New points of the Vietnam IP Law 2022 related to industrial designs

Currently, Vietnam is joining new generation trade agreements including CPTPP, EVFTA, and RCEP and to ensure compliance with international commitments after joining, Vietnam has revised a lot of regulations related to objects of intellectual property rights, including industrial designs, has just been approved by the National Assembly on June 16, 2022. Here are some new points on industrial design protection of the IP Law 2022. The following article Viet An Law will provide information on the new points of the IP Law 2022 related to industrial designs.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented 2009, 2019, 2022 (‘Vietnam IP Law’).

New points of the Vietnam IP Law 2022 related to industrial designs

Modifying the concept of “industrial design”

The IP Law 2022 has revised the concept of “industrial design” by adding the terms listed below:

(i) In addition to “the appearance of the finished product” can also be expressed as “ parts for assembly into composite products”;

(ii) The form of external expression “by form, line, color or a combination of these” and visible in the process of exploiting the utility of the product or complex product.

However, this addition only helps to clarify the concept of industrial design in the current IP Law without any change in the nature of regulations on industrial designs compared to the previous one. This amendment is mainly to fulfill the obligations in Article 12.35 of the EVFTA Agreement on partial/partial protection of a finished product and to clearly define the scope of industrial design protection to facilitate the establishment and enforcement of industrial design rights.

Regarding the protection conditions for industrial designs

and technological tasks funded by the state budget”; Accordingly, the provisions on cases of industrial designs that are not considered to be lost in novelty in Clause 4, Article 64 of the IP Law 2022 have added a person with the right to registration specified in Article 86a of the IP Law 2022.

Requirements for industrial design applications

According to the Vietnam IP Law 2005, one of the required documents in an industrial design application is a description of the industrial design. In which, the industrial design description must satisfy complicated conditions.

However, the IP Law 2022 has been revised in a simpler way, whereby, an industrial design registration dossier is not required to have a separate description with detailed provisions such as the Law on Departments of Natural Resources and Environment. The 2005 intellectual property law stipulates that instead, only a description of the industrial design is required to be shown in a set of photos and drawings, specifically as follows:

• For documents identifying the industrial design to be protected in an industrial design registration application, it shall include a set of photographs, drawings of the industrial design, and a description of the industrial design shown in the set of photographs, and
• A set of photos and drawings of an industrial design must fully show the design features of the industrial design claimed for protection to the extent that based on that, a person with average knowledge of the respective field can identify the industrial design.
• The description of the industrial design shown in the set of photos and drawings must list the order of the photos and drawings in the set of photos, drawings, and design features of the industrial design.

The regulations have been revised towards simplification, allowing applicants to apply for industrial design registration more easily and conveniently in preparing documents. In addition, the amendment of regulations helps to reduce the workload and time for state agencies.

Regarding the right to register an industrial design

The new and greatest addition to industrial designs is to remove the provisions in Clause 2, Article 86 of the current IP Law and add an exception to the right to registration in Article 86a on the right to registration. Industrial designs are the results of scientific and technological tasks using the state budget. Specifically, Article 86a provides:

• For industrial designs are the result of a scientific and technological task using the entire state budget, the right to register inventions, industrial designs, and layout designs is automatically and not reimbursed to the presiding organization, except for the case specified in Clause 3, Article 86a of the IP Law.
• For industrial designs that are the results of scientific and technological tasks invested with many capital sources, including part of the state budget, part of the right to patent registration, industrial designs, and layout designs corresponding to the proportion of the state budget allocated to the presiding organization automatically and without compensation, except for the case specified in Clause 3, Article 86a of the IP Law.

In addition, amendments to the provisions of Clause 3, Article 86 of the IP Law 2022, corresponding to the provisions of Clause 4, Article 86 of the current IP Law, specifically change the word “Person” with the right to transfer the right to register for other organizations and individuals in Clause 4, Article 86 of the current IP Law into “Organizations and individuals” has the right to transfer the right of registration to other organizations and individuals in Clause 3, Article 86 of the Law Intellectual property 2022.

The IP Law 2022 further stipulates except for the case of industrial designs in the field of defense and security, any organization assigned to assume the prime responsibility for scientific and technological tasks funded with the state budget shall have the right to have the industrial design registered automatically and without reimbursement.

In case the industrial design is in the field of national defense and security, the right to register such industrial design belongs to the State if the industrial design is created using the entire State budget. If the industrial design is contributed by only a part of the State budget, the eligibility to file an industrial design registration application is determined in proportion to the proportion of the State budget allocated to the process of creating that design.

If the industrial design is determined to belong to the State, the application for registration is determined through the representative of the state owner as one of three subjects: the Committee for the Management of State Capital at Enterprises (CMSC); Ministries or ministerial-level agencies, People’s Committees of provinces and centrally run cities; State Capital Investment Corporation (SCIC).

