Invalidation Additional grounds are now available for the invalidation of patents in Vietnam. These new grounds include:

• Failure to disclose or incorrect disclosure of the origin of traditional knowledge or genetic resources associated with the genetic resources disclosed in a patent application.
• Post-filing amendments or supplements have gone beyond the original scope of the patent filed.
• The description of the patent is unclear or does not sufficiently disclose the invention to enable a person skilled in the art to carry out the relevant invention.

• Assessment of Novelty

The scope of the prior art has now been extended to include disclosures in publications of patents with an earlier filing or priority date but that are published on or after the filing or priority date of the patent application under examination. The current novelty assessment is only based on publications of earlier patents published before the filing or priority date of the patent application under examination.

• Third Party Opposition

The amended law provides for opposition proceedings against a pending patent application (as well as trade mark and industrial design applications), which may be filed by any third party within the stipulated period from the publication date. Under the current law, there is only an observation procedure under which a third party may file a written opinion for the IP Office’s reference after an application is published, and the IP Office is not required to officially respond to the written opinion.

• Compulsory Licensing

The amended law includes a new ground for the grant of compulsory licenses, namely the use of the invention to meet the needs of pharmaceuticals for preventing or treating the disease in another country that fulfils the import conditions in accordance with an international treaty of which Vietnam is a member.

Trade Marks

1. Definition of Well-Known Marks In line with the generally accepted standards of what is considered to be a well-known mark, the amended law has updated the definition of a well-known mark to one that is "widely known by the relevant sectors of the public in the territory of Vietnam".However, the well-known mark must have achieved this status prior to the filing date of a later mark for the latter to be refused registration on this basis.
2. Sound Mark Applicants may now apply to register sound marks in Vietnam, provided that the marks are capable of being graphically represented.However, to safeguard copyright works, an application for a sound mark that includes a copyrighted work (in part or full) will be refused unless the copyright owner has consented to the application.
3. Bad Faith The amended law has codified the ground of "bad faith" for the opposition and invalidation of pending and registered trade marks.

Industrial Designs

1. Definition of an Industrial Design In line with Vietnam’s entry into the EU-Vietnam Free Trade Agreement, the definition of an industrial design has been widened to include parts of a products (to be assembled into a finished product) and features that are visible during the use of the product, namely “Industrial design is the external appearance of a product or part thereof to be assembled into a complex product, represented by shapes, lines, dimensions, colours or any combination thereof and visible in the process of exploiting the use of a product or a complex product”.
2. Deferment of the Publication of the Design The amendments will allow applicants to defer the publication of a design application for up to 7 months from the application date.

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