Pháp lệnh 13-LCT/HDNN8

ORDINANCE

ON THE PROTECTION OF INDUSTRIAL PROPERTY RIGHTS

In order to protect the legitimate rights and interests of organizations and individuals engaged in industrial property activity; to encourage the creation and effective utilization of scientific and technological achievements, promote national social and economic development and contribute to the expansion of economic, scientific and technological relations with foreign countries;
In accordance with articles 72 and 100 of the Constitution of the Socialist Republic of Vietnam;
This Ordinance provides for the protection of industrial property rights in Vietnam.

Chapter I

GENERAL PROVISIONS

Article 1

Recognition and protection of industrial property rights:

1. The State recognizes and protects the industrial property rights of State organizations, collective bodies or legal entities (hereinafter referred to as organizations) and individuals. Industrial property rights comprise the ownership rights to an invention, utility solution, industrial design or trade mark and the right to use and appellation of origin. In respect of goods the State protects the rights of the creator of an invention, utility solution or industrial design.

2. The State attaches importance to and encourages endeavor in the fields of inventions and their application, utility solutions and industrial designs.

Article 2

Principle of equality in the protection of industrial property rights:

The State shall without discriminating between the economic sectors apply the principle of equality in the protection of industrial property rights.

Article 3

Protection of industrial property rights of a foreign organization or individual :

The industrial property rights of a foreign organization or individual shall also be protected under this Ordinance in accordance with the international treaties to which Vietnam is a party or on the basis of reciprocity.

Article 4

Definitions of industrial property under the protection of the State:

1. Invention means a technical solution which is new in comparison with the existing level of technology in Vietnam, and which may be achieved in the current socio-economic conditions.

2. Industrial design means the external appearance of a product embodied by lines, three-dimensional forms, colors, or a combination of these, which is new throughout the world and is capable of serving as a pattern for an industrial or handicraft product.

3. Trade mark means a mark which is used to distinguish the goods or services of a individual from goods or services of the same kind of another person. Trade marks may be in the form of words, pictures, or any combination thereof presented in one or more colors.

4. Appellation of origin of goods means the geographical name of a country or locality which serves to designate the origin of a product manufactured in the country or locality, provided that its qualities and characteristics are due exclusively or essentially to the geographical environment including natural, and human factors or a combination there of.

5. Industrial property which is contrary to the social interest, public order, the principles of humanity or socialist morality shall not be protected.

Article 5

State management of industrial property:

1. The Council of Ministers shall be responsible for general management of and the issue of State policies on promotion and development of industrial property.

2. The State Committee for Science and Technology shall be responsible for organizing, supervising and implementing State policies on industrial property.

3. The State office in charge of controlling matters relating to industrial property is the Inventions Department, which is directly under the State Committee for Science and Technology (hereinafter

referred to as the Inventions Department) and which is responsible for the procedures for recognition of industrial property rights, and for co-operation with social organizations and inventors associations in relation to industrial property matters.

4. Ministries, State Committees, and other bodies under the Council of Ministers, the people's committees of the provinces and cities directly under central authority and other corresponding

administrative units shall be responsible for the organization and development of industrial property within their sectors or territories and for ensuring the implementation of the State policies concerning organizations and individuals engaged in industrial property activities.

Article 6

Responsibility of organizations in the development of industrial property :

Organizations involved in production, commerce, services and scientific technological research shall be responsible for creating favorable conditions for their staff to create, examine, test and improve their inventions, utility solutions or industrial designs, taking necessary measures to ensure that industrial property is protected and effectively utilized, and for ensuring the legitimate rights and interests of the inventors.

Article 7

Role of social organizations in industrial property:

The General Federation of Labour of Vietnam, the Ho Chi Minh Communist Youth League, inventors associations, and other social organizations shall, by themselves, or in conjunction with the State management body and basic units, have the right to take necessary measures in support of creating and utilizing inventions, utility solutions or industrial designs, to protect the legitimate rights and interests of authors and to control the implementation of the relevant regulations and policies of the State designed to encourage the development of industrial property.

