Intellectual property issues

Paris Convention

Is your jurisdiction party to the Paris Convention for the Protection of Industrial Property? The Patent Cooperation Treaty (PCT)? The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)?

Yes. Vietnam has been a member of the Paris Convention for the Protection of Industrial Property 1883 since 1949, the Patent Cooperation Treaty 1970 since 1993 and the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 since 2007.

Contesting validity

Can the licensee be contractually prohibited from contesting the validity of a foreign licensor’s intellectual property rights or registrations in your jurisdiction?

No. Article 144.2 of the Intellectual Property (IP) Law provides that a licence contract must not have provisions that unreasonably restrict the right of the licensee, including prohibiting the licensee from complaining about or initiating lawsuits regarding the validity of the industrial property rights or the licensor’s right to license. The law further indicates that such provision in a licence agreement (if any) shall be invalid.

Invalidity or expiry

What is the effect of the invalidity or expiry of registration of an intellectual property right on a related licence agreement in your jurisdiction? If the licence remains in effect, can royalties continue to be levied? If the licence does not remain in effect, can the licensee freely compete?

Article 148.3 of the IP Law sets out that the licence agreement shall be terminated upon the end of validity of the licensed intellectual property right (IPR). As such, once the validity of an IPR expires or is terminated, the related licence agreement will no longer be in effect. In such a case, the royalties may not continue to be levied, and the licensee can freely compete, unless otherwise explicitly agreed by the two parties in the licence agreement.

Requirements specific to foreigners

Is an original registration or evidence of use in the jurisdiction of origin, or any other requirements unique to foreigners, necessary prior to the registration of intellectual property in your jurisdiction?

The laws do not require an original registration or evidence of use in the jurisdiction of origin, or any other requirements unique to foreigners to register intellectual property in Vietnam. An original or certified copy of registration in the country of origin is only required when the application for registration of intellectual property claims priority rights from a prior registration in the jurisdiction. Furthermore, foreign applicants need to appoint a local representative to pursue registration of intellectual property in Vietnam.

Unregistered rights

Can unregistered trademarks, or other intellectual property rights that are not registered, be licensed in your jurisdiction?

In principle, in Vietnam, trademark rights are only derived from registration, except for well-known marks. Therefore, the transfer of the right to use unregistered trademarks, as well as other IPRs to which rights are established upon registration, is not considered a licence agreement and cannot be recorded at the Intellectual Property Office of Vietnam (IP Office). However, the rightsholder can still grant the right to use of unregistered intellectual property to another party in the form of a civil contract.

For intellectual property objects for which the rights are not derived from registration (such as copyright), the licence can be made without registration of such objects.

Security interests

Are there particular requirements in your jurisdiction to take a security interest in intellectual property?

In principle, IPRs can be registered for security interest. However, the laws do not set particular requirements to take a security interest in intellectual property.

Proceedings against third parties

Can a foreign owner or licensor of intellectual property institute proceedings against a third party for infringement in your jurisdiction without joining the licensee from your jurisdiction as a party to the proceedings? Can an intellectual property licensee in your jurisdiction institute proceedings against an infringer of the licensed intellectual property without the consent of the owner or licensor? Can the licensee be contractually prohibited from doing so?

Yes. A foreign owner or licensor of intellectual property can institute proceedings against a third party for infringement without joining the licensee as a party to the proceedings in Vietnam.

The law also allows a licensee to request handling of infringement by administrative measures, provided that the trademark owner does not explicitly restrict the licensee’s right to do so. Although the laws do not expressly state the same for civil and criminal measures, it may be interpreted that the same requirements will apply.

The licensee can be contractually prohibited from instituting proceedings against an infringer of the licensed intellectual property without the consent of the owner or licensor.

Sub-licensing

Can a trademark or service mark licensee in your jurisdiction sub-license use of the mark to a third party? If so, does the right to sub-license exist statutorily or must it be granted contractually? If it exists statutorily, can the licensee validly waive its right to sub-license?

