Frequently Asked Questions

ELITE: According to Vietnam Intellectual Property Law amended in 2022 (Article 96), invention, utility solution patent may be canceled by the NoIP in the following:

1. A patent protection tile shall be entirely canceled in the following cases:
   1. The registration application is filed contrary to the provisions on security control for inventions;
   2. The invention registration application which is directly created based on genetic resources or traditional knowledge about genetic resources but does not disclose or incorrectly disclose the origin of genetic resources or traditional knowledge about the genetic resources contained in that application.
2. A patent protection tile shall be partly or entirely cancellated if entirely or partly of that protection tile fails to satisfy the provision on register rights, protection conditions, amended, supplemented tile, invention disclosed, first–to–filed principle, in the following cases:
   1. The registration applicant has neither had nor been assigned the right to register the invention by the person having the right to register.
   2. An invention failed to satisfy the protection conditions;
   3. Amendment or supplementation of an application for registration of industrial property expand the scope of the subject disclosed or stated in the registration application, change the nature of the subject for registration stated in the application;
   4. The invention has not been published sufficiently and clearly for a person with average knowledge of the relevant technical field to do;
   5. The patented invention extends beyond the scope of disclosure in the original description of the registration application;
   6. The invention does not satisfy the first filing principle of the IP Law.

According to Vietnamese regulations, if a patent/utility solution is partly cancellated or entirely cancellated in those cases mentioned above, entirely or partly of the Patent/Utility solution patent will be invalidated from the grant date of the protection tile.

ELITE: Required documents of an appeal against a Decision on refusal of granting a Patent are as follows:

1. An Appeal Application (under the Form);
2. An official letter explaining legal reasons/grounds for the Appeal enclosed with the Appeal Application and evidence or supporting documents (if any);
3. A copy of the NOIP's Decision on refusal of granting a Patent;
4. An original Power of Attorney signed by the Appellant (in case the Appeal is filed through an IP Representative/Agent);
5. A copy of the fee payment for the Appeal

ELITE: According to regulations (Art. 28 and Art. 37 of the Law on Appeal in 2011), the time limit for resolving the first-time Appeal against the Decision on refusal to grant a Patent for an invention application at NOIP must not exceed 30 days from the acceptance date of the Appeal; for complicated cases, the time limit for resolving/settlement may be prolonged, but must not exceed 45 days from the acceptance date. The time limit for resolving a second-time Appeal must not exceed 45 days from the acceptance date of the Appeal; for complicated cases, the time limit for resolving may be prolonged, but must not exceed 60 days from the acceptance date.

ELITE:

02 application for registration of industrial design, (form);

01 Description of the industrial design (including all prescribed contents);

04 sets of photos/drawings of industrial design, each set includes 07 photos (taken/drawn according to regulations);

Proof of payment of application fees (the normal filing fee for 1 design option with 07 images is VND 1,735,000;

Power of Attorney (form) - if the industrial property registration application is filed through an industrial property agency such as ELITE LAW FIRM

Documents evidencing the priority right (if the industrial design application contains a claim for enjoying the priority right).

Note: To ensure complete information storage, customers should prepare 02 dossiers of application for industrial design patents, 01 set to be submitted to NOIP, and 01 set for customers to keep.

ELITE: The procedure for registration of industrial design protection at the National Office of Intellectual Property of Vietnam (NOIP) according to regulations needs to go through several steps, including filing an application, formal examination of the application, publication of the application, substantive examination of the application, making a decision on grant a protection title, paying the licensing fee and the NOIP granting an industrial design patent for a registration application that meets the protection requirements. Accordingly, the total time to carry out the procedures for industrial design registration according to the provisions of the current Vietnam Intellectual Property Law is 11 months.

ELITE: According to Vietnamese regulations, an industrial design patent can only be established based on the decision to grant a protection title of the National Office of Intellectual Property of Vietnam, address: 384-386, Nguyen Trai Str., Thanh Xuan., Hanoi, Vietnam.

ELITE Law Firm: Procedures for registration of trademark protection at the National Office of Intellectual Property of Vietnam (NOIP) according to regulations need to go through several steps, including filing application, formal examination, publishing in the Official Gazette, substantive examination, notifying issue a decision on grant of a protected title, pay the granting fee if granted and the NOIP issues a Certificate of Trademark Registration for a trademark registration application that meets the protection requirements. Accordingly, the total time to register a trademark in Vietnam is within 13 months.

However, this term may be extended because the application is denied in form or substance (not fundamentally different from the trademarks being protected) or due to overcrowding of applications.  In our experience, to shorten the time for trademark registration at the NOIP, customers should conduct a thorough search and assess the protectability of the trademarks before applying for registration, and application dossiers need to be completed under the prescribed form.

ELITE Law Firm: Currently, the provisions on trademark protection of Vietnam IP law as well as the guiding documents do not have specific provisions on the scope of protection of black and white and color trademarks.

When registering for color trademark protection, the trademark will be protected by both the content and the color of the trademark. The owner can only use the trademark in the form of the registered color, if the color is not correct, it will violate the regulations on the use of the trademark. Trademarks registered for protection in the form of black and white are only protected for images and text, but not for colors. However, the practice of trademark protection in Vietnam allows a trademark registered in black and white to be used in different colors, as long as the text and image contents of the trademark are preserved and do not infringe the rights of a registered trademark.

ELITE LAW FIRM: Under current regulations, the trademark owner can modify a trademark application, however, such modification must not expand the scope of protection of the trademark. In case the trademark owner wants to add a new class of goods/services to your registered trademark application, he/she needs to proceed with the filing of another trademark application for the new class of goods/services with the same procedure as with the already filed trademark application.

ELITE: Types of works that are eligible for copyright protection under the Law on Intellectual Property in Vietnam include:

1. Literary, artistic, and scientific works eligible for copyright protection include:

2. Derivative works shall be protected only if it is not prejudicial to the copyright used to create these derivative works.

3. Protected works as mentioned above must be created personally by authors through their intellectual labor without copying others’ works.

ELITE: Under Art. 202 of the IP law of Vietnam, the remedies provided for IP/copyright infringement in Vietnam include:

1)Compelling the termination of infringing acts;

2)Compelling the public apology and rectification;

3)Compelling the performance of civil obligations;

4) Compelling the payment of damages;

5) Compelling destruction, distribution, or use for non-commercial purposes of goods, raw materials, materials, and means used for the production or trading of intellectual property right-infringing goods, provided that such destruction, distribution, or use does not affect the exploitation of rights by intellectual property right holders.

ELITE: Copyright and related rights consulting and service organizations shall perform the following activities at the request of authors, copyright holders, and related rights holders:

a) Consulting on issues related to the provisions of the law on copyright, and rights related to copyright;

b) Representing authors, copyright holders, and related rights holders to carry out the procedures for submitting applications for registration of copyrights and related rights under authorization;

c) Participating in other legal relations on copyright and related rights, protecting the rights and legitimate interests of authors, copyright holders, and related rights holders under their authorization.