Renew the validity of protection titles to subject matter of industrial property

According to the Law on Intellectual Property in Vietnam, the subject matter of industrial property rights shall comprise inventions, industrial designs, designs of semi-conducting closed circuits, trade secrets, marks, trade names and geographical indications.

Industrial design in Vietnam

Rights to an invention, industrial design, layout design, mark shall be established on the basis of a decision of Intellectual Property Office of Vietnam to grant a protection title in Vietnam or the recognition of international registration pursuant to an international treaty of which Vietnam is a member. The remaining being: (i) rights to trade name shall be established on the basis of lawful use thereof; (ii) rights to a trade secret shall be established on the basis of lawful acquirement of the trade secret and maintaining confidentiality thereof.

How are term and scope of protection of the right to an arising object on the basis of granting of a protection title?

Firstly, protection titles shall be valid throughout the entire territory of Vietnam. This provision means the validity of title is only territorial. It means titiles granted by any country will only take effect within its territory and are not accepted in other countries or other titles granted by Intellectual Property Office of Vietnam will take effect throughout the entire territory of Vietnam.

Secondly, regarding each industrial property object, validity of protection titles are different. Such as validity of the invention patent is 20 years from the grant date but the timeline to calculate until the end of 20 protection years is filing date. Regarding utility solution patent, the validity shall be 10 years and the calculation until the end of 10 years is same as calculation of invention patent. It should be noted that validity of invention patent and utility solution patent may not be extended. However, industrial design patent, certificate of registered mark may be extended. In particular: (i) industrial design patent shall be shall be valid from the grant date until the end of five years after the filing date and may be extended consecutively with each time of 5 years. Therefore, industrial design patent may be extended up to 15 years; (ii) certificate of registered mark shall be valid from the grant date until the end of ten years after the filing date. However, this object has a special feature that it is able to extend repeatedly and consecutively the validity with each time of 10 years. Therefore, this object may be extended validity forever.

Regarding certificate of registered geographical indication, it shall have indefinite validity starting from the grant date because of its characteristic of sign used to identify a product as originating from a specific region, locality, territory or country. Reputation of products bearing a geographical indication shall be determined by graphical conditions, including natural factors (climatic, hydrological, geological, topographical and ecological factors and other natural conditions); Human factors (skills and expertise of producers, and traditional production processes of localities…).

In addition, one of objects having specific validity is certificate of registered design of semi-conducting closed circuits. Certificate shall be valid from the grant date until the earliest date among the following: (i) the end of ten years after the filing date; (ii) the end of ten years after the date the layout design was first commercially exploited anywhere in the world by a persons with the registration right or his or her licensee; (iii) the end of fifteen years after the date of creation of the layout design.

Having said that, when the owner of industrial property object is granted protection title, it should be noted at time of expiration of title to apply for the extension in order to guarantee interests as well as benefits that industrial property objects brings.  The owner could contact IP department of ANT Lawyers and patent, trademark and other IP attorney in Vietnam will be assisting the client to review the matters and provide relevant advice.

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Distinguish Assignment of Industrial Property Rights And the Licensing of Industrial Property Rights

According to Law on Intellectual Property in Vietnam, industrial property rights means rights of an organization or individual to inventions, industrial cal indicdesigns, designs of semi-conducting closed circuits, trademarks, trade names and geographiations, trade secrets which such organization or individual created or owns, and the right to prevent unfair competition.

Industrial design in Vietnam

Accordingly, these rights may be transferred to other organizations and individuals that are not creators or owners of those objects. Transfer of industrial property rights includes two types of “assignment of industrial property rights” and “licensing of industrial property rights”.

The assignment of industrial property rights means the transfer of ownership right by the owner of such industrial property right to another organization or individual. It means assignor shall have to transfer all the rights of the industrial property object to assignee and after the two parties complete the transfer procedure, assignee shall be fully entitled to make decisions upon that industrial property object. However, when transferring, the parties should pay attention to the following matters: (i) Industrial property right owners may only assign their rights within the scope of protection; (ii) Rights to geographical indications shall not be assignable because this object is physical and cannot be moved; (iii) Rights to trade names may only be assigned together with the transfer of the entire business establishment and business activities under such trade name for instance under merger and acquisitions; (iv) The assignment of the rights to marks must not cause confusion as to properties or origins of goods or services bearing such marks (v) Rights to marks may only be assigned to organizations or individuals who satisfy conditions for persons having the right to register such marks.

Licensing of industrial property objects means permission by the owner of such industrial property object for another organization or individual to use the industrial property object within the scope of the owner’s right. Unlike assignment, licensing of rights is when the owner of industrial property object temporarily grant rights to other organizations and individuals to use their industrial property objects for a definite period of time. Licensing of industrial property rights also has certain restrictions such as (i) The right to use geographical indications or trade names shall not be licensable; (ii) The right to use collective marks must not be licensed to organizations or individuals who are not members of the owners of such collective marks; (iii) The licensee must not enter into a sub-license contract with a third party unless allowed by the owner; (iv) Mark licensees shall be obliged to indicate on goods and goods packages that such goods have been manufactured under mark license contracts; (v) Invention licensees under exclusive contracts shall be obliged to use such inventions in the same manner as the invention owners.

