Some remarkable Changes of the Circular No. 01/2007/TT-BKHCN relating to registration of patents and trademarks at the NOIP from January 15, 2018

By Nguyen Tran Tuyen
ELITE LAW FIRM

Circular No. 01/2007 / TT-BKHCN issued on February 14, 2007 (Circular 01/2007), guiding the implementation of some provisions of the Intellectual Property Law 2005, amended in 2009 relating to procedures for establishment of industrial property rights (at the National Office of Intellectual Property (NOIP)) in Vietnam has been amended and supplemented four times in 2010, 2011, 2013 and 2016. We would like to introduce some remarkable new points (for applicants) in this fourth revision of Circular 01/2007, effective from 15 January 208, as follows.

1. Opposition against granting of a patent or trademark registration based on the right of registration should be resolved at Court first 

For Official Letters opposing against granting of a patent or trademark registration based on the right of registration, the NOIP shall notify and request opposers to file a petition to a competent court for resolving in accordance with law on civil proceedings. The opposing party is obliged to submit a copy of the Notice of acceptance of the case to the NOIP within 01 month from the date that the NOIP sends the request for filing a petition at a court. the Notice of acceptance of the case issued by the court is a legal ground for the NOIP to decide to continue or suspend the processing of the opposed application.

2. Non-refund of filing fees

Filing fees paid for each procedure in the application process will not be refunded when the time limit for commencing such procedures has commenced unless the NOIP collects incorrectly (exceeding collection or wrong collection). The application filing fee shall not be refunded in any circumstances, including an application is withdrawn.

3. The time limit for occurrence of force majeure events shall be excluded

Excluding the duration of the occurrence of force majeure events or objective obstacles, organizations or individuals have the rights and obligations to fail to perform their rights and obligations within the said time limit if those individuals and organizations request and have sufficient evidences to prove that situation (force majeure events).

4. An invention application originating from Vietnam must be registered in Vietnam first

A patent application will be rejected if such an invention created and owned by a Vietnamese citizen or was created in Vietnam without filing in Vietnam within 6 months before being filed abroad.

5. A grace period of 6 months for late PCT national phase entry has been cancelled

If an international patent (PCT application) was designated into Vietnam, the NOIP will be the designated Office. In order to enter the national stage of Vietnam, within 31 months from the filing date of the international application or from the 1st priority date, such PCT application must be submitted to the NOIP without delay. The provision of a grace period of 6 months for late PCT national phase entry has been cancelled in order to make interests between Vietnamese and foreign applicants equal.

6. Extend deadline for filing a response to an Office Action (OA) and late filing of required documents

– The time limit for filing a response refusal to an OA of formality examination is 02 months (01 month longer than before);
– The time limit for filing a response refusal to an OA of substantive examination is 03 months (01 month longer than before);
– The time limit for submission of priority right documents is 03 months from the filing date (02 month longer than before);

7. The time limit for filing a response to the NOIP’s provisional refusal of an Int’l trademark registration is extended

– Before the expiry of the 12-month period, the NOIP must issue a decision approving the protection, registration and publication in the IP Gazette (if the mark meets the criteria for protection) or a notice of refusal according to the forms of decisions / notices of the WIPO Office and send it to the WIPO Office;
– The Int’l trademark holder has a time limit of 03 months for filing a response to the NOIP’s provisional refusal;
– After filing a response, if the NOIP still holds the refusal decision, the Int’l trademark holder shall be entitled to file an appeal against the NOIP’s refusal within 90 days from the NOIP’s decision date (same to procedures for national trademark applications).

8. There is no separate procedure for registration or recognition of a well-known trademark

If a well-known trademark is recognized by an IPR enforcement authority such as a court or a Science and Technology Inspectorate of Vietnam as a legal ground for a decision on handling of infringement as to the well-known mark (under Article 129.1.d of the IP Law) or recognized by the NOIP as a legal ground for the NOIP’s decision on refusal protection of another trademark (as stipulated in Article 74.2.i of the IP Law), such a well-known trademark shall be recorded in a List of well-known trademarks stored at the NOIP as reference information for the establishment of IP rights and protection of IPRs. Thus, there is no separate procedure for registration or recognition of a well-known trademark at the NOIP.

9. New regulation on settlement of appeal applications related to procedures for establishment of industrial property rights

Depending on the complexity of the appeal, the NOIP may consult the independent Consultant, the Advisory Council (including the chairman and members). An independent Consultant, the Advisory Council has the role of advising the NOIP’s Official on technical issues, the legal issues of the appeal/complaint as well as solution for the case.

All Decisions on settlement of appeals shall be published on the NOIP’s website within 15 days and in the Industrial Property Gazette within 02 months from the Decision date.

These new regulations came into force on January 15, 2018.