At a glance: patent enforcement proceedings in Vietnam

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Under the Law on Intellectual Property of Vietnam (the IP Law 2005, amended in 2009 and 2019), a patentee is entitled to request the competent authorities to enforce its patent rights against an infringement in accordance with provisions of the IP Law and other relevant laws and regulations by means of administrative and civil actions (articles 198 and 199).

Administrative action is the best option for a patentee to stop an existing patent infringement quickly at a low cost. The action can be conducted against infringements that cause loss and damage to the author, rightholder, consumers or society (article 211). During administrative actions, competent authorities can search and seize infringing goods without notice to the infringer and if an infringement is found, the authorities may issue a decision on administrative sanctions, which may include a monetary fine up to 500 million dong depending on the value of the infringing goods and the infringing act, removal of the infringing element, and destruction or confiscation of infringing goods.

Civil action is the main instrument for IP rightholders to defend their rights against infringements. By taking a civil action, a patentee can request provisional measures (injunctions) and claim for remedies available under the IP Law, which may include:

• ceasing the infringing act;
• public rectification and apology;
• performance of civil obligations;
• compensation of damages; and
• the destruction or disposal of infringing goods for non-commercial purposes.

There are no courts or judges specialising in the IP field in Vietnam. IP cases are normally settled by the economic courts.

What is the format of a patent infringement trial?

To institute a lawsuit, a plaintiff has to submit a petition to the competent court.

The Code on Civil Proceedings of Vietnam does not provide for the particular extent of necessary documents and evidence to support a lawsuit. However, the Code provides specific types and sources of evidence acceptable to courts, namely:

• readable, audible and visual documents;
• material evidence;
• testimony from witnesses;
• examination conclusions;
• records of examination results from on-the-spot inspections;
• recognised local customs; and
• results of asset evaluations from recognised authorities or experts on prices.

Hearsay or the characteristics or habits of the defendant are not accepted as evidence; however, such information or materials can be used as references for the court in settling the case.

Cross-examination of witnesses is not practised in Vietnam; however, each party has an equal opportunity to cross-examine evidence presented by the other.

According to the IP Law, the court and both the parties have the right to invite experts, and written opinions of private experts appointed by the parties can be used as evidentiary documents. The court can also consult with the National Office of Intellectual Property (NOIP) or any expert organisations on questions regarding IP-related disputes.

Vietnam does not have a jury system. At the first instance, the panel consists of one judge and two appointed judges (persons appointed by the People’s Committee to perform the function of judges at the first instance court) and, at the appeal instance, the panel consists of three judges. Normally a trial lasts one year for each instance.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof of infringement initially lies with the plaintiff. However, in the case of infringement of a patented process, the burden of proof may switch to the defendant if the product made by the patented process is new; or is not new but the patent owner believes that the defendant’s product is made by the patented process and is unable to identify the process used by the defendant despite reasonable measures taken (article 203.4).

The burden of proof for invalidation and unenforceability lies on the person who made the claim. Claims for invalidation or unenforceability by a defendant are initially filed with the competent state management authority (namely, the NOIP), and in such cases the hearing shall be suspended until the NOIP issues its decision.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

A patentee, registered licensee, organisations and individuals suffering from any act of infringement shall have the right to institute a lawsuit against infringers.

An accused infringer may accuse the patentee of interference with duty and bring a civil action for damages caused by the plaintiff’s actions.

The counterclaim of the defendant against the plaintiff shall be accepted for settlement by the court in the same case if the counterclaim for the obligation is to offset against the claim of the plaintiff; the acceptance of the counterclaim will result in the exclusion of all or part of the claim of the plaintiff; or there is a connection between the counterclaim and the claim of the plaintiff and, if they are resolved in the same case, the resolution of the case will be quicker and more accurate.

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

Inducement, contributory infringement and multiple-party infringement are not provided for in the IP Law.

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Yes, multiple parties can be joined as defendants in the same lawsuit. As provided in article 163.1 of the Code on Civil Proceedings, the plaintiff is entitled to initiate a legal proceeding against one or several defendants in relation to one or several legal matters, which are related to each other, for settlement in the same case. Several legal matters that are related to each other as interpreted in Resolution No. 02/2006/ND-HDTP (section I.3) can fall into the two following categories:

• resolution of one legal relation that requires a simultaneous resolution of the other legal relations; and
• resolution of several legal relations of the same type of dispute that involve the same parties.

Considering the foregoing, it is not necessary for all the defendants to be accused of infringing the same patents.

