MANY CHANGES IN PROCEDURES AND DOSSIERS FOR REGISTRATION OF INDUSTRIAL PROPERTY RIGHTS

On August 23, 2023, the Government issued Decree No. 65/2023/ND-CP (“Decree 65”) to detail a number of articles and measures to implement the Intellectual Property Law (“Decree 65”) on industrial property, protection of industrial property rights, rights to plant varieties and state management of intellectual property. This Decree replaces Decree No. 103/2006/ND-CP and part of Decree No. 105/2006/ND-CP (amended and supplemented). The following are some notable contents in Decree 65:

1. Change and supplement new registration forms and declarations

Decree 65 has replaced all declaration forms for the registration of inventions, trademarks, industrial designs, integrated circuit layout designs, geographical indications and integrated declaration instructions in Appendix I, II, and IV. Among them, audio trademarks, a type of non-traditional trademark that is protected as a trademark for the first time under the Intelectual Property Law 2022, have been updated in the trademark declaration form.

In addition, the Decree also introduces new forms: "Application for confirmation of delayed registration of initial circulation of pharmaceuticals" and " Declaration requesting compensation due to delay in granting initial marketing authorization for pharmaceutical products manufactured under a patent " is used in cases where the patent owner requests a competent state agency to consider compensation for the delay in granting a marketing license for the regulated pharmaceutical product which are defined in Article 131a of the 2022 Intellectual Property Law.

2. Simplify procedures for amending and supplementing intellectual property (“IP”) registration applications

Decree 65 provides a new mechanism for amending and supplementing intellectual property registration applications before the state management agency on intellectual property rights accepts or refuses to accept valid applications. Accordingly, the applicant can exercise the right to request the above amendment in writing without submitting the amended Declaration as before only if the time of request is before the application is validly accepted or refused. Validly receive or amend or supplement the application based on the notice of the National Office of Intellectual Property. This mechanism contributes to simplifying the process of amending and supplementing industrial property registration applications. Applicants can be more proactive and save costs and time if they promptly implement amendments and supplements before receiving approval or refusal from the competent state agency.

3. Separate the application for registration of intellectual property rights

According to Article 17 of Decree 65, the applicant has the right to request separation of the intellectual property registration application before a decision on formality or substantive examination is made in the following cases:

• Separate one or several technical solutions in the patent application;
• Separate one or several industrial designs in the industrial design registration application;
• Separate one or part of the list of goods and services in the trademark registration application;

When carrying out the procedure for splitting an intellectual property registration application, the applicant must submit an explanation of the subject matter requested for protection and the content of changes compared to the original application.

4. Withdrawal of application for establishment of intellectual property rights

Clause 2, Article 17 of Decree 65 clearly states the principles, steps and requirements for withdrawing intellectual property registration applications. In particular, the new decree has added regulations that the National Office of Intellectual Property must issue a notice of intention to refuse to accept withdrawal of application in case the request to withdraw application does not meet the conditions for the applicant to remedy at the request. This additional regulation creates a corridor for applicants to correct shortcomings, if any, during the process of withdrawing the application.

5. The form of the protection title is given priority in electronic form

Decree 65 supplements regulations on the grant of exclusive protection titles in electronic or paper form. For applications for registration of establishment of the right to be filed from August 23, 2023 (effective date), the provisions of this Decree must apply, according to which a paper exclusive protection title can only be granted within a period of time. in case the applicant has integrated and selected such request in the invention registration declaration according to the new form (specified in Article 29.1 of Decree 65/2023/ND-CP).

This regulation is related and consistent with the content of the Law on Electronic Transactions 2023, serving the goal of implementing the entire administrative procedure. Accordingly, administrative procedures will be carried out online from the first step to receiving results in electronic form. However, the regulations still allow the applicant to choose to grant a protection title in paper form to meet the wishes of organizations and individuals with special needs.

6. Supplementing conditions for amending the “mark sample” on the Certificate of Trademark Registration

Previously, according to the provisions of Point 20.1(b) of Circular 01/2007/TT-BKHCN, the owner of a protection certificate could request to amend some details but not significantly change the trademark sample recorded in the document. Decree 65 supplements the case where a request to amend the trademark sample on the Trademark Registration Certificate is accepted if the following two conditions are met:

1. Remove only small details that are excluded (not separately protected) and
2. Does not change the distinctiveness of the mark.

This regulation allows trademark owners to proactively and flexibly modify the registered "trademark sample", while still ensuring that these changes are within defined limits and do not cause disturbance to registration information.

7. Adding detailed regulations on conditions restricting the transfer of rights to trademarks

According to the new provisions in Article 60 of Decree 65, the transfer of a trademark will not be accepted if the trademark is:

1. Identical or confusingly similar to a trademark owned by the assignor;
2. There is a part of goods or services similar to the part of goods and services owned by the transferor and the use of the transferred mark is likely to cause confusion about the commercial origin of the goods or services; or
3. Containing signs that make consumers confuse or misunderstand the origin, quality and value of goods or services.

8. Additional procedures related to confidential inventions

Confidential invention is a new concept introduced for the first time in the Intellectual Property Law 2022. Confidential invention "is an invention that is determined by a competent state agency to be a state secret according to the law on protection of secrets." state secret". Compared with normal procedures, regulations on procedures related to confidential inventions have the following differences:

• Requirements for Confidential Patent Applications to be filed in paper form (not electronic form),
• Documents to be provided, application processing procedures, time limit for appraisal of the content of a confidential patent application shall not exceed 18 months,
• The Department of Intellectual Property can coordinate with the Ministry of Public Security to verify the novelty of the invention and can request the applicant to determine whether the invention is a state secret or not (reaction period recovery is 03 months).
• Complaint procedures are not applied to decisions and notices on confidential patent applications and other types of applications related to confidential inventions.
• Do not publish confidential patent applications and confidential patent protection certificates.

Decree 65 takes effect from August 23, 2023.