Skip to main content
European Commission logo
IP Helpdesk

Case study 59 : Spanish entrepreneur – architecture project in Vietnam and IPR protection strategy

  1. Background 

A Spanish entrepreneur working as an architect in Vietnam contacted the SEA IP SME Helpdesk (SEA HD) via email to enquire about IP issues on a new project he was developing.

The contact was established through a personal contact from the Spanish community in Vietnam. In view of the complexity of the project (involving the development of an add-on software), the IP Business Advisor (IPBA) decided to schedule a virtual consultation to have sufficient time to cover all questions and IP issues on 24 January 2024.

Several months later, a new virtual consultation was booked by the entrepreneur on 24 September 2024 to further discuss the progress of his project and to share new IP concerns.

  1. IP issues raised

The first consultation covered a large range of IP topics, starting with the best strategy to protect new software via IP, the best way to commercialise IP and other intangible assets, and how to protect IP in contracts.

In the second consultation, the entrepreneur had already digested the information shared several months ago and he had new questions related to the ownership of rights over a software and its future updates.

Following each consultation, a follow-up email was sent to the entrepreneur, comprising a recap of the main points of discussion and key links.

Support and advice provided by the SEA HD 

  • The IPBA highlighted key IP rights (IPR) that are generally protected for software: starting first with patents (depending on the country, the rules may be stricter or softer), then copyright (for the source code), industrial designs (for the Graphical User Interface), and finally trademarks (to protect the brand and the name of the software).
  • The IPBA reminded the entrepreneur that, should it not be possible to apply for patent protection, there was an alternative option via trade secret protection, which is commonly used to protect valuable commercial information.
  • Replying to one question from the entrepreneur, the IPBA also outlined IP commercialisation techniques (i.e. licensing and transfer of rights), undermining the need to have written agreements and to register the same before the local IP office.
  • The IPBA finally shared tips for mentioning IP in contracts (primarily labour contracts, but also agreements with third parties). The suggestion was to contact an IP lawyer to help him draft template agreements, which would then be used in the future.
  • At the time of the second consultation, the discussion was focused on issues regarding ownership of IPR and the IPBA discussed several situations that could apply to the entrepreneur (collaborative works, commissioned works, IPR created by an employee).
  • The final piece of advice was to think over the whole strategy of software protection (applying encryption methods and technical protection measures, creating internal processes) plus to carefully check local legislation and available administrative registration options depending on the country.
  1. Result 
  • IP awareness and knowledge both increased for the Spanish entrepreneur, enabling him to make informed decisions, negotiate with future partners, and train staff.
  • The add-on software would continue to be developed, keeping in mind the way to best protect the different elements and to adopt the appropriate IP strategy (different types of IPRs, limits, risks, and budget).
  • Steps for ensuring the ownership over the rights on the software should now be clearer for the entrepreneur who may decide, when relevant, to take extra measures to secure his own assets (deed of assignment of rights or other types of agreements).
  • Following the IPBA’s suggestion, the entrepreneur tried to collect information regarding the existence of governmental associations providing services to register software (like the Agence de Protection des Programmes in France). The entrepreneur contacted several local IP lawyers in Vietnam to obtain quotations for filing IPR applications and collect further recommendations. 
  1. Lessons learnt 
  • IP knowledge and protective measures at an early stage of development are key (the entrepreneur contacted the SEA HD while developing the add-on). 
  • Software is a technical and complex matter, several IPR categories may protect several elements of the software. It is therefore important to understand the aim of protection of each IPR type, plus the registration requirements.
  • Contracts may be helpful in commercialising and further protecting IP.
  • Even if no IPR is filed or registered, some assets are worth protecting before signing any agreement with a third party (notably confidential information and know-how).
  • Adapt the IP protection strategy depending on the country of interest (the entrepreneur would also need to build a different strategy for Europe).
  • Contact a local IP agent or lawyer to help with the registration of IPR and drafting of template agreements. SMEs should use the SEA HD’s list of IP Experts which intends to guide them towards obtaining reliable and professional advice.