The representative of the state owner will have to make a public announcement within 90 days to assign the registration right to organizations and individuals in need in the following cases :

• The lead organization fails to fulfill the notification obligation;
• the state owner’s representative on the absence of a need for registration;
• The host organization fails to submit the application within the prescribed time limit.

In addition, in case the registration right cannot be assigned to organizations or individuals in need, the state owner’s representative will have to publicly announce it on the portal or the website of the agency. management of S&T tasks on industrial design content.

In addition, the IP Law 2022 has additional provisions on restrictions on the transfer of intellectual property rights, whereby they can only be transferred to organizations established under Vietnamese law, individuals who are Vietnamese citizens, and permanent residents in Vietnam. At the same time, organizations and individuals that receive the transfer of rights must perform the corresponding obligations of the host organization.

The validity of industrial design protection title

The IP Law 2022 adds a provision on the validity of international registration of industrial designs designating Vietnam under the Hague Agreement. This addition is to ensure compliance with reality and is necessary because on September 30, 2019, Vietnam officially submitted an application to join the Hague Agreement, and on December 30, 2019, this Agreement was officially valid in Vietnam.

About publication of industrial design registration applications

Article 112a of the IP Law 2022 adds provisions related to specific industrial design objects, providing for objections to industrial design registration applications along with the time limit for objecting to industrial design registration applications, specifically, it is possible that this period is four months from the date the industrial design application is published and objections must be made in writing, enclosed with documents or cited as sources of information for proof, and must pay fees and charges.

The addition of regulations aims to speed up the processing of applications, and at the same time to be consistent with the fact that the consideration of objections to the application cannot be separated from the processing of the application.

About the owner of the industrial design

The IP Law 2022 adds organizations and individuals with internationally registered industrial designs recognized by competent authorities as owners of industrial property objects compared to the current Law on Intellectual Property. act because Vietnam was a member of the Hague Agreement.

New regulations on conditions for individuals to practice industrial property representation services

Supplementing the provisions in Clause 61, Article 1 of the IP Law 20222 on conditions for individuals to be allowed to practice industrial property representation services, whereby individuals need to meet the following conditions:

• Industrial property representation service practice certificate;
• Works for an industrial property representation service organization.

certain conditions will be granted an industrial property representation service practice certificate. Compared with the old Law, the 2022 Law adds the following criteria:

• Having a bachelor’s degree or equivalent qualification for practice in the field of trademarks, geographical indications, trade names, anti-unfair competition, or business secrets; hold a bachelor’s degree or an equivalent degree in a natural science or technical science, for practice in the field of invention, industrial design or layout design;
• Vietnamese citizens who are lawyers licensed to practice under the Law on Lawyers and permanently residing in Vietnam shall be granted a practicing certificate of industrial property representation services in the field of trademarks, geographical indications, trade names, anti-unfair competition, business secrets if you have graduated from a training course on industrial property law recognized by a competent authority.

The specific regulation of training majors compared with the requirement of only “Having a university diploma” as the old law helps to ensure the quality of industrial property representation services in fields requiring high expertise in the field of industrial property. technical/natural sciences such as industrial designs or inventions.

Handling violations

The Law on Intellectual Property 2022 b adds that commercial legal entities that commit acts of infringing upon intellectual property rights with sufficient elements to constitute a crime will be examined for penal liability differently than in the past, only individuals be criminally responsible. Regulations on administrative sanctions and remedial measures are technically adjusted according to the guidance referring to the provisions of the law on handling administrative violations.

Some related questions

Will commercial legal entities commit acts of infringing upon intellectual property rights, shall they be criminally liable?

Commercial legal entities that commit acts of infringing upon intellectual property rights with sufficient elements to constitute a crime shall be examined for penal liability.

Grounds for objecting to an industrial design registration application?

A written objection or an objection to the grant of an industrial design for registration may invoke and prove one of five legal grounds:

• The object of protection does not fully satisfy the conditions for protection;
• The applicant does not have the right to register the industrial design;
• Although the object of protection satisfies the conditions for protection, it is not an application with the earliest priority or filing date;
• There is more than one industrial design application for registration of the same or not significantly different from each other filed on the same day by more than one applicant, who has not agreed to withdraw an application;
• The modification and supplementation of the application widens the scope of objects disclosed or stated in the application or changes the nature of the objects requested for registration stated in the application.

Grounds for invalidation of industrial design patents?

The granted industrial design may be invalidated in whole or in part by any third party if it falls into one of three cases:

• The applicant for registration does not have the right to register and may not be assigned the right to register the industrial design;
• The industrial design registration application does not satisfy the protection conditions such as novelty, inventive nature, and industrial applicability; or the object of protection is contrary to social ethics and public order;
• The modification or supplementation of an industrial design registration application expands the scope of objects disclosed or stated in the application or changes the nature of the object of the registration request stated in the application.

Above are the new points of the Vietnam IP Law 2022 related to industrial designs that we synthesize. If you need advice on industrial design registration services, please contact Viet An Law Firm for the best support.