Yes. A trademark or service mark licensee can sub-license the use of the mark to a third party with the consent of the master-licensor. The right to sub-license does not exist statutorily, but must be granted contractually.

Jointly owned intellectual property

If intellectual property in your jurisdiction is jointly owned, is each co-owner free to deal with that intellectual property as it wishes without the consent of the other co-owners? Are co-owners of intellectual property rights able to change this position in a contract?

Co-owners of intellectual property (except copyright) must jointly act when they want to deal with that intellectual property (including licensing or assigning it to a third party or using it as security). The IP Office requires the mutually signed written consent of all co-owners to the licensing of the industrial property objects to record the licence agreement if the licence agreement has not been signed by all of the co-owners. In other words, if one of the co-owners is to act on its own, the other co-owners must give written consent for the former to act on their behalf. The co-owners are not able to change this position in a contract.

However, in the case of copyright, the laws provide that in a case of joint ownership of a work, performance, audio or visual fixation or broadcast that is composed of separate parts detachable for independent use, copyright holders or related rights holders may license their copyright or related rights in their separate parts to other organisations or individuals. This means each co-owner is free to deal with its separate part as it wishes, without the consent of the other co-owners.

First to file

Is your jurisdiction a ‘first to file’ or ‘first to invent’ jurisdiction? Can a foreign licensor license the use of an invention subject to a patent application but in respect of which the patent has not been issued in your jurisdiction?

Vietnam adopts the ‘first to file’ principle. Licences can only be recorded for patented inventions. A foreign licensor can license the use of an invention, but it would not be considered a licence of a patent application and cannot be recorded. Such a licence agreement will be treated as a contract governed by civil laws.

Scope of patent protection

Can the following be protected by patents in your jurisdiction: software; business processes or methods; living organisms?

SoftwareBusiness processes or methods

Vietnam currently excludes software (comprising computer programs, libraries and data) and business processes or methods from the scope of patentable subject matter. Under article 59 of the IP Law, computer programs, business methods and presentations of information are listed as types of subject matter that are expressly not eligible for patent protection; however, there are exceptions as follows.

Regarding computer programs, while a computer program itself, in the form of code, cannot be patented, the Vietnamese Guidelines for Patent Examination provide for the concept of ‘computer-implemented inventions’, which are inventions involving the use of computers, computer networks or other programmable apparatus whereby prima facie one or more of the features of the claimed invention are realised wholly or partly by means of a program or programs. This invention could be patentable if it has ‘a technical character, and is a technical solution for solving a technical problem by technical means to attain a technical effect’, provided that the ‘technical effect’ goes beyond the normal physical interactions between the program and the computer.

The IP Law defines an invention as a ‘technical solution in the form of a product or a process’. In practice, patent examiners usually interpret a product to be a tangible product. Accordingly, for a computer-implemented invention to take the form of a product, the designation of subject matter of a claim must be (converted into) a tangible designation such as ‘a storage medium containing a computer program’.

Regarding business processes or methods, according to the Vietnamese Guidelines for Patent Examination, the claimed subject matter will be excluded from patent protection if it:

  • is merely directed to a method of doing business;
  • does not use technical means;
  • does not solve any technical problems; and
  • does not create any technical effects.

 

However, this means if the claimed subject matter involves methods of doing business and specifies an apparatus or a technical process for carrying out at least some part of these methods, the subject matter will not be excluded from patent protection as such.

Living organisms

Article 59 of the IP Law includes plant varieties and animal breeds in its list of subject matters that are not protectable as inventions. However, point 5.8.2.8 of the Guidelines for Patent Examination states that inventions related to plants and animals are protected as long as their technical features are not limited to a specific plant variety or animal breed. For example, transgenic plants are normally protectable as inventions. In addition, plant varieties are protectable by the rights to plant varieties if they are novel, distinct, uniform, stable, designated by proper denominations and belong to the list of state-protected plant species promulgated by the Ministry of Agriculture and Rural Development of Vietnam. The requirements for plant variety protection are stipulated in detail in articles 158 to 163 of the IP Law.