Accordingly, the parties need to understand the purpose, scope and object of transfer of industrial property rights, and thereafter sign corresponding agreements being being assignment of industrial property rights or licensing of industrial propertyrights.  Copyright, trademark, patent lawyers could be of help to provide consultancy and legal advice to ensure the rights and obligations are clearly spelled out to avoid potential dispute in Vietnam during the transfer of industrial property rights.

If you are looking for an IP attorney, but are concerned about the typical costs associated with the traditional legal search, you should visit ANT Lawyers where we work to trim those costs. We will match you with an experienced IP attorney in Vietnam for a free, no obligation consultation.

Hope this helps!

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Procedures for processing applications for registration of industrial designs

Many enterprises invest a significant amount of time and resources to improve their product design in order to match products to specific customer groups. Industrial design means the outward appearance of a product embodied in three dimensional configuration, lines, colours or a combination of such elements [Clause 13 Article 4 Law on intellectual property 2005 (IP law)] and industrial design is under industrial property rights (Clause 2 Article 3 IP law).

 Industrial design in Vietnam

There are several important reasons for enterprises to protect their designs, such as creating an appeal or attraction to customers, increasing the commercial value of the company, a key factor in the company's marketing strategy, creating an additional revenue for company either by collecting a fee from licensing the design to others or by selling the rights of the registered design.

Regarding conditions for protection of industrial designs, general conditions comprise: Novelty; Creativity; Being able of industrial application (Article 63 IP law). Three conditions are stipulated clearly at Article 65,66,67 IP law. Objects ineligible for protection as industrial designs are Outward appearance of a product which is necessarily due to the technical features of the product; Outward appearance of civil or industrial construction works; Shape of a product which is invisible during the use of the product (Article 64 IP law).

Regarding procedures for processing applications for registration of industrial designs (applications) and for granting protection titles,

Firstly, documents needed to prepare must meet the general requirements, uniformity and particular requirements on applications (Article 100,101,103 IP law). In accordance with Article 107 IP law, authorization for carrying out procedures related to the establishment, maintenance, extension, amendment, termination and invalidation of protection titles must be made in writing in the form of a power of attorney (no valid term shall be considered valid indefinitely, and validity shall be terminated only when the principal declares termination of validity). Power of attorney’ s contents  are stipulated at Clause 2 Article 107 IP law.

Secondly, the State administrative body for industrial property rights (body) receives applications for registration of industrial property if the application consists of at least the following documents and information: A declaration for registration of industrial design; Description, a set of photos and drawings and a description in the case of an application for registration of an industrial design;

Thirdly, the body examines formal applications. Valid or invalid applications shall be notified (Article 109 IP law).

Fourthly, applications which have been accepted as being valid by the body shall be published in the Official Gazette of Industrial Property in accordance with the provisions of Article 110 IP law. Applications shall be published within two months as from the date such application is accepted as being valid.

Fifthly, third party’s opinions on the grant of protection titles (Article 112 IP law).

Sixthly, examining substantive applications (Article 114 IP law).

Seventhly, an applicant shall have the following rights of amendment, supplementation, division and conversion application before the body for industrial property rights notifies a refusal or decides to grant a protection title (Article 115, 116 IP law).

Finally, the body shall decide to refuse or to grant a protection title and enter it in the National Register of Industrial Property (Article 118 IP law).

About time-limit for processing applications, an application shall have its form examined within one month from the filing date, substantively examined within six (6) months from the date of publication of the application. The time-limit for re-examination of an application shall be equal to two-thirds of the time-limit for the initial examination, and may, in complicated cases, be extended but must not exceed the time-limit for the initial examination. The duration for amendment or supplementation of applications shall not be included in the time- limits specified in clauses 1, 2 and 3 of Article 119 IP law.

If you are looking for an IP attorney, but are concerned about the typical costs associated with the traditional legal search, you should visit ANT Lawyers where we work to trim those costs. We will match you with an experienced IP attorney in Vietnam for a free, no obligation consultation. Hope this helps.

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What is the difference between product design and industrial design?

Product design is about creating product - taking ideas from scratch to finished solutions, most often 1 or 2 pieces of finished products. As a product designer it is not mandatory to have knowledge on manufacturing processes or producing CAD drawings.

Industrial design in Vietnam 

 Industrial design is about creating ideas for mass production, i.e, creating concepts that can be manufactured and be sold. Therefore it requires a bit more work in transferring and customising designs (product designs) to make it ready for manufacturing. You require knowledge of manufacturing processes and operations in order to do your work.

Some key highlights

Product design can be considered to be a subset of Industrial design.

Industrial design can include - product design, furniture design, footwear, and in certain cases fashion and interior design.

You can survive in product design without technical knowledge, but you definitely need to have technical/engineering knowledge to be an industrial designer. Unless you are doing early concept works.

In industrial design you also learn about business aspects, in order to customise the products to match the business and market needs.

In general, product design is more about creating solutions, industrial design is creating solutions and taking them to manufacturing. An industrial designer can be a product designer, but a product designer cannot be industrial designers.

ANT Lawyers -  A Law firm in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

We assist our clients in all steps of the prosecution phase of IP management.

Source: Quora 

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