National Office of Intellectual Property of Viet Nam
- Section 1: General
- Section 2: Private and/or non-commercial use
- Section 3: Experimental use and/or scientific research
- Section 4: Preparation of medicines
- Section 5: Prior use
- Section 6: Use of articles on foreign vessels, aircrafts and land vehicles
- Section 7: Acts for obtaining regulatory approval from authorities
- Section 8: Exhaustion of patent rights
- Section 9: Compulsory licenses and/or government use
- Section 10: Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
- Section 11: Other Exceptions and Limitations
Section 1. General
1. As background for the exceptions and limitations to patents investigated in this questionnaire, what is the legal standard used to determine whether an invention is patentable? If the standard for patentability includes provisions that vary according to the technology involved, please include examples of how the standard has been interpreted, if available. Please indicate the source of law (statutory and-or case law) by providing the relevant provisions and/or a brief summary of the relevant decisions.
According Article 58 Law on Intellectual Property year 2005 Amending and Supplementing year 2009:
1. An invention shall be protected by mode of grant of invention patent when it satisfies the following conditions: (a) Being novel; (b) Involving an inventive step; (c) Being susceptible of industrial application.
2. Unless it is a common knowledge, an invention shall be protected by mode of grant of utility solution patent when it satisfies the following conditions: (a) Being novel; (b) Being susceptible of industrial application.
Correspondingly, please list exclusions from patentability that exist in your law. Furthermore, please provide the source of those exclusions from patentability if different from the source of the standard of patentability, and provide any available case law or interpretive decisions specific to the exclusions.
According Article 59:
The following subject matters shall not be protected as inventions:
1. Scientific discoveries or theories, mathematical methods;
2. Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;
3. Presentations of information;
4. Solutions of aesthetical characteristics only;
5. Plant varieties, animal breeds;
6. Processes of plant or animal production which are principally of biological nature other than microbiological ones;
7. Human and animal disease prevention, diagnostic and treatment methods.
According Article 8:
Not to protect intellectual property objects which are contrary to social ethics and public order and prejudicial to defense and security.
2. As background for the exceptions and limitations to patents investigated in this questionnaire, what exclusive rights are granted with a patent? Please provide the relevant provision in the statutory or case law. In addition, if publication of a patent application accords exclusive rights to the patent applicant, what are those rights?
Article 123 stipulates the exclusive rights of the patent owners as follows:
a/ To use or authorize others to use industrial property objects ;
b/ To prevent others from using industrial property objects;
c/ To the transfer of ownership right.
Article 131 stipulates the provisional rights of the patent applicant:
Where an applicant for registration of an invention knows that such invention is being used by another person without prior use right for commercial purposes, the applicant may notify in writing the user of the filing of his/her application, clearly specifying the filing date and the date of application publication in the Official Gazette of Industrial Property so that the later shall terminate or continue such use. Where the person notified of contents specified above continues using such invention, the owner of such invention, shall have the right to request the user of such invention to pay a compensation equivalent to the price for licensing of such invention, within the relevant scope and duration of use.
3. Which exceptions and limitations does the applicable law provide in respect to patent rights (please indicate the applicable exceptions/limitations):
Private and/or non-commercial use;
Experimental use and/or scientific research;
Preparation of medicines;
Prior use;
Use of articles on foreign vessels, aircrafts and land vehicles;
Acts for obtaining regulatory approval from authorities;
Exhaustion of patent rights;
Compulsory licensing and/or government use;
Exceptions and limitations related to farmers’ and/or breeders’ use of patented inventions.
Section 2: Private and/or non-commercial use
4. If the exception is contained in statutory law, please provide the relevant provision(s):
Article 125. 2. Owners of industrial property objects shall not have the right to prevent others from performing the following acts:
a/ Using inventions in service of their personal needs or for non-commercial purposes.
5.-6.
[Note from the Secretariat: response was not provided.]
Section 3: Experimental use and/or scientific research
11. If the exception is contained in statutory law, please provide the relevant provision(s):
Article 125. 2. Owners of industrial property objects shall not have the right to prevent others from performing the following acts:
a/ Using inventions for purpose of evaluation, analysis, research, teaching, testing, trial production.
12.-13.
[Note from the Secretariat: response was not provided.]
14. Does the applicable law make a distinction concerning the nature of the organization conducting the experimentation or research (for example, whether the organization is commercial or a not-for-profit entity)? Please explain:
No distinction
15. If the applicable law defines the concepts “experimental use” and/or “scientific research”, please provide those definitions by citing legal provision(s) and/or decision(s):
[Note from the Secretariat: response was not provided.]
16. If the purpose of experimentation and/or research is relevant to the determination of the scope of the exception, please indicate what that purpose is:
Experimentation and/or research should aim to:
determine how the patented invention works
determine the scope of the patented invention
determine the validity of the claims
seek an improvement to the patented invention
invent around the patented invention
for any purposes
17. If any of the following criteria is relevant to the determination of the scope of the exception, please indicate:
Research and/or experimentation must be conducted on or relating to the patented invention (“research on”)
Research and/or experimentation must be conducted with or using the patented invention (“research with”)
Please explain by citing legal provision(s) and/or decision(s):
Article 125. 2 a. Using inventions for purpose of evaluation, analysis, research, teaching, testing, trial production.
