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Much awaited fourth amendment to the IP laws of Vietnam finally comes into force today i.e. on January 15, 2018. Circular No. 16/2016/TT-BKHCN (also called Circular No. 16), which was issued on June 30, 2016 by the Ministry of Science and Technology of the Government of Vietnam which amends as well as supplements a number of articles of Circular No. 01/2007/TT-BKHCN (also called Circular 01). The amended circular no. 16 is a critical guidance document for implementing of IP laws in Vietnam. These amendments as already discussed are effective from January 15, 2018.
The amended circular will have a major impact on the Intellectual Property practice followed in Vietnam as it modifies almost 49 out of 67 points present in the currently followed circular no. 1. Further, these modifications will resolve certain issues and concerns and align the IP laws of Vietnam with International IP system. The modifications mostly apply on the examination procedures conducted by National Office of Intellectual Property (NOIP) of Vietnam related to Patents, Trademarks, copyrights, Designs and other IPR. These provisions will also create favorable conditions for applicants for obtaining IP rights in Vietnam.
Below mentioned are some of the important amendments and supplements provided by the Circular no. 16 related to examination process of Patents, Trademarks and Designs.
1. General Regulations
1.1 Office Action response timings: Point 13.6.a and Point 15.7.a.i (All these points are present in Circular no. 1)
- The time frame to respond to an office action concerning Formality Examination will now be 2 months instead of 1 month.
- The timeframe to respond to an office action concerning substantive examination will now be 3 months instead of 2 months.
- The deadline for the payment of registration fee will be 3 months instead of 1 month.
These deadlines may once be extended for a similar period. These amendments to the above mentioned deadlines seems to be a more practical time frame for the applicants as compared to previous practice.
1.2 Appeals and their settlements: Point 22.1.c
The amended circular no. 16, has specifically provided that addition of new facts/details in application will not be accepted at the appeal stage. However, on the request made by the Applicant or appellant, NOIP may reexamine such new facts/details.. The amended circular allows the appeals settlement body to seek opinions of independent experts if the appealed case has a degree of complexity.
1.3 Points 15.7.b and 9.3-5: Decisions on Refusal
In circular no. 16, on getting a decision of refusal after substantive examination, the applicants can overcome the same by submitting new facts/details which were not considered in the examination and the NOIP may consider withdrawing the decision of refusal. The applicants do not have to lodge an appeal against the decision of refusal.
There is an alternative for overcoming decisions of refusal that are issued after considering responses to office actions regarding substantive examination. Instead of lodging an appeal, if the applicant submits new details (which have not yet been considered in the examination) which can affect the examination results, the NOIP will consider withdrawing the decision on refusal. In previous circular it was not the case.
1.4 There are few more general regulations in the amended circular no. 16 such as:
- Excuses for missing deadlines as provided under Points 9.3-5 which explains force majeure event and Objective obstacles that are few excuses that NOIP considers while considering the late submissions. This will reduce the scope of delays in such procedures.
- The NOIP has been provided the time period of one month from the receipt date of the request for notice of invalidation or termination, to send such notice to the right holder as has been provided under Point 21.3.a of the amended circular which
- The new provisions makes it impossible for the right holder to revive their applications that they have withdrawn, thus making the whole procedure, a very substantial one rather than the old casual procedure.[Point 17.5.b]
- The provision of the amended circular sets out the obligation on NOIP to inform the Opposing party of the examination results of the concerned application which was not practiced by the NOIP till now.
2. Key changes related to examination of Patents and Utility Models
2.1 Points 27.4 and 27.5: Deadlines for PCT applications to enter Vietnamese National Phase
In the old circular 1, PCT applications were allowed to enter national phases within 37 months by paying an extra fee. However, in the amended circular, the time limit for entering the national phase for PCT applications is strictly 31 months.
2.2 Point 25.1.a(ii): Deadline for requesting examination
The deadline to request for examination is 42 months from the priority/filing date for patent applications for invention and 36 months from the priority/filing date for Utility Models. these deadline can be extended by 6 months only when the Applicant provides sufficient evidence of some events such as “force majeure event” or “objective obstacle”.
2.3 Amendments relating to specification [Point 17.1.c], features of function or purpose [Point 25.5.d(i)] and annuity payment [Point 20.3.a], etc are also included in the said circular with regard to the Patents and Utility Model.
3. Key changes related to examination of Trademarks
3.1 Rights to object to disclaimers – Point 15.7.a (iii)
The amended circular no. 16 provides applicants the rights to object to disclaimers of NOIP of an/some element(s) of the mark if they do not agree with it. The applicants can file an objection within three months from the notification date. The old circular however was silent on this issue.
3.2 Response to office action regarding international application – Point 41.6.d
In cases where, the Madrid application is rejected by NOIP, the applicant, through the amended circular has a three-month period to respond to the provisional refusal by NOIP, and then 90 days to appeal the decision on refusal, whereas, the old practice only provided fro a period of 90 days to appeal such rejection by NOIP. Thereby, providing a higher chance for Madrid applicants to overcome a refusal than for national marks.
3.3 There are few other amendments related to Trademarks such as:
- Recognition of well-known marks [Point 42.4] : The amended circular lays that a mark can be recognized as a ‘Well-known mark’ through the settlement of enforcement or opposition/examination of a trademark that is identical/confusingly similar to the concerned mark.
- Organizations entitled to register certification marks and collective marks: Point 37.5a and 37.5b : The modified circular expressly clarifies the type of organizations that can register collective marks, which was not mentioned in the earlier circulars.
4. Key changes related to examination of Designs
4.1 Definition of product – Point 33.2.b
The amended circular introduces a new definition of a product: “A product is understood as an object, device, equipment, means, or part for assembling or integrating these products, manufactured by industrial or handicraft methods, having a clear structure and function, circulated independently.” This definition is given to exclude intangible products such as “Graphical User Interface” since it is considered a product but cannot be considered a design and have also resulted in a narrow list of products that can be patentable This can be a bit of disappointment to the Applicants.
4.2 Specification in design applications – Point 17.1.c
A specification is needed to describe the appearance and features of a design in words at the time of filing, but this specification is not included in the granted certificate for the design, which results in few concerns on the validity of the specifications. In the amendments, there is a provision that an amendment must not go beyond the specification and set of figures/photos makes the role of the specification more important and therefore design specifications should be prepared with caution.
4.3 Few other amendments relating to Designs were also introduced such as, amendment to granted patent [Point 20.1.b(iv)], Renewal of design patents [Points 20.4.d, 33.2.a, and 33.5.dd(iv)]. Further, although the amended circular has provided for first to file principle, but it has failed to clear its stance on such principle as it is silent on the priority dates in case where the filing dates of the conflicting applications are same.
The amendment has been made keeping in mind the scenario of present practice followed in Vietnam and what kind of changes can help the law on Intellectual Properties be efficient in the country. Thus, the lawmakers have very logically amended the concerned circular as well as complied with the International Standards.
The amended circular No. 16/2016/TT-BKHCN, w.e.f January 15, 2018 will have a significant impact on IP practice in Vietnam and will provide a synchronization between IP laws in Vietnam and the IP laws practiced internationally.
Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at firstname.lastname@example.org.