Decree No. 65/2023/ND-CP guiding the implementation of the Intellectual Property Law on industrial property

In order to quickly guide the implementation of new regulations on industrial property in the revised Intellectual Property Law in 2022, the Government issued Decree No. 65/2023/ND-CP dated August 23, 2023, according to the abbreviated and the text takes effect on the date of issue. Decree 65/2023/ND-CP has detailed a number of articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and management of industrial property. state on intellectual property. The Decree has come into effect with many new updates, most importantly, it has changed a series of forms related to industrial property protection in Vietnam today.

Full text of Decree 65/2023/ND-CP

Overview of new points of Decree 65/2023/ND-CP

The birth of Decree 65/2023/ND-CP has simultaneously replaced the provisions on industrial property in the old Decrees guiding the enforcement of industrial property rights that have existed since the 2005 Intellectual Property Law was born, including:

• The entire Decree No. 103/2006/ND-CP guiding the Law on Intellectual Property on industrial property took effect on the date, amended and supplemented by Decree No. 122/2010/ND-CP.
• Part of Decree 105/2006/ND-CP guiding the Law on Intellectual Property on the protection of intellectual property rights and state management of intellectual property, as amended and supplemented by Decree 119/2010/ND-CP, Decree 154/2018/ND-CP and Decree 17/2023/ND-CP.

In addition, a number of contents about the procedures for establishing industrial property rights protection were previously guided in Circular 01/2007/TT-BKHCN (amended and supplemented from time to time), and all contents of Circular No. The content of Circular 01/2008/TT-BKHCN related to the management of industrial property assessor’s cards has now been integrated into the same document of Decree 65/2023/ND-CP to create uniformity. highest in practice. For that reason, the provisions of Decree 65/2023/ND-CP are considered to be quite bulky when compared to the previous Decree.

Contents of important new points of Decree 65/2023/ND-CP

Procedures for establishing protection of industrial property rights

Decree 65/2023/ND-CP has replaced all declaration forms for the registration of inventions, trademarks, industrial designs, layout designs of integrated circuits and geographical indications. At the same time, the declaration instructions previously prescribed in Circular 01/2007/TT-BKHCN have now been integrated into the Appendix of the new Decree.

The current centralized regulation not only creates favorable conditions for the subjects to enforce industrial property rights protection in practice but also helps the law to come into practice quickly, avoiding wasting time and money. efforts in promulgating legal documents guiding the implementation and streamlining of the legal document system in the field of intellectual property.

Procedure and scope of security control for inventions

As specified in Article 14 and Appendix VII of the Decree, these regulations have specified the requirements for security control for foreign registration of a number of specific industrial property objects. This requirement has just been added in Article 89a of the revised Intellectual Property Law 2022 to meet the process set out for a new type of invention regulated related to state secrets – confidential inventions.

Procedures for amending and supplementing an application for registration of establishment of industrial property rights

The new Decree stipulates that the applicant has the right to request the amendment of some additional information in the application such as the applicant’s country code, the address of the author (if any), the modification of the industrial property representative (as provided for in 16.1(b) of the Decree).

However, according to Article 16 of the Decree, it should be noted:

• The applicant may exercise the right to request the above amendment in writing without submitting the previous Declaration of Amendment only if the time of the request is before the application is duly accepted or has been rejected as valid. or amend and supplement the application on the basis of the notice of the National Office of Intellectual Property.
• In case the applicant changes the name, author’s nationality, name, and address of the organization, the applicant must submit supporting documents. These documents are regulated in the same way as in the case of patent amendments.
• In the case of a change of representation, the applicant must submit a change of representation statement.
• The applicant must submit: (i) an amended request assessment fee, and (ii) an amended or supplemented information disclosure fee as prescribed on a case-by-case basis.

Split industrial property application

According to Article 17 of Decree 65/2023/ND-CP, an applicant has the right to request separation of an industrial property registration application before a decision on formal examination or substantive examination is issued. However, splitting an application into one or more new applications (split applications) is only accepted in the following cases:

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

When carrying out the procedure for separating an industrial property registration application, the applicant must submit an explanation of the object of protection and the content of changes compared to the original application.

Withdrawal of industrial property registration application

The new Decree has supplemented the provision that the NOIP must issue a notice of its intention to refuse to accept the withdrawal of an application in case the request for application withdrawal does not meet the conditions for the applicant to remedy in Article 17.2.

