Patent Protection, Enforcement And Court System In Vietnam

PROTECTION

Question 1
What is the term of protection of a patent in Vietnam?

Answer 1
In Vietnam, a patent life last for twenty (20) years counted from the filing date.

Question 2
Is it possible to extent the lifetime of a patent?

Answer 2
No.


ENFORCEMENT

Question 1
What are the types of patent enforcement action are available in Vietnam?

Answer 1
§ Administrative Actions;
§ Civil Actions;
§ Criminal Actions; and
§ Border Control Measures.

Administrative Actions

Administrative authority has been vested with various authorities, from central to local government, among them the most effective are the Board of Inspectorate in Science and Technology within the Ministry of Science and Technology and Department of Science and Technology at province, also Market Management Department of the Ministry of Trade, Economic Police, Customs, Specialized Industrial Property Inspectorates, and People committees.

Civil Actions

If the patent owner seeks damages for infringement, it must institute a civil proceeding. Only the courts have jurisdiction to award monetary damages.

Complaints are lodged with People's Court of the province; town or city with is directly responsible to the central government.

Where one of the parties to the action is a foreigner the case must be filed with the People's Court of Hanoi or Ho Chi Minh City regardless of where the infringing activity takes place or other parties may reside.
The foreign plaintiff can choose whether to file in Hanoi or Ho Chi Minh City. It usually takes 6 months to 1 year for a case to come to trial. Decisions of the People's Court are generally issued and available within 15 days.

Decisions of the First instance Court may be appealed to the Appeal Court of the Supreme Court, which is the highest at final court. Decisions are usually issued by the Supreme Court within one year of appeal.

Complaints must be submitted directly or through a local representative in the case of foreign entities.

Courts are empowered to issue a temporary and urgent order to stop the infringing activity pending determination at trial, provided the evidence in the complaint justifies such action.

Criminal Actions

A patent owner may make denunciation for the investigation, and if convicted criminal actions to be brought against an infringer pursuant to applicable provisions of the Criminal Code.

It is to be noted that firstly under the Criminal code of Vietnam only individuals are subject to criminal liability, that limits much of action when 1P infringement are made by legal entity, the personal responsibility in such activities should be established. 'I' Secondly the precondition for criminal offence is that the infringement causing serious consequence, or the infringer has previously been administratively punished, or has been already sentenced for the same crime but the criminal record has not been cleared. Factors that need badly explanation and to date are not given any further details guidance for the application.

Prosecution authority lies with: (1) the police who can investigate, seize goods and arrest infringers, and (2) the public prosecutorates who have, in addition to having the same powers as police, the authority to indict and prosecute infringers.

The police generally initiate investigations upon a patent owner's formal complaint.

The patent owner is usually required to furnish details relating to the alleged infringement, including its ownership of the infringed patent and its business interests and locations, as well as the names of the alleged infringers and the nature of the infringing act.

If sufficient evidence is found, public prosecutors can then open investigations and indict alleged infringers for crimes of infringement before the court.

Cases are brought before the People's Court of the district having jurisdiction over the place where the alleged infringement occurred. If one or both parties are foreign, the case can only be filed before the People's High Court of Hanoi or Ho Chi Minh City.

Decisions of the People's Court may be appealed to the upper court either the People's Court of Province or City or to the Appeal Court of the Supreme Court, the highest and final court.

The punishment can be very severe, ranging from 6 months to 3 years imprisonment for 1P infringement. If the counterfeit goods are foods, drugs, agriculture chemical products, up to IS to 20 years' imprisonment. In addition, a counterfeit can be liable to pay a monetary tine, forbidden from holding certain position, disqualified from certain profession, in a period up to 5 years.

Question 2
How can the patent owner most effectively make his point to stop an infringement?

Answer 2
IP Enforcing Administrations and Courts are empowered to determine amount of the owner's loss and to grant a temporary and urgent measure to stop the infringing activity, the patent owner can request appropriate Enforcing authorities or initiate a law suit at the Court and request the Court carry out the relevant measure in order to overcome the consequence of the infringement.

Question 3
Are protective orders available in Vietnam? For example, does Vietnam's patent law require the patent owner to send a warning letter to an alleged infringer before a court action can be taken against him?

Answer 3
No. The patent owner has right (but not be obligated) to inform the infringer that he is the owner of the patent and request the infringer to stop the infringing activity.

Question 4
Is it possible to seek a preliminary injunction? If so, how long would this action take?

Answer 4
We wonder whether "a preliminary injunction" in this question means "a injunction/decision to grant a temporary and urgent measure. If yes, the answer of this question is "Yes". When or before initiating a lawsuit at the Court, the patent owner has right to request the court to grant temporary and urgent measures to stop the infringing activity. Such measures are Seizing Goods that infringe Industrial Property Rights, interdicting change the status, interdicting assign the property right, The person who made a such request is obligated to guarantee the payment of damages to such measure debtor in case of improper application of such provisional measure.

In urgent circumstances require protect evidences and prohibit a serious consequences that may be occurred, after receiving the request and evidences, within 48 hours as from the moment of receipt of the request, the judge in charge of the case must consider and issue a Decision of temporary and urgent measure. If the request is not accepted, the court must inform the requester by a written letter in which the reasons for unacceptance are given.

In other cases, the time limit for granting the above-mentioned decision is 3 days counted from the date of receiving the request if the person who made a such request must not perform guarantee measures or immediately after he perform guarantee measures.

Question 5
How long would a patent infringement/patent invalidation case take in Vietnam?

Answer 5
It varies upon case by case but it takes at least four to six months counted from the date of handling the ease. In practice, this term may extend 12-18 months.

Question 6
How are damages/royalties assessed?

Answer 6
Principles of determination of loss caused by IPR infringements:

- the loss caused to the holder of IPR by an infringement comprise both tangible and intangible loss: (i) Tangible losses comprise loss to property, decreased income and profits and reasonable costs for prevention and rectification of such loss, reasonable attorney fees and other, actual loss, loss of business opportunities, decrease in the business reputation and other intangible loss; (ii) Intangible loss comprise of loss to the dignity, honour, prestige and other intangible loss.

- the level of loss shall be determined on the basis of the actual losses incurred by the holder of IPRs due to the infringement upon such IPRs.

Bases for determination of losses caused by IPR infringements:

If the plaintiff succeeds in proving that an IPR infringement has caused tangible loss to him/her, lie/she shall have the right to ask the court to determine the level of damages on one of the following bases:

- the total tangible loss as determined in cash plus the profits gained by the IPR infringer if such profits have not yet been included in the total tangible loss;

- the value of transfer of the IPR subject matter with the assumption that the defendant has been transferred by the plaintiff the right to use that industrial property subject matter under a contract for using such industrial property subject matter to the extent equivalent to the act of infringement committed;

- in case it can not determine as above mentioned, the tangible loss is fixed by the court but not exceeding VND 500 million.

If the plaintiff succeeds in proving that such IPR infringement has caused intangible loss to him/her, he/she may request the court to determine an appropriate level of damages ranging from VND 5 million to VND 50 million depending on the level of loss.

In addition, the plaintiff may request the court to oblige the infringer pay the reasonable attorney fees.

Question 7
Can the alleged infringer sue for damages if the patent owner fails to proof infringement in court?

Answer 7
Yes. In case the alleged infringer succeeds in proving that the request for provisional measure is not well grounded and caused damages to him, the court will obligate the patent owner to pay of compensation for these damages.

In case the court decides that there is no infringing action, the alleged infringer may request the patent owner to pay of compensation for damages which are determined as in above answer (6).