18. If the commercial intention of the experimentation and/or research is relevant to the determination of the scope of the exception, please indicate whether the exception covers activities relating to:
The commercial intention of the experimentation and/or research is not relevant.
19.-22.
[Note from the Secretariat: response was not provided.]
Section 4: Preparation of medicines
23. If the exception is contained in statutory law, please provide the relevant provision(s):
Article 125. 2. Owners of industrial property objects shall not have the right to prevent others from performing the following acts:
a. Using inventions for non-commercial purposes
24.-26.
[Note from the Secretariat: response was not provided.]
27. Does the applicable law provide for any limitations on the amount of medicines that can be prepared under the exception?
No
28.-30.
[Note from the Secretariat: response was not provided.]
Section 5: Prior use
31. If the exception is contained in statutory law, please provide the relevant provision(s):
Article 125. 2. Owners of industrial property objects shall not have the right to prevent others from performing the following acts:
d. Using inventions by persons with the prior use right.
32.-35.
[Note from the Secretariat: response was not provided.]
36. According to the applicable law, can a prior user license or assign his prior user’s right to a third party?
Yes for assignment
No for license
37. In case of affirmative answer to question 36, does the applicable law establish conditions on such licensing or assignment for the continued application of the prior use exception?
Yes
If yes, please explain what those conditions are:
Article 134. Right of prior use of inventions and industrial designs
2. Holders of prior use right to inventions may not assign such right to others, unless that right is assigned together with the transfer of business or production establishments which have used or are prepared to use the inventions.
38. Does this exception apply in situations where a third party has been using the patented invention or has made serious preparations for such use after the invalidation or refusal of the patent, but before the restoration or grant of the patent?
No
If yes, please explain the conditions under which such use can continue to apply:
Article 134. Right of prior use of inventions and industrial designs
1. In case a person has, before the filing date or priority date (if any) of an invention application, used or prepared necessary conditions for using an invention identical with the protected invention stated in that application but created independently (below referred to as prior use right holder), then after a protection title is granted, he/she may continue using such invention within the scope and volume of use or use preparations without having to obtain permission of or paying compensations to the owner of the protected invention.
39.-41.
[Note from the Secretariat: response was not provided.]
Section 6: Use of articles on foreign vessels, aircrafts and land vehicles
42. If the exception is contained in statutory law, please provide the relevant provision(s):
Article 125. 2. Owners of industrial property objects shall not have the right to prevent others from performing the following acts:
c. Using inventions only for the purpose of maintaining the operation of foreign means of transport in transit or temporarily staying in the Vietnamese territory.
43. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
[Note from the Secretariat: response was not provided.]
44.(a) What are the public policy objectives for providing the exception? Please explain:
For maintaining the operation of foreign means of transport in transit or temporarily staying in the Vietnamese territory.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
45. The exception applies in relation to:
Vessels
Aircrafts
Land Vehicles
Spacecraft
46. In determining the scope of the exception, does the applicable law apply such terms as ”temporarily” and/or “accidentally” or any other equivalent term in relation to the entry of foreign transportation means into the national territory? Please provide the definitions of those terms by citing legal provision(s) and/or decision(s):
The term ”temporarily” is applies.
No definition
47. Does the applicable law provide for any restrictions on the use of the patented product on the body of the foreign vessels, aircrafts, land vehicles and spacecraft for the exception to apply (for example, the devices to be used exclusively for the needs of the vessel, aircraft, land vehicle and/or spacecraft)? Please explain your answer by citing legal provision(s) and/or decision(s):
Only for the purpose of maintaining the operation
48.-50.
[Note from the Secretariat: response was not provided.]
Section 7: Acts for obtaining regulatory approval from authorities
51. If the exception is contained in statutory law, please provide the relevant provision(s):
Article 125. 2. Owners of industrial property objects shall not have the right to prevent others from performing the following acts:
a. Testing, trial production or information collection for carrying out procedures of application for licenses for production, importation or circulation of products.
52.-54.
[Note from the Secretariat: response was not provided.]
55. The exception covers the regulatory approval of:
Any products
56. Please indicate which acts are allowed in relation to the patented invention under the exception?
Making
Using
Selling
Offering for sale
Import
57. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):
No
58.-59.
[Note from the Secretariat: response was not provided.]
Section 8: Exhaustion of patent rights
60. Please indicate what type of exhaustion doctrine is applicable in your country in relation to patents:
International
If the exception is contained in statutory law, please provide the relevant provision(s):
Article 125. 2. Owners of industrial property objects shall not have the right to prevent others from performing the following acts:
b. Circulating, importing, exploiting utilities of products having been lawfully put on the market, including overseas markets.
