Vietnam: The amended IP law

Three years after its enforcement and two years after Vietnam’s accession to the World Trade Organization (WTO), this IP law was amended in 2009. Twenty-two of the 222 articles of the law were corrected, or supplemented with clearer definitions, or rewritten to make their contents more comprehensive and compatible with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

During the period 2009—2010 some other important regulations relating to IP right protection in Vietnam were also amended or newly promulgated to ensure the effective enforcement of IP legislation in the country.

Copyright

Some changes have been made to bring the Vietnamese IP regime in line with the Berne Convention and the TRIPS Agreement.

The term of copyright protection changes from 50 years to 75 years from the first publication and is applicable to cinematographic works, photographic works and anonymous works. For those cinematographic works, photographic works and applied art works not published within 25 years of the fixation date, the protection term is extended to 100 years from the fixation date of the work (this amends Article 27.2 of the IP law).

The term of protection of dramatic works shall now coincide with the life of the author: 50 years after his or her death, instead of 50 years from the date of first publication, as presently stipulated in the IP law.

Broadcasting organisations can use published works for commercial purposes without obtaining permission from the rights owners, provided that they pay a royalty in accordance with government regulations (Article 26.1).

"The time limit for substantive examination of patent applications is extended from 12 to 18 months … a step backwards in implementing the government’s requirement of speeding up administrative reforms."

For commercial use of published works, audio and video recordings, broadcasting organisations should negotiate with rights owners about royalty rate and method of payment (Article 33). If no agreement can be reached, royalty obligations should be carried out in accordance with the government’s regulations. Alternatively, the rights owner is entitled to bring the case to court.

Patents and trademarks

The amended law clarifies, in Article 90, that the first-to-file principle shall apply in cases where the same person files several applications for patents for inventions which are identical with, or similar to, each other, or for industrial designs which are identical or not significantly different from each other, patents shall only be granted to the invention or industrial design under its legitimate application which has the earliest priority date or the earliest filing date among those which satisfy conditions for granting a patent (Article 90.1).

If each application satisfies the condition for granting a patent and all have the same earliest priority date or earliest filing date, a patent will be granted only to a single invention, as agreed by all applicants. If no agreement is reached, all applications shall be refused (Article 90.3).

The notion of a secret invention appears in the law for the first time. In the amended Article 7(3), governmental regulations restrict the acquisition and exercise of IP right conferred to inventions defined as secret.

The new law also states that governmental agencies have the right to register geographical indications and approve the registration of collective marks and certification marks indicating the geographical origin of products (Article 87). With this request, the lawmakers intend to ensure that the state is entitled to manage the named subjects of geographical indications, even when geographical indications are not registered.

The time limit for substantive examination of patent applications is extended from 12 months to 18 months. Trademark, industrial design and geographical indication applications shall be examined as to substance within nine, seven and six months, respectively, from the publication date. This is instead of six months as now applied (thisamends Article 119.2 of the IP law). This can be considered as a step backwards in implementing the government’s requirement of speeding up administrative reforms.

The filing date or priority date, when applicable, of a patent or design application, now serves as the date from which a prior use right to an invention or industrial design is established, instead of the publication date as now applied (this amends Article 134.1 of the IP law). This amendment is intended to bring the patent law of Vietnam into conformity with Article 4.B of the Paris Convention, by which no action taken by a third party during the period of priority might give rise to any right of that third party.

Where administrative remedies are required to deal with the infringement of IP rights, the amended law removes the limitation that such remedies may be requested by the IP rights owner only after it has served a written warning notice to the alleged infringer and the infringer has then continued the alleged infringing act (this amends Article 211.1 of the IP law).

The time limit for substantive examination of patent applications is extended from 12 to 18 months … a step backwards in implementing the government’s requirement of speeding up administrative reforms.

Under the administrative remedies, the monetary fine imposed on an infringer committing IP rights infringement was at least equal to, or up to five times, the value of the discovered infringing goods. At one point, the provision was considered a step in the right direction in preventing IP infringement in Vietnam. The amended IP law removes this provision.

Monetary fines will now be in accordance with the applicable laws on settlement of administrative infringements (Article 214.4 of the IP law), which allows a maximum fine of VND500 million (approx.US$25,000). Though the amendment overcomes inconsistencies between the IP law and the domestic laws on settlement of administrative infringements, it establishes a less effective IP regime from the perspective of rights owners.

To protect the interests of Vietnamese enterprises, the amended IP law prohibits foreign law firms and agencies practising in Vietnam from providing IP representation services (this amends Article 154.1 of the IP law).

Plant variety rights

Article 3.3 clarifies that besides propagating materials, the notion of plant varieties also includes harvested materials, while Article 4 further adds the definition of such materials to the law. As a matter of fact, the amended IP law now explicitly extends the rights of the owner of the protection title to a plant variety to the harvested materials derived from the unlawful use the protected plant variety (Article 186.2).

This expansion of rights to the protection title holder brings the Vietnamese IP law into harmony with Article 14.2 of the Convention of the Union for the Protection of New Varieties of Plants (UPOV), to which Vietnam is a party, and is limited only where the holder was given a reasonable opportunity to exercise his or her rights.

"Article 3.3 clarifies that besides propagating materials, the notion of plant varieties also includes harvested materials, while Article 4 further adds the definition of such materials to the law."

Moreover, under Article 4 of the 1991 UPOV Convention, the amended IP law in Article 157 further vests the right to register a new plant variety in entities/individuals of a foreign country not entering into an agreement on plant variety protection with Vietnam. Such entities, however, must have a permanent place of residence, or a business or production establishment of plant varieties in a foreign country that has entered into an agreement on plant variety protection with Vietnam.

Amendments to the Criminal Code

Vietnam’s current Criminal Code was introduced in 1999 and amended in 2009, coming into effect on January 1, 2010. Under the amended code, with regard to copyright violation (Article 170) and offences of IP rights infringement (Article 171), anyone who copies or distributes copyright-protected works to the public on a commercial scale without the permission of the copyright owner, or infringes the trademark and geographical indication rights on a commercial scale, will be subject to a fine of between VND50 and 500 million (up to approx.US$25,000) or non-custodial reform for up to two years.

Fines will be higher, up to VND1000 million (approx.US$50,000) and/or from six months to three years imprisonment for organised and or repeated offences. Convicted offenders may also be banned from holding certain posts, practising certain occupations or doing certain jobs for one to five years.