Introducing Decree No. 65/2023/ND-CP, a game-changing update to the Intellectual Properties (“IP”) regulation. This new decree brings forth a variety of modified and supplementary provisions that aim to enhance the protection and management of intellectual properties. Prepare for a shift in the IP landscape as we dive into the section Patent on this  legal update.

1. Overview of the IP legal system

The Vietnam government has recently released Decree No. 65/2023/ND-CP (referred to as “Decree 65”) on August 23, 2023, which came into effect on the same day. Decree 65 serves the purpose of providing specific regulations that align with several provisions of the amended Law on Intellectual Properties (IP Law) that became effective on January 1, 2023. Importantly, Decree 65 brings about changes and additions to the IP system in Vietnam.

2. Security control and Foreign filing license

a. Security control

The previous legal documents lacked clear provisions on this matter, but it has now been resolved. With the amendment of the IP law, the Decree now specifies detailed provisions regarding this issue. This makes it easier for applicants to determine whether their invention requires a security control.

b. Foreign Filing License

Under the Decree, if an applicant intends to file a patent application abroad after filing with the IPVN, they must notify the IPVN in writing of their intention. Within one month of receiving the notification, the IPVN will conduct a preliminary assessment to determine whether the invention falls under the technical fields that affect national security or defense. If there is doubt, the IPVN will refer the matter to the responsible authorities of the MOD and MPS for assessment.

c. Notes 

♦ The amended IP law and the Decree lack clarity in specifying the situation where an invention partially made in Vietnam.

♦ Similarly, these legal documents do not provide a mechanism for an applicant to request an independent assessment in order to file abroad earlier. According to the Decree, the applicant would need to file a patent application and undergo assessment.

♦ According to Article 20 of the Decree, as a PCT receiving office, the IPVN will review the claims of a PCT application to determine if the subject matter claimed is a State secret or a confidential invention. If it is, the IPVN will not transfer the application to the International Bureau of WIPO and the International Searching Authority. An entity or individual in Vietnam can file a PCT application with the IPVN as the PCT receiving office or directly with the International Bureau of WIPO. However, the Decree does not address the issue of State secrets in cases where the application is filed with the International Bureau.

3. Remuneration to investors 

According to the IP law, patent owners have a responsibility to provide remuneration to inventors based on their agreement. In cases where no such agreement exists, the law establishes provisions for remuneration, including the concept of “a fixed remuneration”. However, the law does not specify the specific timeframes for making these payments, and that is where the Decree comes in. Article 35.3 of the Decree requires the owner to pay the remuneration within 30 days if there is no agreement with the inventor on payment timelines, starting from the date the owner receives payment from the license. In contrast, the owner should settle the remuneration no later than 90 days from the fiscal year’s conclusion when calculating it based on Article 135.1(a) of the IP law, constituting 10% of their earnings before interest and taxes from using the invention or design.

For the full detail of this post, please reference on this link: http://hmlf.vn/decree-no-65-2023-nd-cp-issued-with-changed-and-additional-provisions-of-the-intellectual-properties-ip-regulation-p1/

Harley Miller Law Firm “HMLF”
Head office: 14th floor, HM Town building, 412 Nguyen Thi Minh Khai, Ward 05, District 3, Ho Chi Minh City.
Phone number: +84 937215585
Website: hmlf.vn
Email: [email protected]