The promulgation of Decree No. 65/2023/ND-CP and Circular No. 23/2023/TT-BKHCN marks an important step forward in strengthening IP protection in Vietnam, in accordance with higher standards and requirements from the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), European Union-Vietnam Free Trade Agreement (EVFTA) and Regional Comprehensive Economic Partnership (RCEP), Hague Convention, among other international agreements. 

To comply with new regulations under the amendment and supplementation of Intellectual Property Law in 2022 (IP Law), on 23 August 2023, the Government issued Decree No. 65/2023/ND-CP (Decree 65) to regulate detailing several articles and measures to implement the IP Law. Further, on 30 November 2023, the Ministry of Science and Technology promulgated Circular No. 23/2023/TT-BKHCN (Circular 23) detailing several articles of the IP Law and measures to implement Decree 65. 

Most remarkable aspects in Decree 65 and Circular 23, clarifying changes related to patents and industrial designs are below: 

1. Security control procedures for inventions (first filing requirements) 

Article 89(a) of the IP Law provides that any inventions (and utility solutions) having three following grounds are subject to the first filing requirements: 

1. in the technical fields that impact the national defense and security, 
2. created in Vietnam, and 
3. belong to Vietnamese individuals having residence in Vietnam or organizations established under Vietnamese laws. 

For such inventions/utility solutions, applicants must first file patent applications in Vietnam for security control before filing abroad. Article 14 of Decree 65 provides guidance for Article 89(a) of the IP Law by setting detailed procedures and scope of invention security control in Vietnam. 

2. New requirement for international application for industrial design under Hague Agreement (Hague application) designating Vietnam 

Among detailed regulations for Hague applications, notably, Article 24.8 of Decree 65 requires applicant to submit certified copy(ies) of priority application(s) within 3 months from the publication date of the Hague application. Falling the submission in due course, the priority right of the Hague application is not recognized. 

3. Opposition procedure against Hague application designating Vietnam 

Under the IP Law and Article 24.10 of Decree 65, before IP Vietnam’s final decision, any third party is entitled to (i) submit its opinion about the registration (or refusal) of a design, and (ii) oppose the registration of a concerned design. While an opinion is only a reference and not necessarily considered by IP Vietnam, an opposition must be handled in accordance with the laws. 

An opinion can be submitted any time before IP Vietnam final decision, an opposition (if any) must be initiated within 4 months from the industrial design publication. This timeframe is much shorter than the opposition period under the current practice (which may actually last for around 12-16 months from the publication date). 

While a third party can enjoy full rights to select either of the procedures (i) or (ii) for direct national industrial applications as specified under the IP Law, there is no opposition procedure for Hague application under the IP Law (Articles 27.10 of Decree 65). This restricts the third party’s rights in relation to their concerned international designs compared with the direct national filings. 

Since third party’s opinion is only a reference during IP Vietnam’s examination process, third parties need to proactively monitor the examination results of the Hague applications to check if their opinion has been accepted or not. 

4. Compensating a patent owner for the delay by competent authority in grant of the first marketing authorization for pharmaceuticals produced under that patent 

Different from Article 12.40 of the EVFTA, of which Vietnam is a member, which suggests compensation to the patent owner in the form of extending the patent's protection period by the amount of "unreasonable delay" in the of granting of the first marketing authorization, the IP Law stipulates that compensation is the form of waiving fee for use of patent during delay period. 

The marketing authorization procedure of pharmaceuticals is considered delayed if the competent authority (the Drug Administration of Vietnam – “DAV”) does not give the first response to the applicant without justifiable reasons after 2 years following the date of filing of the application for marketing authorization. The particulars are as follows:   

(*) fee for use of patent is paid together with annuity. The fee depends on specific annuity years and specific patents (number of independent claims in such patents) 

(**) Delayed period that origins from applicant’s fault or competent authorities’ uncontrolled causes does not belong to the compensated period  

(***) In case the patent owner already pays the fee for use of patent for delayed period, such corresponding fee will be compensated for subsequent annuity payment or be refunded. 

To enjoy such compensations, within 12 months following the grant of a market authorization, the patent owner must submit a document certified by the DAV, confirming such delay in the marketing authorization procedure, to IP Vietnam. 

