Legal Update: New Decree No. 65/2023/ND-CP guiding the implementation of Vietnam’s 2022 Amended IP Law came into effect

On August 23, 2023, the Government issued Decree No. 65/2023/ND-CP guiding the implementation of a number of articles of the amended IP Law in Vietnam with regard to Industrial Property and Plant Variety Rights. The new Decree stipulates the following notable contents:

1.?????? Procedure for amending or supplementing filed applications

???????????? The applicant has the right to request further amendment of some information, including the applicant’s country code; patent, industrial design and layout design inventor’s address; and amendment of agent.

???????????? Amending before having the formality examination results or being requested to amend/or supplement based on the notice of formality examination, the applicant only needs to submit an official letter or response to the Intellectual Property Office of Vietnam (IPVN)’s notice stating the amended contents instead of filing an amendment request with an amendment form.

???????????? Amending the trademark mark sample, the list of goods and services, the description of the specific characteristics of the product bearing the geographical indication, geographical area map corresponding to the geographical indication, a detailed explanation of the amendment is required.

???????????? Amending the name, nationality of the inventor, name, and address of the organization (similar to an amendment of the registration certificate), evidence proving such information is required.

???????????? For the procedure for agent change, a declaration of the agent change is required.

2.?????? Procedure for division of applications

???????????? Division of trademark applications is acceptable only in cases where the division applies partially to the list of goods/services of this application, i.e., division of trademark applications does not apply to divide the mark already filed.

???????????? To proceed with dividing applications, an explanation of the claimed subject matter and changed contents compared to the original is required.

3.?????? Supplementing regulation on withdrawal of applications

IPVN must issue a notice of provisional refusal against the withdrawal of the application for the applicant to overcome shortcomings in case the request for withdrawal does not satisfy the conditions.

4.?????? Supplementing regulation on procedure for international industrial designs under the Hague Agreement for Vietnamese origin and designating Vietnam.

5.?????? Supplementing regulation that requests for international registration filed under the Madrid system of Vietnamese origin that have been granted an international registration number can be made directly with the WIPO or through the IPVN and the required documents should be submitted for filing through the IPVN.

6.?????? Supplementing regulation on the issuance of registration certificates in electronic form or in paper form.

After the effective date of this Decree, a registration certificate in paper form will be issued only when the applicant indicates their request for obtaining such paper certificate in the application filing form.

7.?????? Supplementing regulation on amendment of registration certificate:

A request to amend the mark sample on the registration certificate will be accepted if this meets the following conditions: (i) remove minor details that are disclaimed (not separately protected) and (ii) do not alter the distinctiveness of the mark.

The procedure for obtaining a re-issued or certified copy of the certificate for the recordal of the license agreement of industrial property rights is similar to the procedure for obtaining a re-issued or certified copy of the registration certificate.

8.?????? Replacing some forms under Circular No. 01/2007/TT-BKHCN.

9.?????? Supplementing regulation on security procedures and scopes for patents.

10.?? Supplementing regulation on the procedures related to secret patents.

Apart from the above-mentioned contents, Decree No. 65/2023/ND-CP also provides guidance for the implementation of other important points of the amended IP Law, which we will discuss in detail later.? Decree No. 65/2023/ND-CP replaces Decree No. 103/2006/ND-CP and Decree No. 105/2006/ND-CP and took effect immediately.