Article 8

Definition of terms used in this Ordinance:

1. Owner of the title to industrial property protection in the organization or individuals to which or to whom protection is granted, the ownership rights in industrial property are transferred.

2. Inventor or author of an invention, utility solution or industrial design means the person, who by his creative work, creates the invention, utility solution or industrial design.

Co-authors of an invention, utility solution or industrial design means the individuals who by their creative work, jointly create the invention, utility solution, or industrial design.

3. service invention, service utility solution, or service industrial design means an invention, utility solution or industrial design which is created by authors on behalf of a State organization, State run economic unit, or collective group or is created using the financial resources and facilities of the organizations or units.

Chapter II

INDUSTRIAL PROPERTY RIGHTS

Article 9

Rights of owners of protected titles:

1. The owner of a protected title to an invention, utility solution, industrial design or trade mark, shall have ownership rights in respect of the protected object.

The owner of a protected title shall be entitled to utilize exclusively, the protected object and to transfer the ownership right or the right to utilize the protected object to another organization or individual.

2. The owner of a protected titled to an appellation of origin, shall have the right to utilize the appellation of origin from the date on which the protected title is granted but shall not be entitled to transfer that right of utilization to another organization or individual.

3. The owner of a protected titled may file a complaint with the court in the event that his industrial property rights are infringed.

Article 10

Transfer of the ownership of or of the right to utilize a protected object:

The transfer of the ownership of or of the right to utilize a protected object shall take place by way of a written contract registered with the Inventions Department in compliance with the provisions on transfer of technology.

Article 11

Utilization of industrial property which is protected:

1. The following shall be regarded as utilization of an invention,utility solution or industrial design: manufacturing, using, importing, advertising and placing in circulation the product in which the protected invention, utility solution or industrial design is embodied; or, applying the process which is protected as an invention or utility solution.

2. The following shall be regarded as utilization of a trade mark or an appellation of origin: placing the trade mark or the appellation of origin on a product or on the packaging of a product or on documents or vouchers in order to mark the product or to indicate the origin of that product, advertising the trade mark or appellation of origin.

Article 12

Infringement of the rights of the owner of a protected title:

1. Any of the following acts shall constitute an infringement of the rights of the owner of a protected title:

(a) Any act referred to in articles 9 and 11 of this Ordinance which is committed without the consent of the owner of the protected title.

(b) The utilization of a sign or name similar to a protected trade mark to the extent that it may mislead consumers and cause damage to the owner.

2. The following acts shall not be considered to amount to infringement of the rights of an owner of a protected title:

(a) The utilization of the object of industrial property for non-commercial purposes.

(b) Circulating products which have been placed in the market by the owner of a protected title, the prior manufacturers or the licenses.

(c) The use of industrial property which has been protected, in transport vehicles of foreigners, when such vehicles temporarily enter or are in the territory of Vietnam, provided that the property is used only for the purpose of ensuring the operation of the vehicles.

Article 13

Obligations of the owner of a protected title:

The owner of a protected title shall have the following obligations:

1. To utilize or transfer the right to utilize the invention, utility solution or industrial design in the territory of Vietnam, to the extent required to meet the needs of the socio economic development of the country.

2. To pay a fee to maintain the validity of the protected title and to pay remuneration to the author according to the relevant regulations of the Council of Ministers.

Article 14

Compulsory transfer of the ownership of, or the right to utilize, a protected object:

1. The Chairman of the State Committee for Science and Technology shall have power to grant a license to utilize industrial property upon the request of an organization or individual in the following cases:

(a) Where, after the expiry of the period prescribed by the Council of Ministers the owner of a protected title has, in the absence justifiable reasons, not utilized the invention or utility solution or

the extent of his utilization has not met the needs of the social or economic development of the country and the organization or individual requesting the utilization has been unable to secure the agreement of the owner of a protected title to transfer the right to utilize the protected invention or utility solution to it and has submitted the request to the State Committee for Science and Technology.

