Table Of Contents

1. Common Procedures

Circular 23 establishes procedural rules that apply to establishing and protecting industrial property rights, which include patents, trademarks, and industrial designs. These common procedures ensure consistency and clarity in how the National Office of Intellectual Property (NOIP) handles various applications and administrative actions. Key aspects of these common procedures include:

  • Re-examination: Circular 23 details specific cases where the IP Office will re-examine an application. This might be triggered by provisions in the amended IP Law, for example, if new information comes to light, or issues are identified that call into question the initial decision.
  • Partial Grants: Circular 23 introduces the possibility of granting only a part of a protection title, applicable to patents, trademarks, and industrial design applications. This allows the IP Office to acknowledge protection rights for some elements while rejecting others, rather than issuing an outright rejection if only certain parts of a claim or design lack originality or distinctiveness.
  • Grounds for IP Right Invalidation: The circular provides more clarity on potential grounds for the invalidation of IP rights. For patents, this includes clearly outlining situations where the patent's claims go beyond the original application specifications. With trademarks, specific conditions are laid out for "bad faith" cancellations of registrations. This offers more precise guidance on when an IP right may be revoked or contested, improving legal transparency.
  • Opposition Procedures: Circular 23 formalizes the process of filing an opposition against a particular application. In contrast to previous regulations, the IP Office will inform the applicant of all oppositions, except in clearly defined cases. This allows applicants to defend and argue their case in response to these oppositions.
  • Extended Timeframes: Several key time limits in the application and opposition process have been extended from one month to two months. These include:
  • The time limit for an applicant and the opponent to respond to each other's arguments
  • The time limit for applicants to submit clarifying documentation for trademark applications when the IP Office has questions about the information presented.

Implications

These common procedures offer several tangible improvements for the Vietnamese IP system:

  • Greater Fairness: By establishing clearer rules on re-examination and partial grants, the system can better balance protecting genuine IP rights with removing applications that do not meet requirements.
  • Transparency: Detailing specific reasons for invalidation strengthens understanding and offers predictability for applicants.
  • Participation: Formalizing the opposition process with a more active role for the IP Office offers third parties a stronger voice in shaping the IP landscape and preventing registrations that could infringe on their existing rights.
  • Efficiency: While extending certain timeframes may seem counterintuitive, these adjustments can improve efficiency by minimizing repetitive or unnecessary steps if applicants are given more time to provide complete information or responses at earlier stages.

Remember: Circular 23 is a highly technical document. It's advisable to consult a qualified IP lawyer for its specific application and implications for your individual patents, trademarks, or industrial design filings.

 

2. Patents

Circular 23 offers significant updates and clarifications for patent-related procedures under the amended Intellectual Property Law. Let's explore these key changes:

Ground for Patent Invalidation - Going Beyond the Original Disclosure: One amendment within the IP law allows for patent invalidation if the protected invention goes beyond the original disclosure in the application. Circular 23 clarifies what constitutes "going beyond." It specifies that changes adding information not clearly and unambiguously derived from the original specification can be grounds for invalidation. This strengthens the principle that patent protection should only cover the scope of the invention as initially disclosed.

Use of Foreign Examination Results: A critical new procedure is introduced, allowing applicants to request that the IP Office utilize foreign examination results (such as search and examination reports or granted patents) for corresponding Vietnamese applications. The potential benefits are:

  • Faster processing: Review time will likely be reduced as the IP Office leverages work previously conducted by other offices.
  • Cost-Effectiveness: Applicants won't need to repeat extensive search and examination processes if other reputable patent offices have already done them.
  • Global Consistency: This aligns Vietnam's patent examination practices with international partners.
  • Important Note: The Ministry of Science and Technology will publish a list of applicable foreign patent offices. It's anticipated that this will include major offices like the USPTO, EPO, JPO, and CNIPA.

Eligibility Requirements for Using Foreign Examination Results:

  • The Vietnamese application must not have undergone substantive examination yet.
  • The foreign examination results must show at least one patentable claim.
  • Claims in the Vietnamese application must correspond to the patentable claims found in the foreign examination.

Unresolved Issue: It remains unclear whether applications filed between January 1, 2023 (the effective date of the amended IP Law) and August 23, 2023 (the effective date of Decree 65/2023/ND-CP) are eligible for this accelerated review.

Other Patent-Related Changes

Circular 23 also addresses several smaller, but still important, elements of patent procedures and criteria:

  • Revisions to novelty and substantive examination: There have been some adjustments to how novelty is assessed and how requests for substantive examination are handled.

Implications

The patent-related changes in Circular 23 aim to:

  • Enhance Protection: Clarifications on invalidation grounds help ensure only truly novel and non-obvious inventions receive patent protection.
  • Streamline Process: The possibility of utilizing foreign examination results has the potential to reduce examination backlogs, accelerate timelines, and promote cost savings for applicants.
  • Global Alignment: These changes move Vietnam's IP practices closer to widely recognized international standards.

Key Takeaways

The patent provisions in Circular 23, especially the inclusion of foreign examination results procedures, represent a major improvement for Vietnam's IP landscape. However, some uncertainties remain pending the full publication of regulations and official guidelines. As always, obtaining guidance from a qualified IP lawyer is crucial for navigating the specific nuances of your patent applications and maximizing your chances of success.