5. Patents can be issued in electronic format 

IP Vietnam is planning to build an online database for Letter’s Patent in electronic format which has equal legal validity as in paper format so that any relevant parties for example, government authorities like enforcement authorities, third parties, patent owners, etc. can access this database for post grant/enforcement procedures. However, it is uncertain about the expected time when such database is available. 

6. Invalidation of a patent based on the ground that a granted patent extends beyond the scope of disclosure in the original specification 

Article 34.1 of Circular 23 provides specific guidance for Article 96.2(dd) of the IP Law on invalidation of patent in case patent granted extends beyond the scope of disclosure in the original specification. Specifically, a patent can be invalided if for a person having ordinary skill in the relevant art, patent granted extends beyond the scope of disclosure in the original specification.

7. Usage of examination results of corresponding foreign patent applications issued by foreign patent offices

Article 16.9 of Circular 23, specifies detailed requirements and procedure to use information on search results and substantive examination results of corresponding foreign patent applications issued by foreign patent offices to accelerate examination of Vietnamese application. Some important points to note include: 

a. The search results and examination results of corresponding foreign patent application to be used in Vietnamese application can include one of the following documents: 

1. 1. Search report, examination report and notification of examination results; 
   2. Published patent. 

b. Before IP Vietnam issues a notice of substantive examination results, an applicant can request IP Vietnam to use the results of substantive examination of a corresponding foreign patent application for patentability assessment of Vietnamese application, if the following conditions are met: 

1. 1. The materials referred to in item (a) above must be issued by one of foreign patent offices in the list approved by the Minister of the Ministry of Science and Technology (based on the proposal from IP Vietnam). The list is currently not available, however, in practice, USPTO, EPO, JPO, KIPO, and CNIPO are foreign patent offices favored by IP Vietnam; 
   2. In the claim set enclosed with the search report and examination report, at least one claim is concluded as meeting the patentability requirements (allowed claim); 
   3. The claims of the Vietnamese application subject to assessment are identical with the allowed claims of the corresponding foreign patent application; 
   4. All required documents are submitted, particularly, the following: 

• • • A request to use the substantive examination results of a corresponding foreign patent application (in prescribed form); 
    • A copy of one of the materials referred to in item (a) above with English translation; 

• • • A copy of the allowed claims in the corresponding foreign patent application with English translation; 
    • Cited document(s) mentioned in the materials referred to in item (a) above (if necessary); 
    • Amended claims/specification conformed to the allowed claims of the corresponding foreign patent application and explanation/support for the amendment (if amendment is made). 

c. In case the conditions stated in item (b) are met, IP Vietnam shall issue a notice of substantive examination results within 12 months (which is shorten than normal 18-month period) from the date of filing the request. 

d. In case one of the conditions stated in item (b) is not met, IP Vietnam shall refuse the request and the Vietnamese application will be examined according to the usual procedure. 

The recent amendments to the IP Law in 2022 and the issuance of Decree 65 and Circular 23 are strengthening IP protection in Vietnam. In general, the regulations have been established in detail, providing clear guidance to relevant entities, ensuring consistency in application, facilitating effective enforcement, promoting innovation, and attracting investment, consistent with international standards, minimizing legal conflicts, strengthening state management of intellectual property. IP rights owners benefit from increased transparency and improved IP protection all of which contribute to creating a more favorable environment for science-technology innovation and economic growth. 

8. Remove deadlines for submitting power of attorney (POA)

Under the old regulations, a Power of Attorney had to be submitted within one month from the filing date and 10 days from the filing date of an appeal. The short period caused difficulties to applicants/appellants. Circular 23 removes deadline for submitting powers of attorney. Accordingly, there is no hard deadline to submit POA, the applicant/appellant can submit POA before the application is accepted as to formality or the appeal is acknowledged for handling. 

The recent amendments to the IP Law in 2022 and the issuance of Decree 65 and Circular 23 are strengthening IP protection in Vietnam. In general, the regulations have been established in detail, providing clear guidance to relevant entities, ensuring consistency in application, facilitating effective enforcement, promoting innovation, and attracting investment, consistent with international standards, minimizing legal conflicts, strengthening state management of intellectual property. IP rights owners benefit from increased transparency and improved IP protection all of which contribute to creating a more favorable environment for science-technology innovation and economic growth. 

Contributions by Lan Ha Nguyen

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