Examination stages of industrial design registration in Vietnam

Industrial design is an object of industrial property rights. According to the provisions of the Intellectual Property Law, industrial designs are protected in the form of industrial design patents if they meet the following conditions: are new, have a level of creativity; capable of industrial application. However, before being granted an industrial design patent, customers need to submit an industrial design application and go through examination stages from the Intellectual Property Office. So what are the detailed examination stages of industrial design registration in Vietnam?

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2022.
• Decree 65/2023/ND-CP provides detailed regulations on industrial property, protection of industrial property rights, and management of plant varieties.

What is an industrial design in Vietnam?

Industrial design is the external appearance of a product expressed by shapes, lines, colors, or a combination of these elements.

Industrial designs are exclusively protected in the form of an industrial design protection title.

What is the form of industrial design registration?

Industrial design registration can be done in one of the following forms:

• Submit an application directly to the Intellectual Property Department;
• Register through the Intellectual Property Representative Organization. This is a mandatory method for industrial design applicants with foreign nationality.
• For industrial design applicants with Vietnamese nationality, filing through an Intellectual Property Representative Organization such as Viet An Law Firm is also encouraged. Industrial design registration dossiers are very specialized and require specialized intellectual property lawyers to provide specific guidance and advice, and the faster they are registered, the better the benefits and priority rights.

Examination stages of industrial design registration in Vietnam

Stage 1: Examination of formality

1. The concept

Formal examination is checking the compliance with formal regulations for an application, thereby drawing a conclusion that the application is valid or invalid.

2. The examination time

Normally, the formality examination time is 1 month from the date of filing the industrial design registration application.

3. The examination content

During this period, the National Office of Intellectual Property will check compliance with formal regulations for the application:

• Check whether the documents included in the application satisfy the provisions of the Intellectual Property Law and documents guiding its implementation;
• Check whether the documents included in the application are submitted within the time limit prescribed by the Intellectual Property Law and documents guiding its implementation;
• Preliminary check of the content of documents included in the application;
• Check to see whether the applicant has paid fees and charges and whether the amount of fees and charges is in accordance with the provisions of the Intellectual Property Law and documents guiding its implementation.

4. The examination results

For valid applications:

• A registration application accepted as valid is published in the Industrial Property Official Gazette within the 19th month from the priority date or the filing date if the application does not have a priority date, or within 02 months from the date of registration accepted as valid application, whichever is later.
• The content of publication of the industrial design registration application is information related to the valid application recorded in the notice of acceptance of the valid application, a set of photos, or industrial design drawings (if any).

For invalid applications:

• In case the application is invalid, the National Office of Intellectual Property shall issue a notice of intention to refuse to accept the application, clearly stating the reasons and shortcomings that cause the application to be refused acceptance and setting a time limit of 2 months to accept the application. The applicant has comments or corrects errors. If the applicant does not correct the errors/corrects the errors unsatisfactorily/has no objections/unreasonable objections, the National Office of Intellectual Property will issue a decision to refuse to accept the application.
• If within the time limit specified above, there is no request for substantive examination of the application, the industrial design registration application will be considered withdrawn at the end of that time limit.

Stage 2: Substantive examination

1. The concept

Substantive examination of an application is to evaluate the possibility of protection stated in the application according to the conditions of industrial design protection (novelty, creative nature, and industrial applicability) and at the same time evaluate each point mentioned in the scope of application (protection claim).

2. The examination time

Normally, the time for substantive examination of an industrial design registration application is no more than 7 months from the date of receipt of the request for substantive examination (if the request is submitted after the date of publication of the application) or from the date of publication (if the request is filed before the application publication date).

3. The examination content

General examination for all industrial property rights:

• Evaluate the compatibility of the subject matter stated in the application with the type of protection title requested to be granted;
• Evaluate the object according to each protection condition;
• Check the first-to-file principle: for industrial design registration applications that have been concluded to meet protection conditions, before issuing a notice of intention to grant an industrial design patent, the National Office of Intellectual Property must check to ensure the first-to-file principle.
• The evaluation according to the protection conditions is conducted for each subject in turn (if the application includes many subjects while still ensuring consistency).

For industrial design registration applications, the evaluation is conducted in turn according to each point stated in the scope of protection (claim). An industrial design registration application must meet the following conditions:

• Novelty: To evaluate the novelty of an industrial design stated in the application, a comparison must be made of the set of basic design features of that industrial design with the set of basic design features of each design. Reference industrial designs found during the information search process.
• Having a creative level: To evaluate the creativity of an industrial design stated in the application, a comparison of the set of basic design features of that industrial design must be made with the set of basic design features. copies of reference industrial designs found during the information search process.”
• Industrial applicability.

The substantial examination stage of an industrial design registration application includes:

Evaluating the similarity of industrial designs:

• Two industrial designs are considered identical when they are used for products of the same type and have the same set of basic and non-basic design features;
• Two industrial designs are considered not significantly different from each other when they are used for products of the same type and have the same set of basic design features;
• Two industrial designs are considered similar when they are used for products of the same type and have at least one basic design feature that overlaps or is not significantly different from each other;
• Two industrial designs among similar industrial designs are considered most similar when those two industrial designs have the greatest number of basic design features that are identical or not significantly different from each other compared to all other similar industrial designs;
• Two industrial designs are considered significantly different from each other when they are used for products of different types, or used for products of the same type but have at least one basic design feature that is different.

Evaluate the compatibility between the subject stated in the application and the type of industrial design protection certificate

The subject stated in the application is considered unsuitable for the type of industrial design protection certificate if that object is not the product’s external appearance. External appearance is the design features (shapes, lines, colors, or combinations of these elements) that are visible during the process of using the product (exploiting the product’s uses in a normal way, performed by any user, excluding maintenance, servicing or repair work of the product);

In particular, the subjects stated in the application are understood as:

• The product’s external appearance is required by the product’s technical characteristics;
• The external appearance of a civil or industrial construction except the external appearance of individual modules or units that can be used independently or assembled together to form a construction such as shops, kiosks, mobile homes, or similar products.

4. The examination results

The substantive examination of an industrial design is completed when the subject matter has been evaluated with all protection conditions and there are sufficient grounds to conclude that the subject matter does not meet or meets the protection conditions, as detailed:

• Find reasons to conclude that the subject matter does not meet one/some/all of the protection conditions;
• Or there is no reason to conclude that the subject matter does not meet at least one protection condition.
• Before announcing whether an application is protected or not, the National Office of Intellectual Property is responsible for reviewing the results of the substantive examination of the application on the basis of checking related applications with earlier priority dates approved by the National Office of Intellectual Property received after the start date of substantive examination of the application.

If you have any difficulties or problems related to industrial design registration procedures, please contact Viet An Law Firm for the most effective advice and support!