Circular issued to guide implementation of amended IP law

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(Biz Hub)--Law 36/2009/QH 12 dated June 29, 2009, amends and supplements a number of Articles of Law on Intellectual Property 2005 (Law on Intellectual Property) and provides some new amended regulations on establishment of industrial property rights, including, inter alia, regulations on rights to registration of a collective mark, certification mark in respect of the geographical name or other signs indicating the geographical origin of special products from Viet Nam, the first-to-file principle, time limits for examination of the applications for registration of IP objects.

Accordingly, a number of Articles of Decree No. 103/2006/ND-CP, guiding the implementation of a number of Articles of the Law on Intellectual Property have been amended and supplemented under Decree No. 122/2010/ND-CP dated 31 December 2010 (Decree 103). In connection with such amendments and supplementations, the Ministry of Science and Technology has issued Circular No. 05/2013/TT-BKHCN dated February 20, 2013, amending and supplementing a number of Articles of Circular No. 01/2007/TT-BKHCN dated February 14, 2007, guiding the implementation of Decree 103, amended and supplemented under Circular No. 13/2011/TT-BKHCN dated July 30, 2010, and Circular No 18/2011/TT-BKHCN dated July 27,2011.

Under Circular 05, the application for registration of a certification mark certifying the geographical origin of the products, or collective mark, certification mark containing a geographical name or other signs indicating the geographical origin of the local special products, requires a geographical map certified by and a letter of consent from the local People's Committee of the city, province directly under the central authority. And regarding the signs indicating the geographical origin of a product, it is specified that such signs may be local geographical names (including official or common names currently or historically used), local symbols (including images of local maps, typical works, famous landscapes, etc) or other relevant signs used for special products from the locality, plants or animals grown at the locality or products manufactured from such plants or animals, products exploited from the natural resources at the locality, products of the developed industries of the locality.

Regarding the time limits for examination of applications for registration of IP objects, Circular 05 clarifies that the time period served for the applicant to respond to a official notification shall not be counted to the time limit for examination of a registration application, and such time period is counted from the issuing date of the notification to the submitting date of the response, or the time period fixed in the notification, including permitted extension time.

Circular 05 also provides details for application of the first-to-file principle in respect of patent applications, industrial applications and trademark applications which have been determined to satisfy the patentable conditions or registration requirements, respectively (complied applications). Namely, for checking the priority in respect of the relating complied patent applications for the purpose of applying , it is required to do the patent search upon, but not limit to, the mandatory patent information resource in respect of all patent applications received by the National Office of Intellectual Property ("NOIP") up to the time of the checking, which have the same ICP (counting to the third index) and sooner filing date or priority date (if applicable) in comparison with the ones of the patent applications in question, and have not yet been published or have been published with the publication date later than filing date or priority date of the patent application in question.

(i) In checking the priority for the application of the first-to-file principle for complied industrial design applications, it is required to do the industrial design search upon, but not limit to, the mandatory industrial design information resource in respect of all industrial design applications received by the NOIP up to the time of checking, having the publication date, filing date or priority date (if applicable) sooner than filing date or priority date (if applicable) of the industrial design application in question; all industrial design applications and patents for industrial design published by other organizations, countries within the time of 25 years prior to the filing date or priority date (if applicable) of the industrial design application in question; and other industrial design information collected and kept by the NOIP. (ii) In checking the priority for the application of the first-to-file principle for complied trademark applications, it is required to do the trademark search upon the trademark information in respect of all trademark applications received by the NOIP, having the publication date, filing date or priority date (if applicable) sooner than filing date or priority date (if applicable) of the trademark application in