Considerations when seeking protection for industrial designs in Vietnam

Published on 16 Jun 2020 | 9 minute read

Dung Vu

Senior Patent Attorney

+84 243 577 0479

Contains collection of tips to help applicants seeking protections for their industrial design intellectual property.

Legislation and practice on industrial design protection in Vietnam can differ widely from other jurisdictions, especially in terms of the formal requirements.

Patentable industrial designs

Industrial design is the appearance of a product expressed in shapes, lines, dimensions, and colours and/or any combination of those. Some appearances will not be patentable as industrial designs in Vietnam:

The appearance of a product dictated by the technical features of the product;
The appearance of a civil or an industrial construction work, except for the appearance of the separate sections or modules that may be used independently or assembled to create a construction such as shops, kiosk, mobile homes or similar products[1];
The appearance of a product, which is invisible during the use of the product (exploitation of a product's utility by ordinary methods and by any consumer, excluding its maintenance or repair);
Appearances which are contrary to social ethics and public order.

A "product" can be an object, device, apparatus, means, or part for assembling or integrating these products, which is manufactured by industrial or handicraft methods, having a clear structure and function, and circulated independently.

Graphic user interfaces, typefaces, and icons are not products. Similarly, a "pattern" is not patentable because a pattern cannot be circulated independently. Products containing a pattern, however, can be protected as an industrial design"[2].

A part of an integrated product that is inseparable from the integrated product, or can be separated from the integrated product only by destroying the integrated product, is not patentable. This is because that "part" is unable to be circulated independently. However, in practice, the Intellectual Property Office of Vietnam (IP Vietnam) accepts design applications (priority rights) for designs of the integrated products claiming priority rights from priority applications for partial designs in foreign countries.

There is no specific definition for 2D industrial design. However, as long as it is qualified as a product, 2D design is patentable under industrial design. Something in the form of a label, ribbons, lace, fabrics, or "sheets"[3] which are very thin may be considered as equivalent to 2D design. Vietnam is still applying the 8th edition of Locarno and class 32 (ornamentation) is currently not applicable.

Essential appearance-forming features

A feature which is easy to notice, memorize and can be used to differentiate the design from a prior art design as a whole can be an essential appearance-forming feature.

A frequently asked question is whether colour is considered as an essential appearance-forming feature? For the 3D design, the colour of a design is not considered such. Exceptions, however, include packaging or for 2D design where surface decoration is an important attraction, colour in a certain decoration combination can be considered as an essential appearance-form feature if the combination of colour provides aesthetic impression[4].

The material used for the manufacture of the product embodying the design is not considered as an essential appearance-forming feature of a design.

Dimension, such as the distance of decorative lines on 2D design like fabrics, paper, is considered as an essential appearance-forming feature of a design. However, the dimension of a product containing the design, when changed in the form of zoom out or zoom in, is not considered an essential appearance-forming feature.

Unity of application - Multiple industrial design application

In Vietnam, a multiple industrial design application is acceptable in two cases: one application can contain (i) some embodiments (variants) of design or (ii) designs of products in a set of products to be used together or to perform a general purpose.

However, embodiments filed in a single application must share a single general inventive concept and must not significantly differ. There are no specific regulations guiding the unity of the application.[5] So, in practice, the unity of the application may be treated on case by case basis and will depend on the examiner’s subjective view. Examiners will sometimes request separate designs in divisional applications. At the same time, there are cases where examiners require the designs from separated applications are incorporated into a single application.

Specific filing requirements

Photos/ drawings

Another frequently asked question is how many photos/ drawings ('views') are required. For 3D design, generally, a set of photos/drawings is normally required a perspective view and six basic views (front, rear, right, left, bottom and top views) that must be in the same scale, same direction and in the required order as listed. In practice, fewer views may be acceptable. For example, if some views are identical, similar or symmetrical, only one view among the views is required. However, the applicant must indicate the identity, similarity or symmetry of the views in the design specification. The bottom view of a very larger product or the thickness view of the product that is very thin might not be required. For packaging, only one view may be acceptable. The same is true for 2D design.

