1. What is a co-owned patent?

Under Article 86.1 of the Law on Intellectual Property in Vietnam, the right to register inventions, industrial designs, and layout designs belongs to the following:

(a) Inventors who have created inventions, industrial designs, and layout designs with their labor and at their own expense;

(b) Organizations, individuals who have supplied funds or material facilities to inventors in the form of job assignment, or hiring, unless otherwise agreed by the parties involved.

Two inventors in Vietnam who co-create an invention are entitled to submit a joint patent application for invention are entitled to submit a joint patent application for the invention. As co-owners who have decided to apply jointly or as individual inventors who developed the invention using their resources and efforts, they must nevertheless offer sufficient evidence that they satisfy the requirement of Article 86.1. Legal action may be necessary to settle disagreement if they are unable to agree on who owns the invention or how to apply it.

2. How to establish rights to register a jointly created invention in Vietnam

When multiple inventors collaborate to create an invention in Vietnam, the Law on Intellectual Property and associated regulations are used to determine who is entitled to file a patent application. The steps below are generally involved in the entitlement determination process, though they may vary based on the particulars of each case.

Identification of co-inventors: The first step is to identify all the inventors who have contributed to the creation of the invention. Each co-inventor must be named in the patent application.
Determination of ownership rights: Next, the ownership rights of the invention must be determined. Ownership rights can be established through an agreement between the co-inventors, or based on the contributions made by each co-inventor.
Determination of the right to apply: After ownership rights have been determined, the right to file the patent application must be established. The right to apply generally lies with the inventor or co-inventors who have created the invention by their labor and at their own expense. If the invention was created with the help of another person or organization, the right to apply may be granted to them.
Evidence of ownership and right to file: To establish ownership and the right to apply, evidence such as employment contracts, assignment agreements, or other legal documents may need to be presented.

3. What are the common forms of dispute between jointly created inventions?

The world of jointly created inventions, while bursting with potential and collaborative magic, is not immune to the occasional spat, tug-of-war, or full-blown intellectual property showdown. The disputes that arise can be as diverse as the innovations themselves, but some common themes tend to weave their way through the tangled threads of creative collaboration.

Ownership and Contribution: This, the mother of all invention-related squabbles, boils down to the age-old question: "Who deserves the credit (and the spoils)?" Did one inventor conceive the initial spark, while the other poured fuel onto the flames? Did they toil away in equal measure, or did one shoulder the heavy lifting while the other offered occasional nudges and critiques? Unclear or undocumented contributions can sow seeds of resentment, especially when commercial success or coveted recognition beckons.

Differing Visions and Directions: Imagine two artists painting a mural, one envisioning a majestic sunset, the other a gritty cityscape. Similar conflicts erupt between joint inventors with divergent ideas for their creation's future. Should they prioritize immediate practicality or chase long-term, transformative potential? Is mass-market appeal the holy grail, or should niche brilliance be their north star? These disagreements, if not carefully navigated, can lead to creative paralysis or, worse, a Frankensteinian invention cobbled together from clashing visions.

Financial Disparity and Profit Sharing: It's all sunshine and rainbows when funding pours in and accolades abound, but let the coffers run dry or the awards be scarce, and tensions can flare. Did one inventor leverage their connections to secure resources while the other toiled in the lab? Should profits be split equally, or should contributions be meticulously weighed on a golden scale? These questions, left unanswered, can turn collaborators into adversaries, each clutching their share of a dwindling pie.

Intellectual Property Rights and Exploitation: Patents, copyrights, trademarks – these alluring acronyms dangle like carrots before inventors, and the race to claim them can be fraught with peril. Who gets to patent the invention? Can one inventor exploit the creation commercially without the other's consent? Should ownership be shared, or should one party relinquish rights for a predetermined share of the pie? These issues, if not addressed upfront, can lead to a tangled web of legal battles and bruised egos.

Communication Breakdown and Missed Expectations: Even the most meticulous collaboration plan can be torpedoed by murky communication. Did one inventor misinterpret a crucial design element? Were expectations about timelines and workloads left unspoken, only to explode later in a flurry of recriminations? Without open and honest dialogue, even the sturdiest collaborative bridges can crumble, leaving inventors stranded on separate sides of a chasm of misunderstanding.

