Problems relating to Trade and Investment on Vietnam
17. Implementation of intellectual property rights ("IPRs") |
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Issue |
Issue details |
Requests |
Reference |
| (1) Insufficient Disclosure of IPRs Information | - In the developing countries, including Thailand, where needs for patent issuance are rising, due to the inadequate database for statistical data and information such as the number of pending patent application, it is difficult for the patent applicant to ascertain the risks from the patents of other firms. | - It is requested that National Office of Intellectual Property (NOIP) advances collaboration with IPO's of developed countries and overhauls the database relative to IPRs as soon as possible. | |
| (2) Disallowed Filing of Divisional Patent Application upon Examiners Decision of Refusal | - Upon examiners decision of refusal on patent application, the applicant is disallowed to divide the patent application. | - It is requested that National Office of Intellectual Property of Vietnam (NOIP) allows filing of divisional patent application during denial examination and patent examination. | - Article 115(1) |
| (Action) - In Vietnam, the applicant may file divisional patent application "before the concerned state management agency in charge of industrial property rights notifies a refusal or decides to grant a protection title." In addition, as a result of appeal against examiner's decision of rejection, should the case be remanded to state management agency in charge of industrial property rights, during the pendency of re-examination, the applicant may file divisional patent application. (Vietnam law on intellectual property (No. 50/2005/ QH11) Article 115(1). |
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| (3) Ambiguous Legislative Provision of the First to file Principle | - In the new developing countries where the needs grow for the local development of technology, many countries retain first to file principle in their patent laws. Ambiguous nature of the legislation makes it difficult to secure effective protection of intellectual property right (IPRs). Nowadays when the needs grow for cross-border R&D activities, first to file principle applied in plural countries could result in infringement. | - It is requested that NOIP: -- deregulates or repeals first to file principle, or provides a clear cut definition in legislation, -- and deregulates application of first to file principle on the cross-border R&D activity. |
- Decree No. 122/2010/ND-CP (Promulgated on 31 December 2010) |
| (4) High Cost of Patent Issue, and Increasing Complexity of Court Proceeding | - The filing date of patent application cannot be ensured in any language other than the Vietnamese, (whereas, it is possible to ensure the filing date by filing application in English in Indonesia, Malaysia, Singapore, etc.) | - It is requested that NOIP ensures also the filing date of patent application filed in English or in languages other than the Vietnamese. | |
| (5) Difficulty in performing Truth/False Survey at Customs of the product suspected of infringement | - MFS receives information from Vietnamese customs on suspected infringing products, however, giving only names of exporters/importers in principle. The informed party is barred from accessing the suspected products, unless MFS files a formal request for suspension that requires the bond posting. Being denied the opportunity to determine the authenticity of the suspected products, the right holder of IPRs has no alternative but agreeing to the release of the suspected products. The bond-posting requirement disables the measures at the water's edge. - Customs authority disallows release of questionable pictures, pending applicant's filing of application and bond posting for seizure of the goods. Thus the only method of determining infringement is the information on exporter and/or importer given in the discovery notice of questionable products. |
- It is requested that NOIP takes steps to modify the scheme that allows the right-holder's opening of cargo in order to ascertain the authenticity of the suspected goods, when it receives information on suspected infringing products. - It is requested that GOV releases the questionable pictures prior to applicant's filing of request for seizure. |
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| (Action) - On 15 March 2015, customs, Ministry of Finance (MOF), promulgated Circular No. 13/2015/TT-BTC as a new measure to strengthen customs implementation of (New) "Law No. 54/2014/QH13 on customs, 30 January 2015, defining inspection, supervision, temporary suspension of customs procedures for exported and imported goods that are subjects of IPRs control of counterfeit goods and goods infringing intellectual property right". [Reference] Circular No. 13/2015/TT-BTC: http://www.wipo.int/wipolex/en/text.jsp?file_id=383835 [In English (Version with Automatic Translation Tool)] |
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| (6) Inadequate Restrictive Rules on Reproduction for Private Use | - Reproduction should be allowable to the extent deemed necessary to provide search service for internet information. Incidentally, Article 47-6 of the Copyright Act, Japan restricts the right of copyright holder, subject to discontinuing the use upon becoming aware of the fact that the copyrighted materials were illegally made transmittable. - Reproduction for private use actually takes place from an officially purchased music CD into a personal computer (PC), from PC to portable audio player, from broadcast programme to audio/video recorder for time-shift, as well as to smartphone (for listening/viewing while away from home), digitization of books purchased for tablet reading, etc. In light of the fact that all of these conducts cannot be considered injurious to copyright holder, the right of copyright holder requires restrictions. Nevertheless, in certain countries, these conducts are considered illegal, or even if stipulated as legal on certain conducts, such stipulation could be insufficient. Furthermore, in Japan, Article 30 of the Copyright Act restricts copyright relatively broadly in regard to reproduction for private use. - Reproduction of copyrighted materials should be permissible to the extent deemed necessary for developing or testing practical application of audio/video recording technology. Incidentally, in Japan, under Article 30-4 of the Copyright Act, restrictions on copyright are about to be enforced. - Reproduction of copyrighted materials should be permissible to the extent necessary for information analysis using computers, etc. In Japan Article 47-7 of Copyright Act restricts copyright in this regard. - Study/analysis of computer programme amounts to a conduct for extracting ideas. Copyright should not extend to the extent of intermediate reproduction / adaptation made in its process. In addition, in Japan, The copyright subcommittee on legal issues of the Council for cultural affairs has reached the conclusion that certain restrictions on copyright are necessary. It only awaits amendment of the Law. - Reproduction of copyrighted materials should be possible to the extent deemed necessary to carry out, smoothly with high efficiency, provision of service that employs telecommunication technology in its process of communication, viewing, listening and/or executing copyrighted materials. Furthermore, in Japan, copyright is restricted under the Copyright Act 47-8 (reproduction for use of copyrighted materials in computer), and 47-5 (reproduction for prevention of transmission interference, etc.)(Pending enforcement), and Draft Amendment of 2012 copyright Act 47-9 (use of copyright necessary to process information employing telecommunication technology). |
- It is requested that NOIP takes steps to introduce the restriction of the copyright relative to provision of search service for internet information. - It is requested that NOIP introduces restriction on copyright for reproduction for private use on a realistic basis. - It is requested that NOIP introduces restrictions on copyright, relative to testing for technological development or for practical application of the technology. - It is requested that NOIP introduces restrictions on copyright relative to reproduction for the purpose of information analysis research. - It is requested that NOIP takes steps to introduce restrictions on copyright for the purpose of reverse engineering. - It is requested that NOIP takes steps to introduce restrictions on copyright for the purpose of: -- temporary storage for use of appliances/in the communication process, and -- provision of service using the telecommunication technology. |
- Self-reproducing one single copy for the purposes of Science Research and Individual Teaching (Article 25.1.a)) |
| (Action) - In Vietnam, while it is possible to seek primary liability upon the primary internet user under the conventional copyright scheme, the legislative system is not yet established for seeking secondary liability upon the secondary party such as internet service provider. In Vietnam deliberation has begun since common Circular of July 2012 on "proposed drafting of legislation on the secondary liability upon internet service provider and other intermediary institutions". (Source: Article dated 31 March 2015 on "copyright infringements in Vietnam on use of internet service", national center for industrial property information and training (INPIT) "IPRs information data bank in developing countries, etc.") |
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