(b) Where an organization or individual needs to utilize one invention or utility solution in order to utilize another invention or utility solution but has been unable to secure the agreement of the owner to transfer the right to utilization of the said invention or utility solution.

(c) Where the Chairman of the State Committee for Science and Technology considers it necessary to utilize the protected invention, utility solution or industrial design for the requirements of national defense and security or for prevention or treatment of disease of

human being or other vital public interests.

2. In the cases referred to in paragraph (a), (b) and (c) of clause 1 of this article, the organization or individual to whom a compulsory license is granted shall pay the owner of the protected title

adequate compensation determined on the basis of the benefit obtained.Where the organization or individual and the owner of the protected title are unable to agree on the amount of compensation, they may file a claim with the court.

Article 15

Rights derived from previous utilization:

Where an organization or individual, prior to an applicant gaining priority in an application for protection as prescribed in article 19 of this Ordinance, has independently of the applicant utilized or undertaken serious preparation to utilize the invention, utility solution or industrial design, that organization or individuals shall, despite the grant of a protected title to the applicant, have the right to continue in the utilization, increase its volume or scope of application, or transfer the right.

Article 16

Rights and obligations of the individual to whom the ownership right or right to utilize industrial property has been transferred:

1. The individual to whom the ownership right or the right to utilize industrial property has been transferred shall have the rights and obligations of the owner of the protected title from the date on which the transfer is registered with the Inventions Department.

2. The individual to whom the ownership right or the right to utilize the industrial property has been transferred, shall be entitled to require the owner of the protected title to institute proceedings in respect of nay infringing act. If within three months from the receipt of the request, the owner of a protected title has not responded, the individual may himself institute proceedings in respect of the infringing act.

Article 17

Rights of an author:

1. The author of an invention, utility solution or industrial design shall be named as such in the protected title and in other scientific and technical documents.

The author of a service invention, service utility solution or service industrial design shall be obliged to inform the organization or unit to which be belongs of his creative work where it is able to be protect.

2. The author of an invention, utility solution or industrial design shall have the right to receive his remuneration and to lodge and appeal against any infringement of its rights.

The owner of a protected title shall be obliged to determine the amount of remuneration to be paid on the basis of the benefit resulting from the utilization of the invention, utility solution or industrial design.The Council of Ministers shall fix a minimum amount of remuneration to be paid to the author.

Chapter III

PROCEDURES FOR THE RECOGNITION OF INDUSTRIAL PROPERTY RIGHTS

Article 18

Right to file an application for protection :

1. In cases of an invention, utility solution or industrial design, the right to file an application for protection shall belong to the author or his successor in title.

2. In cases of a service invention, service utility solution or service industrial design the organization or unit referred to in clause 3 of article 8 of this Ordinance shall have the right to file

an application for protection. If, within two months following the date of notification given by the author, the organization or unit has not filed the application for protection, the author shall have the right to file to the application himself.

3. In cases of an invention, utility solution or industrial design which is created during the conduct of a scientific technological research and development contract, the right to file an application for protection shall belong, except where otherwise provided in the contract, to the employing party.

4. In the case of an invention, utility solution or industrial design which is created in a basic unit which uses labour subject to labour contract, the right to file an application for protection shall belong to that basic unit if the name of individual who has the right to file an application for protection is not defined in the labour contract.

5. In the case of a trade mark, the right to file an application for protection shall belong to the organization or individual engaged in lawful manufacturing commercial activities.

6. In the case of an appellation of origin, the right to file an application for protection shall belong to the organization or individual engaged in lawful manufacturing commercial activities in the locality and which has the distinctive characteristics described in clause 5 of article 4 of this Ordinance.

7. In the case of an invention, utility solution or industrial design, the right to file an application for protection may be transferred in writing to another organization or individual.

Article 19

Right of priority of an application for protection of industrial property:

1. The right of priority of an application for protection of industrial property shall be determined according to the date of priority. The date of priority is the day on which the application is received by the Inventions Department or as is determined according to the international treaties to which Vietnam is a party.

