Vietnam’s industrial property-related procedures further clarified

Vietnam
  • Circular 16 came into force on 15 January 2018
  • On 20 November 2018, the Vietnam IP Office issued two notifications, which provide guidance on industrial property-related procedures
  • The notifications clarify the procedures for applications filed pre-Circular 16 and the signing date for powers of attorney

On 20 November 2018 the Vietnam IP Office issued Notifications 13005/TB-SHTT and 13006/TB-SHTT, which provided further guidance on the implementation of Circular 16/2016/TT-BKHCN.

On 30 June 2016 the Ministry of Science and Technology published Circular 16 , which introduced important changes to industrial property-related procedures before the IP Office. Although the circular entered into force on 15 January 2018, it was unclear whether changes relating to examination and appeal procedures, as well as procedures for handling responses to the provisional refusal of international registrations under the Madrid system were being applied to industrial property applications filed or decisions or notifications issued by the IP Office before 15 January 2018.

Procedures for applications

In Notification 13005/TB-SHTT, the IP Office clarified that industrial property applications filed before 15 January that are still pending will be handled in accordance with the new procedures set out in Circular 16 (except for cases where a notification or decision had been issued by the IP Office before 15 January 2018, in which case it will be handled under the previous regulations).

Further, appeals and responses to decisions or notifications issued by the IP Office before 15 January 2018 will continue to be handled under the previous regulations.

Finally, the number of requirements concerning documents in applications, appeals, recordals of changes, transfers, maintenance and renewals that were introduced in Circular 16 will apply to applications that were filed before 15 January 2018.

Power of attorney

The IP Office issued Notification 13006/TB-SHTT to provide further guidance on the signing date for power of attorney.

Under the current regulations, overseas applicants must appoint a qualified industrial property representative in Vietnam to file applications, appeals and responses with the IP Office. A power of attorney is not required at the time of filing applications, appeals or responses, provided that the appropriate documents are submitted within:

  • one month from the filing date of the trademark, industrial design or nationally filed patent application;
  • 10 working days from the filing date of the appeal or response; and
  • 34 months from the priority date of the international patent application in Vietnam.

It was unclear whether the IP Office would accept a power of attorney signed after the date that the application, appeal or response was filed. Different divisions under the IP Office taken different approaches to this matter. In most cases, the applications, appeals or responses were refused at the examination stage because the power of attorney had been signed after the filing date of the application.

Notification 13006/TB-SHTT clarifies the following with regard to the power of attorney’s signing date:

  • the date that a power of attorney takes legal effect is specified by the signing date which must be no later than filing date of the application, appeal or response;
  • if the signing date is later than the filing date of the application, appeal or response, it will be accepted only if the power of attorney:
    • specifies a validity date, which is no later than the filing date of the application, appeal or response; or
    • mentions details of the application, appeal or response which was filed earlier.

For applications, appeals or responses with an invalid or no power of attorney, the notification states that the IP Office will notify the applicant of this. The applicant then has two months in which to supplement or correct the errors. This time limit can be extended once by an additional two months. In the past, the IP Office would merely issue a decision refusing to handle the application, appeal or response and the applicant had no chance to amend or submit a new power of attorney.

Industrial property rights holders will benefit from the notifications as they clarify certain issues that have arisen during the year that Circular 16 has been in force. The notifications will give more flexibility to applicants in preparing, filing and prosecuting applications and related process at the IP Office.

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