Temporary rights to patent in Vietnam

Vietnam is emerging as a new production center, a safe and potential destination for innovation. This positive sign has led to a significant increase in the number of patent applications in Vietnam in recent years. One of the important regulations in Vietnamese patent protection is the establishment of regulations on temporary rights to patent in Vietnam. “Temporary rights” or “provisional rights” (as termination under IP Law) can provide patent owners with significant benefits even before their application is granted protection. However, in reality, many clients still do not understand and grasp this regulation.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.

What is a patent in Vietnam?

As one of the objects of industrial property rights, an invention is not only known as a tangible tool but also includes a process to solve a defined problem by applying natural laws.

The World Intellectual Property Organization (abbreviated as WIPO) has defined a patent, according to which a patent is an exclusive right granted to a solution that is a product or process that offers a new way to do something or come up with a new technological solution to a problem.

In Vietnam, based on Clause 12, Article 4 of the Intellectual Property Law, an invention is a technical solution in the form of a product or process to solve a defined problem by applying natural laws.

The necessity of provisional patent rights regulations

The invention has the characteristics of technical creativity and novelty in use and commerce. To be protected, the creator or investor is required to apply to a competent state agency. After being duly accepted by a competent state agency, information about the invention will be published in the Industrial Property Official Gazette to avoid duplicate research, and this is also the basis for the third person has right to give opinions to the state management agency on inventions, thereby considering whether or not to grant a protection title for that patent.

However, this can also lead to another risk that other entities can rely on published information to use the invention without permission or compensation to the patent owner. During the period when the invention has not been granted a protection title, it affects the right to exploit the invention, which is recognized by law to protect the rights of the owner.

From the above grounds, it can be seen that stipulating temporary rights to inventions is extremely necessary to protect the legitimate rights and interests of invention owners as prescribed by law.

Temporary rights to patent in Vietnam

Temporary rights (Provisional rights) to the patent are understood as a legal institution established to provide certain protections to patent owners while they are waiting for the competent authority to grant a patent. Provisional rights provide applicants with a legal tool to protect against unauthorized use of their invention during the patent pending phase.

Provisional rights allow patent owners to take action against infringers who commercially exploit their invention after the patent application has been published in the Industrial Property Official Gazette but before the grant of the patent.

Under Article 131 of the Intellectual Property Law 2005, as amended and supplemented in 2009, 2019, and 2022, provisional rights are regulated as follows:

• In case the patent applicant knows that the invention is being used by someone else for commercial purposes and that person has no prior right to use it, the applicant has the right to notify 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 using or continue using.
• In case the notified person continues to use the invention when the patent is granted, the invention owner has the right to request the person who has used the invention must pay compensation equivalent to the price of licensing the right to use that invention within the corresponding scope and term of use.

As such, provisional rights help encourage innovation by providing inventors with a certain level of legal protection while they wait for their applications to be granted protection title. Without these rights, inventors may be reluctant to invest in the development of new ideas or designs, knowing that they may face unauthorized use or property infringement of their intelligence while the application is being examined.

Note: Granting a patent is not guaranteed, so provisional rights may not be exercised if the patent application is ultimately rejected. This uncertainty may make it difficult for owners to enforce their rights during the applicable period.

Legal consequences of provisional rights

From the above analysis, it can be seen that some legal consequences of provisional rights can occur, which are:

• The third party is obliged to respect the owner’s provisional rights to the invention after the application has been duly gazetted.
• Stop using the invention after receiving notice from the owner that the invention has been registered for protection;
• Pay remuneration corresponding to the time and scale of use of the invention, in case the invention continues to be used after receiving the above notice;
• For acts of infringement of rights to inventions specified in Clause 2, Article 126 of the Intellectual Property Law, the use of inventions without paying compensation according to the provisions on temporary rights specified in Article 131 of the Law, the third party will be handled by administrative, civil, and criminal sanctions according to the provisions of law.

Some related questions

Who is the patent owner?

According to the law, an invention owner is an organization or individual that has been granted an invention protection title by a competent state agency (or has registered for an international protection title and has been granted an invention protection title by a competent state agency).

The owner of an invention can also be the person to whom ownership of the invention is transferred according to an invention ownership transfer contract registered with a competent state agency.

Besides temporary rights to an invention, what other rights does an invention owner have under the law?

According to the law, temporary rights to inventions are one of the basic rights of the patent owner. Besides, the patent owner also has several other rights such as:

• The right to use or allow others to use the invention;
• The right to prevent others from using the invention;
• Right to dispose of inventions.

Does the provisional right apply to all patents that have been filed for protection?

According to the law, provisional rights only apply to patent applications that have been published in the official gazette, so any inventions that have not yet been published or filed for registration are not protected by this right.

The temporary right only provides for the right to notify third parties of the alleged violation, not the right to request Vietnamese law enforcement agencies to handle the alleged violation.

Clients who need advice on temporary rights to inventions, please contact Viet An Law Firm for the best support.