These are just a few of the common forms of dispute that can plague the joint invention journey. However, it's important to remember that even the most acrimonious conflicts can often be resolved through clear communication, well-defined agreements, and a healthy dose of empathy and open-mindedness. After all, a successful invention is a testament to the power of collaborative creativity, and safeguarding that collaborative spirit is often the key to navigating the inevitable rough patches along the way.

4. How do we ensure respect for patent application entitlement in Vietnam?

To protect their rights and ensure that their entitlement to file a patent application is respected in Vietnam, co-inventors can take the following steps:

Agreement: Enter into a written agreement with the other co-inventors regarding ownership and the right to file a patent application. If there is no agreement or dispute arises, consult a patent attorney or IP specialist for legal advice and guidance

Patent filling: To guarantee equal ownership and rights, file a joint patent application with each co-inventor listed as a joint applicant.

Legal action: If one co-inventor files a patent application without the other's approval or agreement, the other co-inventor may use opposition or third-party observation to contest the application and request IP VIETNAM to determine who has the right to apply. The other co-inventor may contest the patent's validity if it has already been awarded to one of them by filing a request for patent invalidation at IP VIETNAM.

5. Other important issues should co-inventors take into account

Beyond the common forms of dispute, several other crucial issues deserve co-inventors attention in a patent conflict with another co-inventor:

Evidence and Burden of Proof: In most jurisdictions, the challenging co-inventor bears the burden of proving their contribution meets the legal standard for inventorship. This means gathering concrete evidence like lab notebooks, emails, sketches, witness testimonies, and any written agreements relating to inventorship or contribution. Timely documentation of contributions becomes crucial in such situations.

Legal Representation: Navigating the intricacies of patent law and litigation can be daunting. Consider seeking legal counsel specializing in intellectual property matters. Their expertise can be invaluable in understanding legal nuances, building a strong case, and protecting your rights effectively.

Alternative Dispute Resolution: Litigation is often expensive, time-consuming, and emotionally draining. Exploring alternative dispute resolution methods like mediation or arbitration can offer faster, less adversarial, and potentially more cost-effective solutions. These options may be particularly attractive if preserving the co-inventor relationship is a priority.

Confidentiality and Reputation Management: Publicly airing dirty laundry in a patent lawsuit can damage everyone's reputation, making future collaborations challenging. Maintaining confidentiality throughout the process, even when emotions run high, helps minimize unnecessary harm to personal and professional image.

Emotional Intelligence and Communication: Remember, co-inventors once shared a collaborative spirit. While asserting your rights is crucial, strive for respectful and transparent communication even in disagreement. Openness to understanding the other side's perspective and a willingness to find common ground can sometimes lead to unexpected solutions.

Long-Term Implications: Consider the future beyond the immediate dispute. Will you be able to collaborate with this co-inventor again? How will this conflict affect future inventions or projects? Weighing the long-term impact of your decisions can help navigate the present dispute with greater clarity and foresight.

Remember, every patent dispute is unique. While these additional factors offer valuable considerations, seeking appropriate legal advice and tailoring your approach to the specific circumstances of your case is crucial.

6. Interpreting agreements with foreign governing laws

Vietnam's laws allow Parties to an agreement to select which national law will govern or regulate the agreement. It is thus permissible to choose a foreign law to govern or regulate an agreement, so long as compliance with the foreign law does not conflict with the core values of Vietnamese law. "In case that an overseas law is applied, but with different understandings, the overseas law should be construed following interpretations of the authority of such an overseas country" states Article 667 of the Vietnamese Civil Code.

For co-inventors, some agreements are difficult to grasp because of some out-of-hand issues such as language, culture, etc. As such here are some issues co-inventors need to look out for:

Translation accuracy: Ensure the agreement has been translated accurately by a qualified and knowledgeable translator familiar with both languages and legal terminology. Misinterpretations due to poor translation can have significant consequences.
Cultural nuances: Be aware of potential cultural differences in legal interpretation and contract language. Certain terms or phrases might have different meanings in different legal systems.

7. Conclusion

While navigating joint invention partnerships can have its challenges, a proactive approach, clear communication, and a commitment to shared goals can pave the way for successful collaboration and groundbreaking innovation. By understanding common points of conflict and equipping ourselves with tools for effective communication and dispute resolution, we can ensure that the creative spark of joint invention shines brightly, unhindered by misunderstandings.

If you need further explanation on this subject, please don't hesitate to contact us through email at dung@luatminhkhue.vn or phone number: +84986 386 648. Lawyer To Thi Phuong Dzung.