PROCEDURES AND EXPENSE FOR REGISTRATION OF INDUSTRIAL DESIGNS – PART 2

Legal basis:

Consolidated document 07/VBHN-VPQH on Law on intellectual property in 2019 (“Consolidated 07”);

Decree 103/2006/NĐ-CP detailing and guiding the implementation of a number of articles of the law on intellectual property regarding industrial property issued by the Ministry of Science and Technology;

Decree 122/2010/NĐ-CP is amending and supplementing a number of articles of Decree 103/ 2006/ND-CP;

Circular 01/2007/TT-BKHCN is guiding the implementation of Decree 103/2006/NĐ-CP;

Circular 16/2016/TT-BKHCN on amendments to the circular 01/2007/TT-BKHCN.

1. Who has the right to register an industrial design registration application?

Based in Article 86 Consolidated 07, the following organizations and individuals shall have the right to register industrial designs:

• The author or legal successor of the author who created the industrial design;

• Organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring, unless otherwise agreed by the parties involved.

• A person who has the registration right as stipulated may assign such right to other organizations or individuals by a written contract, bequest, or inheritance by the law, even where a registration application has already been filed.

2. Applications and procedures for requesting industrial design registration

A. Industrial Design Registration Applications:

Based in Article 100 Consolidated 07 and Article 33 Circular 01/2007/TT-BKHCN, Article 1.28 Circular 16/2016/TT-BKHCN amending Circular 01/2007/TT-BKHCN, stipulating that dossiers of request for registration of industrial designs include:

• 02 Industrial design registration declarations, (Form No. 03-KDCN Appendix A of Circular No. 01/2007/TT-BKHCN);

• 01 Description of the industrial design. The description of the industrial design must satisfy the stipulates of Article 33.5 Circular No. 01/2007/TT-BKHCN which including the following contents: Name of industrial design, field of use of industrial design, nearest similar industrial design, list photos or drawings, detailed description of the industrial design, claim for protection of industrial designs;

• 04 sets of photos/drawings of industrial designs;

• Proof of payment of fees.

The following documents may be submitted after an industrial design registration application has been submitted:

• Power of attorney;

• Documents evidencing the basis of the right of priority (certification of the receiving authority for the first copy of the application(s); the transfer of priority if the right is enjoyed by someone else);

• Documents confirming the legal right to register, if the applicant enjoys the right of registration of another person (certificate of inheritance, certificate or written agreement transferring the right to submit an application; employment contract or labour contract);

• Documents claiming ownership or the lawful use of the protected industrial design by another person, if the industrial design stated in the application contains such object.

All documents of an Industrial Design Registration Application must be made in Vietnamese. Documents created in other languages are only used for comparison and reference.

B. What are the steps for an industrial design registration?

Step 1: Submitting the Applications

Submit the Applications directly at the Department of receiving or returning results; or send by post to the headquarters of the National Office of Intellectual Property (“NOIP”) or the Representative office of the National Office of Intellectual Property.

The reception addresses:

● NOIP: 384-386, Nguyen Trai Street, Thanh Xuan District, Hanoi.

● Representative office of the NOIP in Da Nang City: 3rd floor, 135 Minh Mang Street, Khue My Ward, Ngu Hanh Son District, Da Nang.

● Representative office of the NOIP in Ho Chi Minh City: 7th Floor, Ha Phan Building, 17, 17A, 19 Ton That Tung Street, Pham Ngu Lao Ward, District 1, HCMC…

*Note: during the time when the Covid-19 pandemic is complicated in HCMC and southern provinces:

(*) For online submissions: The applicant carries out the application procedure at the National Office of Intellectual Property's online public service portal at the website http://dvctt.noip.gov.vn:8888/HomePage.do, then send the payment order of the bank together with the confirmation of online application to the NOIP.

(**) For applications submitted by post: The applicant couriers the application, official letters, other documents, and payment order to the head office of NOIP.

Step 2: Carrying out the formal examination of industrial design registration applications

An industrial design registration application shall be formally examined within one (01) month from the filing date.

Based in Article 109 Consolidated 07, the regulations on formal examination of industrial design applications as follows:

• Formal examination to assess the validity of the application.

• If the application is valid, NOIP issues a notice of acceptance of a valid application.

• If the application is not valid, the NOIP will carry out the following procedures:

- Issue a notice of intention to refuse to accept the invalid application, clearly stating the reasons for the refusal and setting a time limit for the applicant to correct errors or object to such deliberate refusal.

- Issue a notice of refusal to accept the invalid application if the applicant fails to correct errors, improperly corrects errors, or without a valid opinion to oppose the intention to refuse on;

Step 3: Publishing the industrial design registration application

Based in Article 110 Consolidated 07, the industrial design registration application is published in the Industrial Property Official Gazette within two (02) months from the date the application is accepted as a valid application.

Step 4: Conducting substantive examination of industrial design registration application

Based in Article 114 Consolidated 07, the time limit for substantive examination of industrial designs shall not exceed seven (07) months from the date of application publication. The substantive examination aims to assess the possibility of granting an industrial design patent when the industrial design registration application has been recognized as valid.

Step 5: Grant of Patent for industrial design

If the industrial design registration application does not fall into the case of refusal to grant a protection title specified in Article 117 of the Consolidated Document 07 and the fee is paid, the NOIP shall decide to grant the design patent. Industrial property, and recorded in the National Register of Industrial Property.

Above is some detailed information about the application list and procedures for conducting industrial design registration. To better understand the costs and the legal issues involved, ADK Lawyers has a detailed article in Part 3 (continued).

ADK & Co Vietnam Lawyers Law Firm