Re-examination of industrial property application

With the advent of the revised Intellectual Property Law in 2022, Decree 65/2023/ND-CP, contents related to establishing industrial property rights protection with many regulations are amended and supplemented. Supplements have been specifically guided in Circular 23/2023/TT-BKHCN issued by the Minister of Science and Technology on November 30, 2023. Among the general regulations on processing applications for registration of industrial property rights, Article 13 of the Circular has provisions on the re-examination of industrial property applications. In the following article, Viet An Law will explain more clearly the content of the newest updated regulation.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree 65/2023/ND-CP provides detailed regulations on industrial property, protection of industrial property rights, and management of plant varieties.
• Circular 23/2023/TT-BKHCN detailing several articles of the Intellectual Property Law and measures to implement Decree No. 65/2023/ND-CP;
• Circular 01/2007/TT-BKHCN details and guides the implementation of several articles of the Intellectual Property Law on industrial property, as amended and supplemented from time to time.
• Circular 263/2016/TT-BTC regulates the rates, collection, payment, management, and use of industrial property fees.

Cases requiring re-examination of industrial property applications

The re-examination of an application usually takes place after a notice of examination of the application’s content has been issued and in some other special cases. Compared to the regulations on re-examination in Article 16 of Circular 01/2007/TT-BKHCN, Circular 23/2023/TT-BKHCN stipulates additional cases that require re-examination in addition to the two following basic cases:

• There are opinions opposing the results of substantive examination (Article 117.4 of the Law 2005, now abolished and replaced by Article 118.2 of the Intellectual Property Law, as amended 2022); and
• There is a request to narrow the scope of protection titles (Article 97.3 of the Intellectual Property Law)

The guiding regulations in the newly issued Circular are consistent with the amendments in the revised Intellectual Property Law 2022 and Decree 65/2023/ND-CP. Accordingly, re-examination of industrial property registration applications is carried out by the National Office of Intellectual Property in the following cases:

First, there are objections to the results of substantive examination

According to Article 13 of Circular 23/2023/TT-BKHCN, the application will be re-examined due to objections after notification of the results of the substantive examination when the following conditions are satisfied:

• There is a written opinion of the applicant submitted to the National Office of Intellectual Property (NOIP) in the period from the date of notification of substantive examination results to before the date of decision to grant or refuse to grant the relevant protection title; or there is a written opinion of a third person objecting to the intention to grant a protection title in the notice of substantive examination results along with plausible evidence proving that due to force majeure events or objective obstacles, they cannot object to the application within the time limit prescribed in Article 112a (Opposition to industrial property registration applications) of the Intellectual Property Law;
• The above opinions have a valid basis, accompanied by evidence or indications of reliable sources of information;
• The arguments and evidence to prove the above opinions must be different from the arguments and evidence (if any) that were given in the previous period or, although those arguments and evidence are the same, they have not been approved by the NOIP. Intellectual review according to the provisions of Clauses 1, 2, and 3, Article 11 (Handling objections to industrial property registration applications) of Circular 23/2023/TT-BKHCN.

Second, there is a request to amend and supplement the application

Time: Re-examination of the application is carried out when there is a request to amend or supplement the application after notification of the results of the substantive examination, which states the intention to grant a protection title.

According to the provisions of Point c, Clause 3, Article 16 of Decree No. 65/2023/ND-CP, requests to amend and supplement applications will be re-examined when the following contents are present:

• Amending information related to the nature of the industrial property object stated in the application, including : (i) Patent: description ; (ii) Industrial design: description, set of photos, drawings; (iii) Trademark: trademark sample, list of goods and services bearing the mark, regulations on using collective marks, regulations on using certification marks; (iv) Geographical indication: a description of the specific characteristics of the product bearing the geographical indication and the geographical area corresponding to the geographical indication;
• Change the applicant of trademark registration;

Due to the case requiring re-examination, the person requesting the amendment must pay the re-examination fee (550,000 VND) according to regulations when submitting the request for amendment.