2. Any applicant who claims the right of priority according to the international treaties to which Vietnam is a party shall make a declaration in his application and shall be obliged to prove that right.

Article 20

Procedures for filing an application for protection of industrial property:

1. The application for protection of industrial property shall consist of the necessary documents prescribed by the competent authority of the State and shall be filed with the Inventions Department.The Inventions Department shall have the right to request that the applicant amend or supplement his application.

2. An organization or individual may file an application for protection himself or through an industrial property agent. An organization which or individual who, has no permanent residence, headquarters or representative office in Vietnam shall file an application for protection through an industrial property agent.

Article 21

Industrial property agent:

1. An industrial property agent means an organization which or individual who, is authorized to function by the competent authority of the State. The industrial property agent shall be registered with the Inventions Department.

2. An industrial property agent shall provide representative services in relation to industrial property protection and other services in relation to industrial property.

Article 22

Examination of an application for protection, grant of a protected title and publication of protected property. The Inventions Department shall be empowered to examine applications for protection, and publish the protected projects in accordance with the procedures provided by the Council of Ministers.

Article 23

Protected titles and term of validity:

1. The protected title certifies the industrial property which is protected and the rights of the author of an invention, utility solution or industrial design.

2. The form and validity of a protected title shall be determined as follows:

(a) In the case of an invention, the protected title is a patent for invention. The term of validity of a patent for invention shall be fifteen (15) years from the date of priority.

(b) In the case of a utility solution, the protected title is a patent for utility solution. The term of validity of a patent for invention shall be six years from the date of priority.

(c) In the case of an industrial design, the protected title is a certificate of industrial design. The term of validity of a certificate of industrial design. The term of validity of a certificate of industrial design shall be five years from the date of priority.

(d). In the case of a trade mark, the protected title is a certificate of registration of trade mark. The term of validity of a certificate of registration of trade mark shall be ten (10) years calculated from the date of priority.

(e) In the case of an appellation of origin, the protected is a certificate of registration of appellation of origin. The term of validity of a certificate of registration of appellation of origin shall be calculated from the date of the grant of the certificate and shall not be subject to any limit.

3. At the request of the owner of a protected title, the Inventions Department shall extend the term of validity of a certificate of industrial design twice, each for a period of five years, and shall extend the validity of a certificate of registration of trade mark for an unlimited number of terms each for a period of ten (10) years.

Article 24

Cases where a protected title shall become ineffective before the expiration of its term of validity :

1. The protected title shall in the following cases become ineffective before the expiration of its term of validity :

(a) The owner of a protected title files a written surrender with the Inventions Department.

(b) The owner of a patent for protection or utility solution has not paid the prescribed annual fee.

(c) The owner of a certificate of registration of trade mark or of a certificate of registration of appellation of origin has ceased his manufacturing commercial activities.

(d) The owner of a certificate of registration of trade mark has not utilized or has not transferred the right to utilization of the trade mark within five years from the date of registration.

(e) Where the factors which create the qualities and characteristics of products bearing the appellation of origin no longer exits, or, the products made by the owner of the certificate of registration of appellation of origin no longer contain the said qualities and characteristics.

2. A protected title which has become ineffective before the expiration of its term of validity shall be recorded in the register and published in the official gazette of industrial property.

Article 25 :

Amendment to and cancellation of a protected title :

A protected title may be amended or canceled in whole or in accordance with the provisions contained in article 28 of this Ordinance.

Article 26 :

Secret invention, secret utility solution :

1. An invention or utility which relays to the defense and security of the State and is considered by the competent State authority concerned to be a secret of the State, shall be named as a secret invention or secret utility solution.

2. The author and the owner of a protected title and those concerned with marking, filing, examining the application for protected of, utilizing or transferring the ownership right or the right to utilization of, a secret invention or secret utility solution shall, pursuant to the provisions of the competent State authority concerned, be responsible for keeping those solutions and inventions secret.