Regulations on the form of protection titles

Simultaneously with the amendments in the registration form, Decree 65/2023/ND-CP has added provisions on the granting of protection title in electronic form or in 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 in case the applicant has integrated and selected such a request in the invention registration declaration according to the new form (specified in Article 29.1 of Decree 65/2023/ND-CP).

Amendment of industrial property protection title

According to Article 29.3 of Decree 65/2023/ND-CP, supplemented with Point 20.1(b) of Circular 01/2007/TT-BKHCN on cases requiring modification of the protection certificate, the request to amend the trademark sample on the Trademark Registration Certificate is also accepted if the following conditions are met: (i) only minor details are excluded (without separate protection) and (ii) do not alter the distinguishability of the mark.

The removal of one or several basic styling features of an industrial design is no longer acceptable for narrowing the scope of protection.

The applicant requesting the narrowing of the scope of protection must pay the fee for examination for narrowing the scope of protection, the registration fee, and the fee for publication the decision to amend the protection diploma.

In case of registration of a contract for the assignment or transfer of a use right, the re-issuance or grant of a duplicate of the Certificate of registration of an industrial property object license contract shall be applied similarly to the procedures for re-issuance or grant of an industrial property object. copy of the title of protection of the above subjects.

Additional regulations on international registration

Procedures related to international registration of industrial designs under the Hague Agreement originating in Vietnam and designating Vietnam are prescribed from Articles 22 to 24 of Decree 65/2023/ND-CP in order to concretize the validity of the protection title in this case specified in Article 93 of the Law on Intellectual Property as amended in 2022.

Requests for a Madrid application of Vietnamese origin that have been granted an international registration number can be made directly with the International Bureau or through the National Office of Intellectual Property and stipulates the documents to be submitted if The option of filing through the National Office of Intellectual Property is also integrated in Article 26.3 of Decree 65/2023/ND-CP to concretize the above provisions.

Patent applications under the PCT are also provided for separately in Section 2 of Chapter 1 (Establishment of Industrial Property Rights), followed by the provisions of the Hague application in Section 3 and the Madrid application in Section 4. Continuing this provision helps enforcers easily follow when researching legal bases to apply in case they want to register for protection in many parts of the world at the same time with the application in water.

Procedures related to confidential invention

The regulation of confidential inventions is a new concept that was first recognized in the revised Intellectual Property Law in 2022. According to Clause 12a, Article 4 of the newly added Intellectual Property Law, confidential inventions are inventions. determined by a competent state agency as a state secret according to the law on the protection of state secrets.

Given the importance of confidential inventions related to state secrets, the revised Law on Intellectual Property of 2022 has added detailed regulations on security control for inventions before filing for registration. signed abroad. Accordingly, before being filed abroad, confidential inventions must meet the requirements of security control, which means that they must satisfy the same time strict factors as prescribed in Article 89a of the revised Intellectual Property Law 2022.

However, the Law does not specifically regulate the registration of confidential inventions. When Decree 65/2023/ND-CP was released, the registration mechanism for this type of invention was completed to fill this gap.

Procedures related to confidential inventions are specified in Articles 48 to 52 of Decree 65/2023/ND-CP. Accordingly, compared with the normal patent registration procedure, the new and different points of the confidential patent registration procedure include:

• Application form: must be in paper form, not electronic form.
• Accompanying documents: to meet the requirements of security control for confidential inventions according to regulations.
• Time limit for substantive examination: no more than 18 months from the date of valid acceptance of the application or from the date of receipt of the request for substantive examination, whichever comes first.
• The third-party opinion document is enhanced in importance, the NOIP may coordinate with the Ministry of Public Security to verify the novelty of the invention and may request the identification of the applicant to redefine the invention. whether the mechanism is classified as a state secret or not (the response time is 03 months).
• The complaint procedure under Article 119a of the Intellectual Property Law does not apply to confidential patent registration.
• Do not publish confidential patent applications in the Official Gazette.

Procedures for registering confidential inventions abroad and managing and using this type of invention in practice are also carried out in accordance with the law on the protection of state secrets, not being made public like ordinary inventions.

Above are some new points of Decree 65/2023/ND-CP to inform you. Industrial Property Representative – Viet An Law Firm is ready to provide services related to industrial property registration to support you, please contact us to get the best advice.