Besides, the court may consolidate two or more cases that have been accepted separately by the court to form one case for resolution if the consolidation and resolution in that one case is in compliance with law (article 38.1 of the Code on Civil Proceedings). In this case, multiple parties can also be joined as defendants in the same lawsuit.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

A patent registered in Vietnam is effective only within the territory according to the territorial principle. Therefore, no charge of patent infringement is applicable to activities that take place outside Vietnam, except in the case of importing products manufactured in foreign countries for use in Vietnam.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

According to the IP Law, equivalents of the claimed subject liable for infringement cover both product and process. In particular, as defined in article 8 of Decree No. 105/2006/ND-CP (guiding the implementation of some provisions of the IP Law), an infringing element of an invention may take any of the following forms:

• a product or part (component) of a product is identical or equivalent to a product or part (component) of a product within the scope of protection as an invention;
• the process is identical or equivalent to a process that is protected as an invention; or
• the product or part (component) of the product is manufactured via a process that is identical to or equivalent to a process currently protected as an invention.

Article 11.1 of Circular 11/2015/TT-BKHCN dated 26 June 2015 clarifies the criteria to assess the equivalence of two technical features, namely:

• they are of the same nature or substitutable for each other;
• they share the same purpose of use; and
• the method to achieve the purpose of use is substantially the same.

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

For collecting evidence for proving infringement, damage or invalidity that is under the control of the other party, either the plaintiff or defendant has the right to request the court to compel the party to produce such evidence. In particular, article 203 provides that if a party to a proceeding against an infringement of intellectual property rights has specified that evidence relevant to substantiation of his or her claims is in the control of the other party and is therefore inaccessible, the former shall have the right to request the court to compel the latter to produce such evidence. There is no mechanism for collecting evidence from third parties or from outside the country available under Vietnamese law.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

A proceeding begins with the filing of the plaintiff’s complaint with a competent court within two years from the date on which the plaintiff is aware of the infringement of its legitimate rights. If the case involves foreign elements, the petition should be filed with the people’s court at provincial level.

A request for applying provisional measures may be submitted at the time of filing the petition or during the settlement of the case. Within three working days from the date of receiving a request for applying provisional measures, the court has to decide to accept or reject the request and notify the same to the requester.

Within five working days from the date of receipt of the petition, the court has to decide to carry out the procedures for acceptance and notify the applicant to proceed with payment of a court fee and officially accept the case when the applicant submits a receipt for the payment of the fee. After that, parties concerned have a right and obligation to lodge requested opinions and evidence with the court within 15 days from the date of receipt of the court’s notification. An extension is possible but may not exceed 15 days, as provided by law. The court may collect or request that the relevant authorities collect evidence from concerned parties upon a request of either the plaintiff or defendant.

The time limit for preparation for the trial of IP-related cases ranges from two to four months. The court may decide to extend the time limit for preparation for trial, but it shall not exceed six months in any case.

During the period of preparation for trial at first instance, the court shall carry out conciliation to enable the parties to reach an agreement on the settlement of the case. If negotiation between the parties fails, the court shall issue a decision to bring the case to a hearing.

A first instance trial must be conducted within one month from issuing the decision to hear the case. A first instance panel consists of one judge and two people’s assessors. After conducting the interrogation and debate, the members of the panel shall discuss and make their judgment with specific remedies by way of majority voting.

A court’s judgment can be appealed to the Supreme People’s Court within 15 days from its issuance. A similar timetable is applicable for appeal proceedings.

A court’s judgment that has come into force can be challenged by the chief justice of the Supreme People’s Court or the chief procurator of the Supreme People’s Procuracy under the supervisory and review procedures if there is a mistake or violation of law found in the judgment, or new and important facts about the case that the litigants were unable to know are discovered.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal are US$5,000 (for reviewing infringement claims, assessing evidence, bailiff actions if necessary, requesting expertise, etc), US$5,000 and US$10,000 respectively, not including attorneys’ fees. Contingency fees are permitted, based on the contractual agreement between the attorney and the party, usually calculated as a ‘reasonable’ proportion of the client’s net recovery.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

A court’s judgment that has come into force can be challenged by the chief justice of the Supreme People’s Court or the chief procurator of the Supreme People’s Procuracy under the supervisory and review procedures if there is a mistake or violation of law found in the judgment or new and important facts about the case that the litigants were unable to know are discovered. New evidence is allowed at the appellate stage.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

Provisions of the Trade Law are not applied to justifiable actions of the intellectual property rightholder.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

As an alternative dispute resolution method, meetings with infringers aimed at reconciliation or mediation are used in Vietnam for settlement of IP disputes. Pre-hearing compromise, where the parties reach an agreement on the matters that must be resolved in the civil case, is also used.

Arbitration can also be chosen if agreed by the concerned parties.

Law stated date

Give the date on which the information above is accurate.

13 March 2020.