Design Registration in Vietnam

TYPES OF DESIGNS:

• Industrial Design: An industrial design means a specific appearance of a product embodied by three-dimensional configurations, lines, colors, or a combination of these elements.
• Layout-Design: A layout-design of semiconductor integrated circuit (hereinafter referred to as layout-design) means a three-dimensional disposition of circuit elements and their interconnections in a Semi-conductor integrated circuit.

PROCEDURE FOR DESIGN REGISTRATION:

Step 1: Filing:

• Who may apply: Article 86 and 89:
• Authors who have created inventions with their own efforts and expenses
• Organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring unless otherwise agreed by the involved parties.
• Foreign nationals residing permanently
• Foreign organizations having a production or trading establishment
• Non-resident foreign nationals or organizations not having a production or trading establishment shall apply through a lawful representative.
• Documents required: Section 100
• Declaration for registration in the prescribed form
• Documents, samples and information identifying the invention
• Power of attorney (if applied through representative)
• Documents evidencing the registration right if such right is acquired by another person
• Documents evidencing the priority right, if it is claimed
• Vouchers of payment of fees and charges
• A copy of the first application certified by the registration office
• Requirements of application:
• Documents identifying an industrial design registered for protection
• Description and a set of photos or drawings of such industrial design.
• The description must consist of a section of description and a scope of protection of such industrial design.
• The section of description of an industrial design must satisfy the following conditions:
• Fully disclosing all features expressing the nature of the industrial design and clearly identifying features which are new, different from the least different known industrial design, and consistent with the set of photos or drawings.
• Where the industrial design registration application consists of variants, the section of description must fully show these variants and clearly identify distinctions between the principal variant and other variants.
• Where the industrial design stated in the registration application is that of a set of products, the section of description must fully show features of each product of the set.
• The scope of protection must clearly define features which need to be protected, including features which are new and different from similar known industrial designs.
• The set of photos and drawings must fully define features of the industrial design.
• Filing Date: Article 108:
• All applications shall be received by the State administrative authority.
• The filing date shall be the one on which the application is received by the state administrative authority.
• First to file: Article 90:
• Where two or more applications are filed by several people to register industrial designs identical with or insignificantly different from each other, protection may only be granted to the valid application with the earliest date of priority or filing date among the applications that satisfy all the requirements.
• Filing fees:
• Filed in paper form without digital database of the whole content of the application: 180 thousand VND.
• Filed in paper form with digital database of the whole content of the application: 150 thousand VND.
• Filed online: 100 thousand VND.

Step 2: Examination:

• The application shall be examined within 1 month from the filing date (Article 119).
• Formal Examination: Article 109:
• To verify the formal validity of the application, an examination process shall be conducted.
• Substantive Examination: Article 119:
• 6 months from the date of publication of the application. If a request for substantive examination is filed before the date of application publication, or from the date of receipt of a request for substantive examination if such request is filed after the date of application publication
• Invalidity in the following circumstances:
• The applicant does not fulfil the requirements of formality;
• The subject matter of the application is not eligible for protection;
• The applicant does not have the right to registration;
• The application was filed in contrary to the mode of filing;
• The applicant fails to pay the fees and charges.

Step 3: Acceptance/ Refusal:

• The application for registration may be accepted with or without amendments.
• Until the notice of refusal by the State administrative authority, the applicant shall have the following rights:
• To make amendment or supplement to the application;
• To divide the application;
• To request for recording changes in name or address of the applicant;
• To request for recording changes in the applicant as a result of assignment under the contract, as a result of inheritance, bequest, or under a decision of an authority;
• Any amendment or supplement to an industrial property registration application must not expand the scope of the subject matter disclosed or specified in the application and must not change the substance of the subject matter claimed for registration in the application and shall ensure the unity of the application.
• Fee for amending applications, including for request of supplement, separation, assignment, change (per each amendment/ application): 120 thousand VND.
• Refusal: Article 117:

Refusal to register an application may be on the following grounds:

• The subject matter claimed in the application does not fulfil the protection requirements;
• The application satisfies all the conditions for the issue of a protection title but is not the application with the earliest filing date or priority date as in the case referred to in Article 90.1 of this Law.
• The application falls within the cases referred to in Article 90.1 of this Law but a consensus of all the applicants is not reached.
• The State administrative authority shall serve a notice of an intended refusal to grant a Protection Title, in which the reasons are clearly stated with a set time limit for the applicant to oppose to such intended refusal.
• The State administrative authority shall serve a notice of the refusal to grant a Protection Title if the applicant has no objection or has unjustifiable objection to such intended refusal.

Step 4: Publication:

• Article 110: An industrial property registration application which has been accepted as being valid by the State administrative authority shall be published in the Industrial Property Official Gazette.
• An industrial design registration application shall be published within 2 months as from the filing date or the priority date, as applicable, or at an earlier time at the request of the applicant.
• Principal information on a layout-design registration application and the protection title for a layout design shall be published within 2 months as from the grant date of such protection title.
• Fee for publication of application, including application for amendment, supplement, separation, assignment (each application): 120 thousand VND.
• The application for registration shall be examined as to its substance within 6 months from the date of its publication.
• Charge for substantive examination of application (for each alternative) – without information searching charge: 300 thousand VND.
• Additional charge for internationally classifying of industrial design (each class: 100 thousand VND.

Step 5: Protection Title:

• Article 93 stipulates the validity of the protection titles:
• It is valid throughout the territory of Vietnam.
• The registration of Designs shall be valid up to 5 years from the date of filing. Their validity commences on the date of grant of protection. It may be renewed for two consecutive terms of 5 years each.
• Certificates of registered semiconductor integrated circuit layout-designs shall each have a validity starting from the grant date and expiring at the earliest date among the following:
• The end of 10 years after the filing date.
• The end of 10 years after the date the layout-designs were first commercially exploited anywhere in the world by persons having the registration right or their licensees.
• The end of 15 years after the date of creation of the layout-designs.
• Rights accruing after registration: Article 122 and 123:
• Moral Rights:
• To be named as authors in industrial designs or layout designs.
• To be acknowledged as authors in documents in which industrial designs or layout designs are published or introduced.
• Economic rights:
• Owners of industrial designs or layout designs are obliged to pay remuneration to their authors, unless otherwise agreed by the parties.
• Minimum level of remuneration:
• 10% of the profit amount gained from the use of industrial designs or layout designs.
• 15% of the total amount received by the owner in each payment for licensing of an industrial design or layout design.
• To use or permit others to use the industrial property object in accordance with Article 124 and Chapter X of the law (Transfer of rights: Assignment and Licensing):
• Use of an industrial design means the performance of the following acts:
• Manufacturing products with appearance embodying the protected industrial design.
• Circulating, advertising, offering and stocking for circulation products mentioned
• Importing products mentioned a
• Use of a layout-design means the performance of the following acts:
• Reproducing the layout-design; manufacturing semi-conductor integrated circuits under the protected layout-design.
• Selling, leasing, advertising, offering or stocking copies of the protected layout-design, semiconductor integrated circuits manufactured under the protected layout-design or articles containing such semi-conductor integrated
• Importing copies of the protected layout-design, semi-conductor integrated circuits manufactured under the protected layout-design or articles containing such semi-conductor integrated circuits.
• To prohibit others from using the industrial property object in accordance with Article 125 (Right to prohibit others from using industrial property objects).
• To dispose of the industrial property object in accordance with Chapter X of this Law (Transfer of rights: Assignment and Licensing).