Processes of plant or animal production that are not microbiological processes and are principally of biological nature are not protected either, according to article 59 of the IP Law. However, according to point 5.8.2.8 of the Guidelines for Patent Examination, it is possible to grant patents for invention or utility solution to processes of plant variety or animal breed production that are not of biological nature. Whether a process is considered to be biological or not is based on the degree of technical intervention by humans in the said process. If the technical intervention by humans in the process is a critical or controlling factor for its products or effectiveness, the process does not involve a biological nature. For example, a process of irradiating cattle for high-yield production of milk is protectable.

On the other hand, microorganisms are not mentioned in article 59 of the IP Law and, therefore, are protectable as inventions. In particular, point 5.8.2.8 of the Guidelines for Patent Examination states that microorganisms and microbiological processes are eligible for patent protection if they are not in opposition to the social ethics and public order and not prejudicial to national defence and security.

Trade secrets and know-how

Is there specific legislation in your jurisdiction that governs trade secrets or know-how? If so, is there a legal definition of trade secrets or know-how? In either case, how are trade secrets and know-how treated by the courts?

Yes. Vietnam’s IP Law and the Law on Technology Transfer No. 07/2017/QH 14, dated 19 June 2017 and effective from 1 July 2018, govern trade secrets and know-how. Under article 4.23 of the IP Law, a trade secret means ‘information obtained from activities of financial or intellectual investment, which has not yet been disclosed and can be used in business’. Under article 2.1 of the Law on Technology Transfer, know-how means ‘information accumulated and discovered during the process of research, production and business by the technology owner, which is decisive for the quality and competitive capacity of technology and technological products. Know-how includes technical know-how and technological know-how.’

So far, there have been very few cases regarding trade secrets brought before the court. Taking into account the lack of precedents and the limited IP expertise of the court, it is unpredictable how trade secrets and know-how will be treated by the court.

Does the law allow a licensor to restrict disclosure or use of trade secrets and know-how by the licensee or third parties in your jurisdiction, both during and after the term of the licence agreement? Is there any distinction to be made with respect to improvements to which the licensee may have contributed?

Yes. The law allows a licensor to restrict disclosure or use of trade secrets and know-how by the licensee or third parties, both during and after the term of the licence agreement, as agreed by the two parties in the related licence agreement, except when:

  • disclosing or using trade secrets acquired without knowing or having the obligation to know that they have been unlawfully acquired by others;
  • disclosing secret data in order to protect the public;
  • using secret data not for commercial purposes;
  • disclosing or using trade secrets obtained independently; and
  • disclosing or using trade secrets obtained by analysing or evaluating lawfully distributed products, unless otherwise agreed upon by the analysers or evaluators and the owners of such business secrets or sellers of such products.

 

The law provides that the licensee owns the IPR for their improvements. This can be interpreted to mean that the law does not allow a licensor to restrict or prohibit the use of improvements to which the licensee may have contributed.

Copyright

What constitutes copyright in your jurisdiction and how can it be protected?

In Vietnam, the following types of work are copyrightable:

  • literary and scientific works including textbooks, teaching courses, and other works expressed in written language or other characters;
  • lectures, addresses and other speeches;
  • press works;
  • musical works;
  • dramatic works;
  • cinematographic works and works created by a process analogous to cinematography;
  • plastic artworks and works of applied art;
  • photographic works;
  • architectural works;
  • sketches, plans, maps and drawings related to topography, architecture or scientific works;
  • folklore and folk-art works of folk culture; and
  • computer programs and data compilations.

 

To be protected, the work must be created personally by the authors through their intellectual labour without copying the works of others.

Law stated date

Correct on

Give the date on which the information above is accurate.

1 December 2020