Date: 17-02-2023 by: Banca IP Law Firm
Current examination practice in the IP VIETNAM regarding the recent Amendment of IP Law
As the new amendment of IP Law has come into practice in 01 January 2023, the IP Vietnam has recently engaged in many adjustments with regards to the IT system in order to be compatible with the new law. In which, the IP Vietnam is changing the trademark search and examination system and also making certain amendments to the form of official notifications. Due to this instances, the work progress in the NOIP has been slowed down for the last few months. However, on 03 February 2023, the IP Vietnam has issued Official Notice No. 333/TB-SHTT stating certain cases where the changes in IT system is not affected. In particular, circumstances where the examiners can continue using the current form to process the application with some minor modifications to the format (not needed to wait for review and correction to comply with the new amendment and supplementation of IP Law) includes the following applications in which the filing date is before 01 January 2023:
- Decision on acceptance or refusal to accept applications;
- Any documents related to withdrawal, amendment, supplementation, division, request on recordal of changes, conversion of applications;
- Any documents related to cancellation, invalidation of registration;
- Any documents related to application/recordal of Licensing agreements;
- Any document realted to Industrial Design application in which the subject of the application is not the industrial design of the product which is a part of a complex product or a part of a complex product but can be seen in the process of exploiting the use of complex products;
- Any intermediate notice regarding the application, except for a few cases mentioned below;
- Decisions on refusal to grant, except for a few cases mentioned below;
- Decisions on refusal to grant of International trademark applications, except for a few cases mentioned below;
- Decision to grant protection for International trademark applications;
- Any document related to settlement of appeals;
- Decision to grant protection.
On the other hand, some circumstances in which it is required to wait for the modification of form in accordance with the Amendment of IP Law 2022 include:
- For Industrial design applications: (i) Any document related to industrial design of a product which is a part of a complex product that cannot be seen in the process of exploiting the use of the complex products filed from 01 August 2020 in which there is no granting/refusal decision issued yet; (ii) Notification of intended partial refusal of Industrial design;
- For Patent application: (i) Notification of substantive examination, Refusal decision for patent applications related to regulations on patent security control; (ii)Notification of intended partial refusal of Patent.
- For Trademark application: (i) Notification of intended partial refusal of national trademark application; (ii) Granting/Refusal decision of international trademark application in relation with Article 74.2.e, Article 74.2.h and Article 117.3.b of the Amended IP Law 2022.
- Any application and/or request filed on 01 January 2022 onwards.
In the notice, the IP Vietnam did not mention when the work process will be back to normal. In the light of the above, even though there will be some progress with the IP Vietnam in the coming months, we predict that it would still be many delays.