Third, there is a requirement to record a change in applicant due to application transfer

• Re-examination due to a request to record a change of applicant due to the transfer of a trademark application filed after notification of the results of the substantive examination to grant a protection title as prescribed in Point c, Clause 2 Article 18 of Decree No. 65/2023/ND-CP.
• Requests to record changes due to transfer of applications are handled as requests to amend and supplement applications according to the provisions of Article 16 of Decree 65/2023/ND-CP.
• After re-examination, the application must have its transfer content announced according to regulations. Therefore, the person requesting to amend the application due to transfer must pay state fees according to regulations, including:
  • Application examination fee is 550,000 VND.
  • Announcement fee is 120,000 VND.

Fourth, there is a request to narrow the scope of industrial property rights protection

Re-examination of the application at the request of the protection title holder:

• Edit industrial property description; or
• Narrowing the scope of industrial property rights protection.

These requirements are implemented according to the regulations on amending protection titles at Point b, Clause 1, and Clause 3, Article 97 of the Intellectual Property Law;

Fifth, there is a request to invalidate the protection certificate

Re-examination of the application due to a request to invalidate the protection title according to the provisions of Point a, Clause 3, Article 32 (Termination and invalidation of protection titles) of Decree No. 65/2023/ND-CP ;

Sixth, there are complaints about decisions

Re-examine the application due to complaints about decisions and notices related to the application according to the provisions of Clause 4 and Point b, Clause 6, Article 38 of Circular 23/2023/TT-BKHCN.

The time limit for re-examined the application

According to the provisions of Clause 3, Article 119 of the Intellectual Property Law, specifically as follows:

• Patent: no more than 12 months;
• Trademarks: no more than 06 months;
• Industrial designs: no more than 4 months and 20 days;
• Geographical indications: no more than 04 months.

For complicated cases with many details that need to be verified or expert opinions need to be sought, the re-examination time limit may be extended but must not exceed the time limit for the first examination as prescribed in Article 119.2 of the Intellectual Property Law.

Basically, this deadline has no changes compared to the old regulations in Circular 01/2007/TT-BKHCN.

Content and number of re-examinations

According to the corresponding regulations in Article 12.2 of Circular 23/2023/TT-BKHCN, the contents that must be re-examined include:

• Examine the compatibility of the subject matter stated in the application with the type of protection title requested to be granted;
• Examine the object according to each protection condition;
• Check the first-to-file rule.

For each case of re-examination, the re-examination of the application is carried out only once for the applicant and each third person.

Procedures for re-examination of industrial property registration applications

This is a new specific regulation mentioned in Circular 23/2023/TT-BKHCN. As a general rule, the re-examination procedure is carried out sequentially following the steps of the substantive examination procedure for inventions in Clause 8, Article 16, industrial designs in Clause 10, Article 23, and trademarks in Clause 13. Article 26 and geographical indications in Clause 7, Article 30 of Circular 23/2023/TT-BKHCN.

However, cases of re-examination due to a request to invalidate a protection title or a complaint about decisions or notices related to the application shall comply with the following regulations:

Regarding requests to invalidate protection titles

Applications for termination or invalidation of protection titles are handled by the provisions of Article 95 (Termination of protection titles), Article 96 (Cancellation of protection titles), Clause 3 of Article 220 (Transitional provisions) of the Intellectual Property Law, guided in Article 32 of Decree No. 65/2023/ND-CP.

For complaints about decisions and notices related to applications

• Procedures for re-examination are carried out according to Clause 4 and Point b, Clause 6, Article 38 of Circular 23/2023/TT-BKHCN, re-examination is carried out during the process of resolving complaints.
• In case the complainant is not the applicant or the person requesting the establishment of industrial property rights or the registration of an industrial property transfer contract that is the subject of the decision, the complaint notice provides the status of the complaint. New details may affect the conclusion of complaint settlement, the National Office of Intellectual Property shall re-examine the content related to the new details according to the procedure for re-evaluating the application for registration to establish ownership rights. industry according to the general rules mentioned above.
• Based on that examination result, the person competent to resolve the first-time complaint shall issue a decision to resolve the complaint, which must contain the contents specified in Clause 2, Article 31 of the Law on Complaints.

Above are the current regulations related to re-examination of industrial property registration applications. If you need advice on procedures related to amendments, responses, or complaints about industrial property registration applications, please contact the Industrial Property Representative – Viet An Law Firm for support. the most effective.