Circular 23/2023/TT-BKHCN guiding Vietnam Intellectual Property Law

On November 30, 2023, the Ministry of Science and Technology issued Circular 23/2023/TT-BKHCN detailing several articles of the Intellectual Property Law and measures to implement Decree 65/2023/ND-CP dated August 23, 2023 of the Government detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, and rights to plant varieties and state management of intellectual property related to procedures for establishing industrial property rights and ensuring industrial property information.

Basic information of Circular 23/2023/TT-BKHCN guiding Vietnam Intellectual Property Law

Number: 23/2023/TT-BKHCN

Date of issue: November 30, 2023

Effective start date: November 30, 2023

Document type: Circular

Issuing agency: Ministry of Science and Technology

Signed by: Deputy Minister Bui The Duy

Noteworthy information of Circular 23/2023/TT-BKHCN

Circular 23/2023/TT-BKHCN has replaced the contents specified in Circular 01/2007/TT-BKHCN (amended and supplemented from time to time) to meet the newly updated requirements in the Law Intellectual property amended in 2022 concurrently with Decree 65/2023/ND-CP. The regulations in the Circular are the basis for direct enforcement by state management agencies in the field of industrial property protection. Some important new contents to note in Circular 23/2023/TT-BKHCN compared to old Circular 01/2007/TT-BKHCN are shown in the following points:

Scope of regulation and subjects of application of the circular

Circular 23/2023/TT-BKHCN detailing several articles of the Intellectual Property Law and measures to implement the provisions of Decree 65/2023/ND-CP dated August 23, 2023, of the Government regulates in detail several articles and enforcement measures of the Law on Intellectual Property and Industrial Property, protection of industrial property rights, rights to plant varieties and state management of related intellectual property related to procedures for establishing industrial property rights and ensuring industrial property information.

The subjects of application of this Circular include organizations and individuals carrying out registration procedures, complaint procedures, and complaint resolution in activities of establishing industrial property rights and ensuring public property information businesses and other relevant organizations and individuals.

Cases of invalidation of protection titles

Circular 23/2023/TT-BKHCN details specific cases where a patent protection title is invalidated because the patented invention exceeds the scope disclosed in the original description according to the provisions of point dd, Article 96.2 of the Intellectual Property Law and the trademark protection title are invalidated because the applicant registered the trademark with bad intentions according to regulations new at point a, Article 96.1 of the Intellectual Property Law as amended in 2022.

For patent protection titles that are invalidated because the invention for which the protection title is granted exceeds the scope disclosed in the original description of the patent application according to the provisions of Point dd, Article 96.2 of Intellectual Property Law in cases where compared to the original description and for people with average knowledge of the respective technical field, the patent description has a change in content and this change appears as information that does not originate directly and clearly from the original description of the application, specifically as follows:

• During the process of amending and supplementing the application, the applicant includes in the description technical signs or technical signs that cannot be directly and determined from the original description;
• Amending information that cannot be directly and identified from the original description and/or claims to disclose the invention or fully disclose the claims;
• Additional content to the description is technical signs related to dimensional parameters obtained by measuring dimensional parameters on the drawings;
• Including a detailed description or additional ingredient not mentioned in the original application description that results in special effects and/or effects not included in the original application;
• Amending to the description those effects and/or effects (benefits) that cannot be determined by a person with average knowledge of the relevant technical field from the original application;
• Change the technical features of the claim where the changed technical features are not disclosed or not directly identified from the original description;
• Introduce new content by changing undefined content to definite;
• Combining separate technical signs of the original application into a new technical sign while the relationship between these technical signs is not disclosed in the original application;
• Change one or more technical signs in the description to make the technical signs different from the technical signs stated in the original description;
• Removal of a technical sign from the claim that this technical sign is necessary for the object sought to be protected to achieve the proposed purpose and/or removal of this technical sign causes a change in the technical sign or other technical sign(s).

A trademark protection title is invalidated due to the applicant registering a trademark with “bad faith” as prescribed in Point a, Clause 1, Article 96 of the Intellectual Property Law in the following cases:

• There is a basis to believe that, at the time of applying, the applicant knew or had a basis to know that the mark he was registering was identical or similar to the point of being difficult to distinguish from a mark that is widely used in Vietnam or well-known trademarks in other countries for identical or similar goods or services; and
• This registration is intended to take advantage of the reputation and prestige of that mark to profit; or primarily for reselling, licensing, or transferring registration rights to the holder of the trademarks mentioned in Point a of this Clause; or aims to prevent the ability of persons with trademarks mentioned in Point a of this Clause to enter the market to limit competition; or other acts contrary to fair trade practices.

Handling oppositions to industrial property registration applications

In case of objections to the industrial registration application submitted by the provisions of Article 112a of the Intellectual Property Law and meeting the requirements prescribed in Clause 9 of this Article, the National Office of Intellectual Property shall receive and notify oppositions to the applicant, which sets 02 months from the date of notification for the applicant to respond in writing.

In case the trademark and goods or services in the opposed registration application are identical to the trademark, goods, and services proposed by the opposing party or there is a clear basis to conclude whether the opposing trademark is confusingly similar or not, goods or service raised by the opposing party, the National Office of Intellectual Property will handle the objection during the process of substantive examination of the application. Then, the National Office of Intellectual Property will notify the objector of the results of handling objections along with the results of substantive examination of the corresponding application.

After receiving opposition from the applicant within the time limit specified in Clause 1 of this Article, if deemed necessary, the National Office of Intellectual Property shall notify the respond to objector and set 02 months from the date of notification for the objector to respond in writing.

Note, that opposition to industrial property registration applications must be made in Vietnamese. Documents accompanying objections may be made in another language but must be translated into Vietnamese upon request.

Use the foreign results of substantive examination of patent registration

Circular 23/2023/TT-BKHCN stipulates several cases where the results of substantive examination of patent registration of foreign patent offices can be used as the National Office of Intellectual Property can refer to during the substantive examination of a patent application or the applicant can request the National Office of Intellectual Property to use the results of substantive examination of a patent application filed abroad to assess the possibility of protection if they meet certain legal conditions.

Above is an article introducing notable new points of Circular 23/2023/TT-BKHCN guiding Vietnam Intellectual Property Law. Clients who need to register for the protection of trademarks, inventions, industrial designs, or need advice on legal issues related to intellectual property protection, Please contact Viet An law firm for the most effective support.