Licensing v. Assignment of Intellectual Property in Vietnam

Along with the activity of establishing rights, licensing/transferring intellectual property rights is one of the rights associated with business activities. Currently, the transfer of intellectual property rights is becoming more and more popular due to the economic benefits it brings, promoting competition and developing human creativity. However, not all intellectual property rights can be licensed/transferred. Below, Viet An Law will provide basic legal issues on licensing v. assignment of intellectual property in Vietnam.

What is Licensing/Assignment of Intellectual Property?

According to the Law on Intellectual Property of Vietnam 2005, as amended and supplemented in 2009, 2019, and 2022, the assignment of intellectual property rights is the act of the intellectual property owner assigning his/her ownership to another organization or individual.

Transferring of intellectual property rights (also known as licensing) is when the owner of intellectual property rights allows another organization or individual to use the intellectual property within the scope of his or her rights to use.

Intellectual property rights include rights to inventions, industrial designs, semiconductor integrated circuit layout designs, trademarks, trade names, geographical indications, trade secrets created or owned by oneself, and rights against unfair competition.

The subject of licensing v. assignment of intellectual property in Vietnam

• Copyright;
• Industrial property rights to trademarks, patents, industrial designs, and layout designs;
• Rights to plant varieties.

Notes:

• The assignment of patent rights may be limited or required by State regulations.
• The assigned price is used as the basis for many other obligations such as the obligation to pay remuneration to the inventor, copyright, etc…

Distinguishing between Licensing v. Assignment in industrial property

Dossier and procedures for licensing v. assignment of intellectual property in Vietnam

Depending on each industrial property object, the dossier and procedures will be regulated differently. Please refer to the articles on the website vietanlaw.com for more details or contact Viet An Law, hotline (+84) 977 520 979 (WhatsApp, Viber, Zalo) to receive the fastest advice from our intellectual property experts.

Benefits of licensing/assigning intellectual property

For licensors/assignors

• Receive a fee equivalent to the value of the intellectual property rights licensed/assigned;
• Create conditions for the licensor/assignor to have more costs and profits to reinvest in research and development activities, even in cases where they do not need to directly exploit or use the intellectual property. For example, the copyright owner can still gain material benefits from others directly or indirectly by using and exploiting the transferred work;
• Intellectual property rights are an important part of business operations. Many businesses today operate intending to create intellectual property rights and licensing/assigning the right to use intellectual property objects for others to exploit, rather than directly manufacturing products. For these businesses, intellectual property rights are the product.

For the licensee/assignee

• Through licensing/assignment, the licensee/assignee can exploit the benefits of intellectual property rights to meet the needs of use and exploitation;
• Save costs, time, and resources and avoid risks in investing in research and development of that intellectual creation. For example, in licensing an invention, the licensee obtains technology from the licensor to produce and market new products that the patent owner spent many years researching and developing.

For society

• Has important significance in disseminating innovative results and new technologies;
• Avoid wasting intellectual property resources in cases where the right owner has no need to use them or does not have sufficient conditions to exploit and use them;
• Contribute to limiting monopoly, increasing competitiveness, and promoting creative research activities.
• Being as a way to resolve disputes. In some industries, competitors often use similar technologies, which can lead to infringement of each other’s intellectual property rights. In such situations, the parties may enter into a cross-licensing agreement (also known as a “cross-licensing”) to avoid litigation.

Notes for businesses when licensing, assignment intellectual property rights

Not all intellectual property can be licensed/assigned, there are limited cases where licensing/assigning of intellectual property rights is not allowed. Specifically

For assignment

• The owner of intellectual property rights may only assign his rights within the scope of protection.
• Rights to geographical indications are not assignable.
• The author’s moral rights (except the right of publication) are not assignable.

For licensing

• The licensee is only allowed to use the intellectual property within the scope and terms of the license.
• The right to use geographical indications and trade names cannot be licensed.
• The right to use a collective trademark shall not be licensed to an organization/individual who is not a member of the owner of that collective trademark.
• The author’s moral rights (except the right of publication) are not transferable.

Licensing v. assignment of intellectual property in Vietnam service of Viet An Law

• Consulting in negotiating, drafting, and conducting procedures for recording assignment contracts and licensing contracts related to intellectual property objects such as inventions, utility solutions, industrial designs, trademarks, copyrights, and technology transfer;
• Represent clients in carrying out procedures for registration, approval of licensing contracts, and transfer of intellectual property objects at competent state agencies.

If your business has difficulty in licensing v. assignment intellectual property in Vietnam, please contact Viet An Law for the fastest and most accurate support!

Updated: 9/2024