The Ministry of Industry and Trade has recently released the first draft ("Draft") of the Law on Amendment of some articles related to the Law on Insurance Business, the Law on Intellectual Property ("Law on IP") for public comments, with the aim to align national legislation with requirements set out in the Comprehensive and Progressive Agreement for Trans-Pacific Partnership ("CPTPP"), which came into effect on 14 January 2019 in Vietnam.
Below are some notable amendments on Law on IP being proposed under the Draft:
1. Patent Novelty
The Draft proposes a generalized exception where an invention will be treated as one that does not lose novelty due to public disclosure if:
- such public disclosure is made by the patent applicant or by a person who obtains the information directly or indirectly from the patent applicant; and
- the patent application is filed within a period of 12 months from the date of disclosure
The current law requires that the patent application be filed within a shorter period (i.e. 6 months from the date of disclosure) and limits the public disclosure to a few specific cases, e.g. a previous publication as a scientific report or disclosure by displaying in a Vietnam national or an official international exhibition.
2. Trademark Licensing Recordation Requirement
Under the current Law on IP, for a trademark license to be effective against a third party, two parties must record the license with the Vietnam Intellectual Property Office. In practice, the recordation of license may take around 6 months.
As the CPTPP provides that no member will require recording as a requirement for trademark licenses to be effective, 1the Draft is proposing that recordation requirement will no longer be applied to trademark license.
3. Attorney's Fees and Abuse of IP rights
Under the current Law on IP, only a plaintiff may claim for reasonable attorney's fees in an IP lawsuit. If the plaintiff does not succeed in its IP infringement claim, the defendant cannot claim any attorney's fees that have been incurred by the lawsuit.
The Draft proposes that if the Court finds that the defendant does not commit an IP infringement, the defendant can request the Court to force the plaintiff to pay its attorney's fees. This proposal aligns with the CPTPP's requirement that member states will provide that the prevailing party be awarded payment by the losing party of court costs or fees and appropriate attorney’s fees.2
In addition, the Draft refers to the concept of "abuse of IP protection procedures" as the basis for individuals or companies subject to an act of abusing IP protection procedures to take action against the abusing party. Specifically, the plaintiff may make claims for compensatory damages and reasonable attorney’s fees against the abusing party.
The Ministry of Industry and Trade is planning to submit the Draft to the National Assembly for their review and adoption in May 2019.
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1 Article 18.27(b) of CPTPP
2 Article 18.74.10 of CPTPP