Patent assessment in Vietnam

Patent infringement affects the exclusive rights of other entities when their intellectual property is illegally exploited in commerce. Vietnamese Intellectual Property Law also has regulations on handling measures for patent infringement. To promptly detect any act as patent infringement, patent infringement assessment is an important process to serve as a basis for infringement handling measures. In the article below, Viet An law firm will provide customers with information about patent assessment in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022;
• Law on Judicial Expertise 2012, as amended and supplemented in 2020;
• Decree 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and state management on intellectual property.

Regulations on patent assessment in Vietnam

• Patent assessment is an aspect of intellectual property assessment prescribed in the Intellectual Property Law. According to the provisions of Article 201 of this Law, intellectual property assessment is the practice of organizations and individuals with the right to practice assessment according to regulations to use professional knowledge and skills to evaluate and conclude issues related to their intellectual property rights.
• Intellectual property assessment is performed on three (03) main groups of intellectual property objects: copyright, industrial property rights, and plant variety rights. Accordingly, the patent belongs to the group of industrial property rights.
• In terms of meaning, the Intellectual Property Law also stipulates that assessment conclusions are one of the sources of evidence for the competent authority to handle and resolve the case. The assessment conclusion does not conclude on intellectual property rights infringement or the dispute.
• Judicial assessment of intellectual property is carried out in accordance with the law on judicial assessment.

Acts of patent infringement in Vietnam

Article 4 .12 of the Intellectual Property Law stipulates that a patent is a technical solution in the form of a product or process that aims to solve a defined problem by using natural laws. In the above regulations, a patent must first be a new, creative technical solution to a specific problem expressed through a product or process.

Patent infringement is the use, manufacture, or distribution of a protected patent without the owner’s consent. Thus, not all patents are subject to infringement, only protected patents are considered subject to patent infringement.

Acts considered to be infringements of patents are specified in Article 126 of the Intellectual Property Law including:

• Using a protected patent during the validity period of the protection title without the permission of the owner;
• Using a patent without paying compensation according to provisions on temporary rights, in which temporary rights stipulate:
• In case the patent applicant knows that the patent is being used by someone else for commercial purposes and that person has no right to use it in advance, the applicant has the right to warn the user in writing that he or she has applied for registration, clearly indicating the filing date and the date of publication of the application in the Industrial Property Official Gazette for that person to stop continue using.
• In the case of being notified as above but the notified person continues to use the patent when the patent is granted, the patent owner has the right to request the person who has used the patent to pay a sum of money. Compensation is equivalent to the price of transferring the right to use that patent within the corresponding scope and term of use.

Content of assessment activities

According to the provisions of the Law on Judicial Expertise and the Civil Procedure Code, assessment activities will be conducted in the following two cases:

• Solicitation of expert assessment: This is an activity performed by the Judge or person conducting the proceedings at the request of the litigant or when deemed necessary to serve as evidence and basis to resolve the civil case;
• Request for expert assessment: This is the right of the litigant to request the Court to request an expert assessment or to request the expert assessment himself after asking the Court to request an expert assessment but the Court refuses the litigant’s request.

The content of the assessment activity is that the expert performers or the assessment council make professional conclusions about the issues required to be assessed. The assessment conclusion clarifies the subject of the assessment based on grounds including details, traces, objects, documents provided by the investigation agency, and appropriate applied methods.

In some cases, you can request a re-assessment. Re-assessment is an assessment activity conducted according to a solicitation decision of the agency conducting the proceedings on an issue that has been assessed when there are previous assessment results or there are conflicts in the assessment conclusions. Grounds for re-assessment when there is doubt that the first assessment conclusion is incorrect.

Assessment of industrial property rights infringement

Content of industrial property assessment

Industrial property assessment ensures the following contents, specifically:

• Determine the scope of protection of intellectual property rights;
• Determine whether the subject under consideration meets the conditions to be considered an infringement of intellectual property rights;
• Determine whether or not there is an overlap, equivalence, similarity, confusion, difficulty in distinguishing or copying between the object under consideration and the protected object;
• Determine the value of intellectual property rights and determine the value of damages

Principles of assessment of industrial property rights

Pursuant to Clause 4, Article 201 of the Intellectual Property Law, the principles for performing assessment are prescribed as follows:

• Comply with the law, follow the assessment order and procedures;
• Honest, accurate, objective, impartial, timely;
• Only make professional conclusions on issues within the requested scope;
• Be responsible before the law for the assessment conclusions;
• Assessment costs are determined according to the agreement between the person requesting the assessment and the assessment organization or individual.

Basis for comparison and assessment of the possibility of patent infringement

To determine whether or not there is a possibility of infringement of another person’s patent, it is necessary to compare and contrast the protected patent with the product intended to be marketed to evaluate the overlap or equivalence. between that product and the protected patent, on this basis, judge the extent of the risk of infringement of the currently protected patent.

The basis for comparison and assessment of the possibility of patent infringement is the scope of patent protection determined according to the Protection Claims section of the Patent or Utility Solution Patent. The claims section is usually found right in the patent description of the granted patent and is the core part of any patent because it is used to define the scope of industrial property rights within the patent. If the product or process covered by the patent is protected, patent infringement will occur.

Consulting services related to patents of Viet An Law

• Consulting on regulations on infringement and handling of patent infringement;
• Preliminary assessment of patent infringement to propose solutions to clients;
• Representing clients to conduct patent assessments at practicing organizations as a basis for dispute resolution;
• Representing outside of litigation and in litigation to resolve patent disputes for clients.

Above is an article about patent assessment in Vietnam. If you have any questions related to patent registration or handling patent infringement, please contact Viet An law firm to receive prompt and quick advice. Best regards!