61.(a) What are the public policy objectives for adopting the exhaustion regime specified above? Please explain:
Diversify sources of goods of competitive price.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
62. Does the applicable law permit the patentee to introduce restrictions on importation or other distribution of the patented product by means of express notice on the product that can override the exhaustion doctrine adopted in the country?
[Note from the Secretariat: response was not provided.]
63. Has the applicable exhaustion regime been considered adequate to meet the public policy objectives in your country? Please explain:
Yes
64. Which challenges, if any, have been encountered in relation to the practical implementation of the applicable exhaustion regime in your country? Please explain:
[Note from the Secretariat: response was not provided.]
Section 9: Compulsory licenses and/or government use
Compulsory licenses
65. If the exception is contained in statutory law, please provide the relevant provision(s):
Article 125. 2. Owners of industrial property objects shall not have the right to prevent others from performing the following acts:
e. Using inventions by persons authorized by competent state agencies
66. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
[Note from the Secretariat: response was not provided.]
67. What grounds for the grant of a compulsory license does the applicable law provide in respect to patents (please indicate the applicable grounds):
Non-working or insufficient working of the patented invention
Refusal to grant licenses on reasonable terms
Anti-competitive practices and/or unfair competition
Public health
National security
National emergency and/or extreme urgency
Dependent patents
68.(a) What are the public policy objectives for providing compulsory licenses in your country? Please explain:
To fulfill the urgent needs of the society
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
69. If the applicable law provides for the grant of compulsory licenses on the ground of “non-working” or “insufficient working”, please provide the definitions of those terms by citing legal provision(s) and/or decision(s):
Article 136 Obligation to use inventions
1. Owners of inventions are obliged to manufacture protected products or apply protected processes to satisfy the requirements of national defense, security, disease prevention and treatment and nutrition for the people or to meet other social urgent needs. When there arise the needs mentioned in this Clause but invention owners fail to perform such obligation, the competent state agency may license such inventions to others without permission of invention owners
70. Does the importation of a patented product or a product manufactured by a patented process constitute “working” of the patent? Please explain your answer by citing legal provision(s) and/or decision(s):
[Note from the Secretariat: response was not provided.]
71. In case of the grant of compulsory licenses on the grounds of non-working or insufficient working, does the applicable law provide for a certain time period to be respected before a compulsory license can be requested?
Yes
If yes, what is the time period?
Where the holder of exclusive right to use such invention fails to fulfill the obligations to use such invention upon the expiration of a 4-year duration as from the date of filing the invention registration application and the expiration of a 3-year duration as from the date of granting the invention patent
72. In case of the grant of compulsory licenses on the grounds of non-working or insufficient working, does the applicable law provide that a compulsory license shall be refused if the patentee justifies his inaction by legitimate reasons?
Yes
If yes, what are “legitimate reasons”?
[Note from the Secretariat: response was not provided.]
73.-74.
[Note from the Secretariat: response was not provided.]
75. If the applicable law provides for the grant of compulsory licenses on the ground of dependent patents, please indicate the conditions that dependent patents must meet for a compulsory license to be granted:
According to Article 137, the conditions are that the owner of a dependent invention can prove that his/her invention makes an important technical advance as compared with the principal invention and has a great economic significance.
76. Does the applicable law provide a general policy to be followed in relation to the remuneration to be paid by the beneficiary of the compulsory license to the patentee? Please explain:
The licensee shall have to pay the holder of exclusive right to use the invention a satisfactory compensation depending on the economic value of such use right in each specific case, and compliant with the compensation bracket set by the Government.
77.-80.
[Note from the Secretariat: response was not provided.]
Government use
81. If the exception is contained in statutory law, please provide the relevant provision(s):
Article 145.1 In the following cases, the right to use an invention may be licensed to another organization or individual under a decision of the competent state agency
a. Where the use of such invention is for public and non-commercial purposes or in service of national defense, security, disease prevention and treatment and nutrition for people or other urgent needs of the society.
82. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
[Note from the Secretariat: response was not provided.]
83. What grounds for the grant of government use does the applicable law provide in respect to patents (please indicate the applicable grounds):
Public health
National security
National emergency and/or extreme urgency
Any other public service
84.-88.
[Note from the Secretariat: response was not provided.]
Section 10: Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
Farmers' use of patented inventions
89. If the exception is contained in statutory law, please provide the relevant provision(s):
Sentence "Using inventions in service of personal needs or for non-commercial purposes" of Article 125.2.a is applied.
90.-94.
[Note from the Secretariat: response was not provided.]
Breeders' use of patented inventions
95. If the exception is contained in statutory law, please provide the relevant provision(s):
Sentence "Using inventions in service of personal needs or for non-commercial purposes" of Article 125.2.a is applied.
96.-100.
[Note from the Secretariat: response was not provided.]
Section 11: Other Exceptions and Limitations
101.-103.
[Note from the Secretariat: the applicable law of Viet Nam does not provide other exceptions and limitations.]
[End of Questionnaire]
October 2012