On June 30, 2019, in Hanoi, representatives from the European Union and Vietnam officially signed the historic EU-Vietnam Free Trade Agreement (EVFTA), a comprehensive and mutually beneficial agreement in which thoughtful consideration was given to the development gap between the two parties. The ambitious agreement includes a number of provisions on intellectual property, which we discuss below.
Patent Law Treaty: Under the EVFTA, each party will simplify and develop its patent registration procedures using, inter alia, the multilateral Patent Law Treaty (PLT) as a reference point, though to date neither Vietnam nor the EU are contracting states of the PLT. This regulation is considered reasonable for both parties to develop their patent regimes in the same direction. Accordingly, it is anticipated that Vietnam’s IP Law as amended in the future will be affected by the PLT.
Patent Term Extension/Restoration: As set out in the EVFTA, for the first time, when a patent owner suffers from unreasonable delays from an authorized office while requesting marketing authorization, the member countries will have to adjust the patent term to make up for such delay. As Vietnam has been cited as having “concerning marketing approval delays” for human drug products, it is certain that the regulations will be amended/supplemented to add a mechanism under which patent protection for human drugs may be extended beyond a 20-year term.
The Vietnam design system is an examination system, and the scope of design protection is quite narrow at present. For example, for a normal design, seven basic views must be submitted and partial designs (inseparable parts of products) are not protected. Under the EVFTA, there will likely be many changes.
The Hague Agreement: Vietnam must participate in the Geneva Act (1999) of the Hague Agreement within two years from the date when the EVFTA takes effect. Vietnam has recently taken steps to prepare for participating in this agreement, so participation is expected to be concluded soon. When participating in this agreement, applicants will benefit from, for example, having more options, and requirements are more flexible.
Partial designs: Under Article 12.35.1, Footnotes 7 and 9 of the EVFTA, it should be understood that Vietnam will protect partial designs. Vietnam currently protects only whole designs (the whole product or a separable part/component of a product); the protection of partial design has been a controversial topic for many years. If Vietnam protects partial designs, it will be more favorable to the application of the Hague Agreement.
Visibility: According to the EVFTA, for designs of components of a complex product, only designs and features of designs that are visible during normal use of the product are protected. Normal use excludes maintenance, service, or repair work. This provision is similar to the regulations of the EUIPO on designs. Vietnam has issued corresponding regulations on visibility of designs. Nevertheless, the protection of visible features should be clarified, either by new laws or by changes in practice.
Protection of designs as copyrighted works: According to the EVFTA, a design is also eligible for protection under the laws on copyright as from the date on which the design was created or fixed in any form. Vietnam’s current IP Law generally meets the EVFTA regulations; however, there are some gaps. For example, the laws are silent as to the level of originality required for a work to be eligible for protection.
Among the few trademark issues raised by the EVFTA, the most notable is the concept of “genuine use,” which is an international standard but is absent from Vietnam’s current IP Law. Specifically, the EVFTA requests the parties to provide that a registered trademark will be liable to revocation (termination) if, within a continuous period of five years prior to a request for revocation, it has not been put to genuine use by its owner or the owner’s licensee in the relevant territory in connection with the goods or services in respect of which it is registered, without justifiable reasons, except where the use is commenced or resumed at least three months before the request for revocation.