On 16th June 2022, the Intellectual Property Amendment Bill (“Bill”) was passed before the National Assembly of Viet Nam. The Bill will officially take effect on 1st January 2023, except for the provisions on the protection of sound Trademarks (which are back-dated to take effect on 14th January 2022 according to Viet Nam's undertaking when joining the Comprehensive and Progressive Agreement for Trans-Pacific Partnership - CPTPP), and the provisions on the protection of test data for agricultural chemical products (which will take effect on 14th January 2024).
The new amendments have helped Viet Nam's intellectual property (IP) law system meet the requirements of various multilateral agreements ratified by Viet Nam. Also, these amendments have solved inadequacies in IP prosecution and enforcement practices in Viet Nam.
The Bill focuses on seven major policy groups of IP Law, including:
1. Guarantee clear regulations for the assignment and transfer of Copyright and related rights
The Bill allows the transfer of several moral rights by agreement (for example, the rights to name the work or to modify the work). These amendments should help to solve current prominent issues for authors, Copyright holders, performers and related rights holders (such as when there is a need to change the name of a work, when someone wants to modify or upgrade a computer program, etc.).
2. Encourage the creation, exploitation, and dissemination of Patents, Industrial Designs, Layout Designs and Plant Varieties developed thanks to the State budget
The Bill grants the presiding organizations the right to register Patents, Industrial Designs, Layout Designs, and Plant Varieties which result from scientific and technology tasks funded by the State budget (such right is granted automatically and without reimbursement). Further, a mechanism for reasonable distribution of benefits between the State, the presiding organizations, and the authors is mentioned in the Bill. Therefore, the presiding organizations will have to comply with such requirements. This policy group aims at encouraging scientific and technological research and attracting more investment capital, thereby gaining various economic benefits for Viet Nam.
3. Facilitate the implementation of procedures for registering Copyright and related rights, and Industrial Property Rights
Some specific amendments pursuant to this policy group include: creating a legal basis for organizations and individuals to register Copyright and related rights via an e-filing system; classifying third-party opinions to speed up the examination process; simplifying the descriptions in Industrial Design applications; limiting security controls on Patents; allowing the postponement of the publication of Industrial Design applications; and supplementing several specific provisions on appeal settlement procedures in the field of industrial property. This encourages the registration of Intellectual Property Rights (IPRs) as well as creating effective grounds for the enforcement of IP.
4. Ensure a balanced level of IP protection
The aim is to ensure the balance between the IP holders’ rights, and the public’s right to use and access knowledge and technology. As a result, several provisions related to the protection and enforcement of IP have been amended (non-exhaustive list):
(i) Adding provisions on exceptions and limitations of Copyright and related rights;
(ii) Supplementing grounds for invalidation and termination of granted Patents or registered Trademarks;
(iii) Clarifying several provisions on unfair competition.
5. Enhance the effectiveness of IP assistance and support activities
The Bill divides IP agents into specific categories, (e.g., Trademark agents, Patent agents), and eases the conditions for granting agent certificates in specific fields. This modification creates competition among service providers and promotes service quality improvement.
6. Enhance the effectiveness of IP enforcement activities
Several provisions on enforcement have been revised to adapt and improve enforcement avenues which seemed to be one of the weaknesses of the Vietnamese IP landscape. One of the notable points is that the Customs Authority can proactively apply border control measures during the inspection of goods in cases where there are reasonable grounds to suspect imported or exported goods are counterfeits or infringe IP.
7. Ensure the compliance with international commitments covering IP, which Viet Nam has joined
To promote cooperation and trade, Viet Nam joined the EU-Viet Nam Free Trade Agreement (EVFTA) and the CPTPP, in which there are several provisions on IP. The Bill contains amendments to ensure the full compliance with these international commitments on IP protection, along with their safe implementation (notably the new option to protect sound Trademarks, new rules for protection of Geographical Indications, exceptions and limitations to Copyright and related rights, protection of partial Industrial Designs, etc.). This should create a stronger legal framework for protecting and enforcing IP in Viet Nam and a favorable business environment for foreign investors.
In conclusion, the Bill has taken a comprehensive approach to IP and strengthened the importance of IP. In addition, the Bill assists in solving the ongoing issues in IP prosecution and enforcement that many IP rights’ owners and IP agents have raised.
Daniel Greif, Director of S&O IP Southeast Asia
Yen Pham, Trademark Head and Senior Attorney, S&O IP Viet Nam
Nga Pham, IP Consultant, S&O IP Viet Nam
Dao Le, Legal Assistant, S&O IP Viet Nam
- Publication date
- 25 August 2022