Date: 18-08-2022 by: Banca IP Law Firm
MAIN CONTENTS OF THE AMENDED AND SUPPLEMENTED INTELLECTUAL PROPERTY LAW 2022 - PART3 – PATENT AND ULTILITY SOLUTION –
In respect of the amended IP Law 2022 which was passed by the National Assembly of Vietnam on June 16, 2022 (hereafter referred to amended Law), we have introduced some amendments to some provisions of the amended Law concerning Trademarks (Part 1), Industrial Designs (Part 2), Banca hereby introduce in details the amendments to some provisions concerning patents and utility solutions, in particular regarding the following points:
Novelty of invention;
Security control for the inventions created in Vietnam before filing applications overseas;
Genetic resources or traditional knowledge of genetic resources;
Obligation to keep secret test data;
Inventions which are the results of scientific and technological tasks, using the State budget.
In detail, the followings articles have been amended and added:
Article 4. Interpretation of terminologies
To supplement Clause 12a after Clause 12, in the context of Interpretation of terminologies about inventions: to supplement the concept of “Confidential inventions: inventions that classified by competent state agencies as state secrets under laws and regulations on protection of state secrets”
Article 60. Novelty of inventions
To amend, supplement to Clause 1: aim to specify the concept of the public disclosure in the form of a written description; whereby an invention is considered to have no novelty if it is “disclosed in another patent application with an earlier filing or priority date but published on or after the filing or priority date of the patent application”.
Article 89. Mode of filing registration applications for the establishment of industrial property rights
To supplement Article 89a after Article 89, in the context of Mode of filing patent applications: to supplement the context of Security control for inventions before filing applications overseas, specifically "Inventions in technical fields that have an impact on national defense and security, are created in Vietnam and are subject to the registration of an individual who is a Vietnamese citizen and permanently resides in Vietnam or of an organization established under the law of Vietnam may only file a patent application abroad if it has already filed a patent application in Vietnam to carry out the security control procedures and the government shall provide detailed guidance on this Article.”
Điều 96. Invalidation of protection titles
Artilce 96 is amended and supplemented to include additional grounds for a patent to be invalidated in whole or in part.
Also, the amended Article 96 clearly states that if a patent is invalidated in whole or in part, the validity of the patent is null from the date of grant.
Article 100. General requirements for industrial property registration applications
To supplement Clause đ1 after Clause đ, in the context of General requirements for industrial property registration applications: to supplement the context of filing of documents when filing a patent application regarding genetic resources or traditional knowledge of genetic resources, Specifically, it is necessary to submit “Document explaining the origin of genetic resources or traditional knowledge about genetic resources in the patent application, for inventions directly created based on genetic resources or traditional knowledge on genetic resources.”.
Article 108. Receiving industrial property registration applications; Filing date
To supplement Clause 3, in the context of receiving industrial property registration applications, regarding confidential inventions: to supplement the context of confidential invention applications, in particular “confidential invention applications is carried out in accordance with the regulations of the Government.”
Article 117. Refusal to grant protection titles
Article 117.1 has been amended to specify the grounds for refusal to grant of a protection title for an invention application to be in conformity with the cases where the protection title are be entirely invalidated as specified in Article 96.
Amending Article 117.3 to specify the procedures to be carried out by the authority when a patent application falls into the cases specified in Article 117.1, 1a and 2.
Article 118. Grant of protection titles, entry into the register
The procedures to be carried out by the authority when granting a protection title for an application has been codified in law, in particular, for the following cases:
- applications fall into cases as specified in Article 117.1, 1a, 2, point 117.3.d; or
- the applicant(s) has filed an adequate reply in response to the provisional refusal as stiptulated at point 117.3.a.
Article 128. Obligation to keep secret test data
Amending and Supplementing Article 128 to implement the Comprehensive and Progressive Agreement for Trans-Pacific Partnership – CPTPP to ensure the information of the owner of pharmaceuticals or agrochemical patent. In particular, separate the provisions on the obligation to protect test results of competent licensing agency for agrochemical products and the protection period of test results for agrochemical products up to 10 years. In addition, the competent licensing agency shall be obliged to public information within a specified period of time for a post-licensed pharmaceutical product based on a previously approved drug or data demonstrating safety and effectiveness of a pharmaceutical product that has been approved for licenses for trading.
Article 131. Provisional rights to inventions, industrial designs or layout-designs
Adding article 131a to pay compensation to patent owners for delays of licenses for trading of pharmaceutical products.
Accordingly, the patent holder is not required to pay the use fees for patent for the period during which the initial marketing registration procedure of the pharmaceutical product manufactured under the patent in Vietnam is delayed or the charged use fee for the delayed period is deducted in the next maintenance period or refunded. The delay period is counted from the first day after the end of two years from the date the licensing agency sufficiently receives the required documents to the first written opinion.
To optimize the State's investment capital for scientific and technological research and development activities. The Intellectual Property Law has been amended and supplemented with articles 133, 135, 136 as follows:
Article 133. Rights to use inventions on behalf of the State
Adding Article 133a. The State's rights to inventions, industrial designs and layout designs which are the results of scientific and technological tasks, using the State budget.
In case the State owner representative assigns the right to register inventions, industrial designs and layout designs application as a result of scientific and technological tasks using the budget of the State for organizations, individuals in need; cases in which the State owner representative permits organizations and individuals to use inventions, industrial designs or layout designs as a result of scientific and technological tasks funded by the budget of the State without the consent of the owner and the payment of compensation to the owner of the organization or individual using it is clearly specified.
Article 135. Obligation to pay remunerations to authors of inventions, industrial designs or layout-designs
Amending article 135
The level of remuneration payable by an owner to the authors/co-authors of the invention, industrial design and layout design has been increased to promote research and creativity motivation. In addition, specifying the remuneration for authors/co-authors of inventions, industrial designs and layout designs using the State budget.
Article 136. Obligation to use inventions and marks
Adding Article 136a. Obligations of leading organizations for inventions, industrial designs and layout designs resulting from scientific and technological tasks funded by the State budget
Specifying the obligations of the lead organizations for inventions, industrial designs and layout designs as a result of scientific and technological tasks using the state budget, especially the obligations in distribution and use of profits earned from the use, licensing, transfer of rights, capital contribution to patents, industrial designs and layout designs in proportion to the State's capital contribution ratio.
Article 145.-Bases for compulsory licensing of inventions
Adding Article 145d. The grounds for compulsory licensing of an invention are related to the use of the invention to meet the needs of other countries' pharmaceutical products for prevention and treatment that are eligible for import under international treaties to which Vietnam is a member under article 145 of the Law.
Article 146. Conditions of limitation on the right to use inventions licensed under compulsory decisions
Amending points b, d and adding point đ of article 146
Accordingly, the amendment and supplementation of Article 146 of the Law shows that the right to use inventions transferred by compulsory decision is no longer restricted by the regulation that it is only provided for the domestic market. In addition, the licensee shall have to pay the holder of exclusive right to use the invention a compensation and it will be agreed by the two parties or implemented in accordance with the Government's regulations if the two parties fail to reach an agreement.