Article 27

Protection of industrial property rights abroad :

An invention, utility solution or industrial design created in Vietnam as well as a trade mark or appellation of origin of Vietnam may be the subject of an application for protection abroad after application for protection of that object has been filed in Vietnam, and provided that the international treaties to which Vietnam is a party do not provide otherwise.

Chapter IV

RESOLUTION OF COMPLAINTS, DISPUTES AND DEALING WITH BRANCHES.

Article 28 :

Filing and resolution of complaints :

1. Application for a protected title may file complaints in relation to any decision concerning the receipt and examination of an application and the refusal to grant a protected title.During the term of validity of the protected title, any organization or individual may appeal against the grant of a protected title to industrial property which does not satisfy the requirement prescribed in clause 1, 2, 3, 4, 5 and 6 of article 4 of this Ordinance.The Director of the Inventions Department shall be responsible for resolution of the appeals referred to in clause 1 and 2 of this article. In the event that the appellant is not satisfied with the decision of the Director of the Inventions Department he may file a further appeal to the Chairman of the State Committee for Science and Technology. The decision of the Chairman of the State Committee for Science and Technology shall be final.

2. Any organization or individual may appeal against the grant of a protected title to an individual who has no right to file an application as referred to in article 18 of this Ordinance or if the protected title wrongly identifies the author.

The Director of the Inventions Department shall be responsible for resolving the appeals prescribed in clause 1 of this article. Any party dissatisfied with the decision of the Director of the Inventions Department may, within three months from receipt of that decision, institute legal proceedings in the court. After the court proceedings, the Director of the Inventions Department shall maintain, amend or invalidate the protected title on the basis of the decision of the court.

3. In the event of a disagreement arising in relation to remuneration to be paid, the author of an invention, utility solution or industrial design, or his successor in title, may institute legal proceedings in the court.

4. The time limit for resolution of appeals pursuant to the administrative procedures referred to in clauses 1 and 2 of this article shall be determined by the Council of Ministers.

Article 29 :

Jurisdiction and competence of the court :

The people's court of the provinces and cities directly under central authority or a corresponding administrative unit shall be a competent court of first instance to deal with appeals and disputes referred to in clause 3 of article 9, clause 2 of article 24 and clause 2 and 3 of article 28 of this Ordinance in accordance with the Civil procedure Code. In cases where one both parties are foreign organizations or persons, disputes shall upon the request of a plaintiff be judged by the

People's Court of Hanoi or by the People's Court of Ho Chi Minh City.

Article 30

Resolution of disputes concerning a contract of transfer of the ownership right or right to utilization of industrial property :

1. Disputes concerning a contract of transfer of the ownership or right to utilization of industrial property shall be resolved according to the trial procedures for disputes of a civil or economic contract.

2. Disputes concerning a contract of transfer of the ownership right or right to utilization of industrial property to which one or both parties are foreign organizations or individuals shall be resolved by the arbitration or other judicial body agreed both parties.

Article 31 :

Dealing with breaches :

Any individual who : commits acts which infringe the right of the owner of a protected title or the right of the author, illegally utilizes a trade mark or appellation of origin thereby causing damage to consumers, breaches the obligation to register a trade mark; discloses a secret invention or utility solution; breaches the provisions concerning the protection of industrial property abroad or any other provisions of Ordinance shall, depending on the seriousness of the infringement, be subject to a warning, administrative penalty or prosecution under the provisions of the Criminal Code.

Chapter V

FINAL PROVISIONS

Article 32 :

Encouragement of technical innovation and improvement and rationalization of production :

The State encourages technical innovation and improvement and rationalization of production (hereinafter referred to as innovation) and guarantees the rights of any author in relation thereto).

Basic units shall be responsible for the creation of favorable conditions for the innovations of working people, the examination and utilization of innovations and the payment of remuneration to the authors in accordance with the regulations of the Council of Ministers.

Article 33 :

The Council of Ministers shall issue detailed provisions for the implementation of this Ordinance.

The Supreme People's Court shall be responsible for the resolution of disputes in relation to the protection of industrial property.