 

3. Industrial Designs

Circular 23 offers crucial clarifications for industrial design applications and registrations, aligning Vietnam's regulations with the terms of the EU-Vietnam Free Trade Agreement (EVFTA). Let's look at the major points:

Deferment of Publication: For the first time, applicants can request their industrial design publication be deferred at the time of filing. The deferment period cannot exceed seven months from the filing date. This strategic option offers several potential benefits:

  • Market timing: Applicants can better align the publication with product launch or marketing strategies.
  • Competitive advantage: Deferment can help keep designs concealed from competitors for a longer period.
  • Protection abroad: This might enable alignment with certain other jurisdictions' confidentiality periods before seeking international design protection.

Design Definitions: To comply with the EVFTA, the definition of an industrial design was revised. Now, designs only qualify for protection if they meet these conditions:

  • External Appearance: The design encompasses the shape, lines, colors, or a combination of these.
  • Visibility during Exploitation of Utility: The design MUST be visible while the product or complex product is being used for its intended function. Designs concealed during use are no longer protectable.

Clarification of Key Terms:

  • Circular 23 provides definitions for terms like "product", "part for assembly", and "complex product". These clarifications resolve ambiguity and outline the specific types of designs eligible for protection.

Implications

These changes in industrial designs have significant impacts on applicants:

  • Strategic Publication: The deferment option introduces an element of strategic decision-making. Applicants will need to consider factors like market timing and foreign filing intentions in deciding when to publish their designs.
  • Scope of Protection Narrows: The new definition emphasizing visibility during use excludes purely internal or hidden design features. This requires a shift in design registration strategies as some features might no longer be protectable.
  • Clarity and Alignment: The clarified definitions and alignment with the EVFTA promote consistency with international standards. This benefits both applicants and the IP Office.

Key Takeaways

Circular 23's changes to industrial design protection emphasize the functional and visible elements of a design. It becomes more important to strategically consider the following:

  • The purpose and usage of the product: Designers will need to focus on the visual elements directly involved in the product's proper function.
  • Timing of design registration and publication: The deferment option introduces flexibility, but applicants must align publication timing with potential commercialization and marketing plans.

Important Reminder

Like other aspects of Circular 23, these industrial design provisions can be complex. Consulting a Vietnamese IP lawyer is essential for specific advice on how to protect your product designs and ensure they align with the new definitions and procedures.

 

4. Appeals

Circular 23 offers refinements to the appeals procedures regarding decisions made by the National Office of Intellectual Property (NOIP) under the amended IP Law. Key aspects of these changes include:

Specifying Appealable Decisions: The circular clarifies what types of decisions issued by the NOIP can be formally appealed. It also outlines specific types of appeal requests that will not be acknowledged, such as those where:

  • The request doesn't point out illegal elements in the original decision.
  • The appeal relates to matters of state secrets.

New Arguments at the Appeal Stage: While previous regulations didn't allow for introducing new facts at the appeal stage, Circular 23 relaxes this restriction. This doesn't mean any new information can be introduced, however. Only facts that existed before the original decision, but for valid reasons were unknown or not considered by the IP Office, can now be introduced for consideration in the appeal.

Implications

These changes to the appeal process offer both potential benefits and ongoing challenges:

  • Increased Clarity: By explicitly outlining which decisions can be appealed and under what conditions, the process offers more predictability for the parties involved.
  • Potential Fairness: The ability to introduce limited new arguments in appeals could improve fairness. This could address situations where a key piece of evidence was overlooked or unavailable during the initial stages of review.
  • Lingering Ambiguity: The exact scope and limits of what constitutes acceptable "new" arguments remain open to interpretation. This means the boundaries of the new provision will be tested and refined over time through case-specific rulings.

Key Takeaways

Overall, the changes to Vietnam's appeal process represent a positive step towards greater transparency and potential fairness. However, some uncertainties remain pending further clarification and interpretation.

Important Considerations

  • Complexity remains: IP law is complex; navigating the appeals process in Vietnam still requires detailed knowledge of procedures and regulations.
  • Consult a lawyer: A qualified Vietnamese IP lawyer will be crucial in determining whether you have grounds for appeal, identifying the best arguments to present, and understanding how the new appeal provisions might apply to your case.

The appeals section of Circular 23 is a step forward, but it underscores the ongoing importance of professional IP legal counsel when challenging decisions issued by Vietnam's IP Office.

 

5. Conclusion

Vietnam's intellectual property landscape has undergone a significant transformation with the implementation of the amended IP Law and the issuance of Circular 23. This article provided a comprehensive overview of the key changes and additions introduced by Circular 23, focusing on patents, industrial designs, and appeals processes.

Key takeaways include:

  • Enhanced clarity and procedural guidance: Circular 23 offers more detailed explanations of various processes and criteria, promoting consistency and predictability for applicants.
  • Streamlined procedures: New options like utilizing foreign examination results for patents and deferring design publication offer the potential for faster processing and strategic management of intellectual property rights.
  • Greater emphasis on international alignment: Several changes, particularly in industrial design definitions, bring Vietnam's IP practices closer to international standards.
  • Unresolved issues and ongoing need for legal expertise: While Circular 23 addresses many aspects, some ambiguities remain, and navigating the intricacies of IP law still necessitates consulting a qualified Vietnamese intellectual property lawyer.

In conclusion, circular 23 paves the way for a more streamlined and efficient IP system in Vietnam. However, staying informed about ongoing developments and seeking professional guidance from IP lawyers remain crucial for individuals and businesses seeking to secure and enforce their intellectual property rights in Vietnam. If you need further explanation on this subject, please don't hesitate to contact us through email at lienhe@luatminhkhue.vn or phone at: +84986 386 648. Lawyer To Thi Phuong Dzung