There is no limitation on the number of views. Often more than seven views will be required the demonstrate the design. For example, for a design of a product which is a part of an integrated product, a view which shows how the design is installed and used in the integrated product may be required. If a design comprises of many parts, view(s) showing the parts may be required. The additional views (reference views) (to show the design in the integrated product or specific parts of the design) are for illustrating purpose only; such reference views are not under the scope of protection of the claimed design. Enlarged views, sectional views, expansive views, and so on may also be required for specific cases.

IP Vietnam always requires photos/drawings that are clear and sharp. Broken lines are not accepted when they are intended for partial designs or the parts that cannot be seen from specific views. The background colour of photos must contrast with the colour of design.

Design specification

In addition to photos/drawings, a design specification is required. The required contents of this are: title of the design, field in which the product is used, closest prior art design(s) (if any)(this can be listed as "unknown"), listing of photos/drawings, appearance-forming features of the design to disclose the nature of the design new features of the design, and claims.

Trademarks used in design

IP Vietnam may request the applicant to provide evidence of legitimate use of any trademark in the design. The applicant will be asked to remove the trademark, if there is evidence of non-legitimate use.

Publication of design application

A design application will be published within two months from the date the application is accepted after formality examination.

Deferment of publication is not possible in Vietnam like in some jurisdictions. If an applicant wishes to delay the publication, appropriate measures/technics may be considered on a case by case basis.

Provisional right

Where an applicant for registration of an industrial design knows that such industrial design is being used by another person without prior use right for commercial purposes, the applicant may notify that user in writing of the filing of his/her application. This should clearly specify the filing date and the date of application publication in the Official Gazette of Industrial Property so that the later shall terminate or continue such use.

Where the person notified continues using such industrial designs, as soon as an industrial design patent is granted, the owner of such industrial design shall have the right to request the user of such industrial design to pay a compensation equivalent to the price for licensing of such industrial design within the relevant scope and duration of use.

Post grant issues

Post grant amendment

Amendment of a patent is only possible by narrowing the scope of protection, specifically, by deleting one or more embodiments or designs in the set of products of the design patent.

Renewal

The initial term of protection starts from the granting date and ends five years following the filing date. An industrial design patent is renewable for two consecutive five-year terms, provided that renewal request is submitted within six months before the expiration date.

A six-month grace period is possible; however, there is a surcharge of 10% of the total official fee for each month late.

The patent owner may renew all embodiments or one or more embodiments of in the patent, provided that at least the first embodiment must be renewed. The original patent is required when requesting renewal if the patent owner wants to mark the renewal event on the patent.

Vietnam ratified the European Union Vietnam Free Trade Agreement ('the EVFTA') on 30 June 2019. Under EVFTA, on 30 September 2019, Vietnam deposited its instrument of accession to the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs with WIPO's Director General.. On 27 November 2019, WIPO published Vietnam's Declarations of Vietnam's Accession to the Hague System in Information Notice No. 6/2019. The Geneva Act entered into force in Vietnam on 30 December 2019. According to the Declarations, formality requirements regarding description, claims, and views of drawings, unity requirement and deferred publication which are optional under the Geneva Act are consistent with the current Vietnamese legislation.

It is hoped that Vietnam IP Law and its guiding regulations will be amended to adapt to international agreements such as the EVFTA and to clarify the controversial topic, for example the issue of patentability of partial design and to eliminate the Vietnamese strictly requirements on formality issues to facilitate applicants' benefit in protecting their industrial design rights in Vietnam.

Written by: Dung Vu (Patent Attorney), Vinh Dang (Patent Specialist)

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[1] VN 3-2011-01580 (filing date: 2011.11.10) (http://wipopublish.noip.gov.vn/wopublish-search/public/designs?3&query=OFCO:VN)