Industrial Design

1. Definition of industrial design

An industrial design is the outer appearance of a product, represented in forms, lines, colors or any combination thereof. An industrial design shall be protectable if it is new, creative, and industrial applicable.

2. The subject matters that are not protected as an industrial design

– Outer appearance of an article that can be easily made by a person of intermediate skills in a corresponding field;

– Outer appearance of an article that is determined merely by its technical function;

– Outer appearance of civil or industrial construction facilities;

– Outer appearance of an article that is not visible in the course of usage;

– Design of an article having only artistic value.

3. Patentability of Industrial Designs

In order to be patented, an industrial design must be new, creative and industrial applicability.

(i) Novelty

An industrial design will be considered to be new if it substantially differs from industrial designs that are already disclosed to the public inside or outside Vietnam by means of use, written description or in any other way prior to the date of filing or the priority date, if priority is claimed, of the industrial design application.

For the novelty determination, two designs shall not be considered as substantially different from each other if they are different from each other only merely in design features that are not easily recognized and memorized and that cannot serve to distinguish the two designs as a whole.

An industrial design shall not be considered as publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret.  Also, an industrial design shall not be considered as lacking novelty if: (i) the design was unauthorizedly disclosed by another person without permission of the applicant; (ii) it was disclosed by the applicant in the form of a scientific report; and (iii) the design was displayed at a national exhibition of Vietnam or an official or officially recognized international exhibition, provided that the patent application for such an industrial design is filed within 6 months from the date of disclosure.

(ii) Creativity of Industrial Design

An industrial design shall be considered to be creative if, having regards to the industrial designs already disclosed to the public inside or outside the country prior to the date of filing or the priority date where priority is claimed, of the industrial design application, it cannot be easily created by a person ordinarily skilled in the art.

(iii) Industrial Applicability of Industrial Design 

An industrial design shall be considered to be capable of industrial application if it can serve as a template for mass production of the product having an exterior shape embodying such industrial design by industrial or handicraft methods.

4. Right to file ID application

The following organizations, individuals has right to file application for industrial design :

– Inventors who have created the invention by his/her own efforts and expenses.

– The organizations or individuals who have invested finance and material facilities to the inventors through employing or hiring in case an invention is created by the inventors during the course of employment or hire, unless otherwise agreed by the parties.

In case more than one organizations or individuals have jointly created or invested in the creation of an industrial design those organizations or individuals shall all have the right to registration and such right shall only be exercised with their consensus.

In addition, persons entitled to file an application may assign that right to other organizations or individuals through written contract or inheritance in accordance with the law

5. “First to File” Principle

Vietnam adopts the “First to file” principle. That means a patent will be granted to the person who is the first to file application for industrial design. If there are two or more applications filed for the same industrial design, all of the applicants are now required to reach an agreement to proceed with one application only. Without such an agreement, all those applications shall be refused.

6. Priority

Applicants for industrial design application are allowed to claim priority derived from the first application for the similar ID filed in Vietnam or in a member country of an international treaty having provisions on priority rights, to which the Socialist Republic of Vietnam is a party, such as Paris Convention, or a country having a mutual agreement with Vietnam to apply such provisions, provided that the applicant is a national of Vietnam or a member country.

To enjoy the priority right under the Paris Convention, a subsequent application for industrial design must be filed within six months from the filing date of the first application. If the subsequent application claims different priorities, the priority date for calculating the time limit shall be the date of the earliest priority.

7. Process of examination of application

7.1. Formality Examination

An application for industrial design, shall be automatically examined as to formality within the period of one month from the filing date. If the formalities are met, a Notification of Formality Acceptance shall be issued to confirm the accorded filing date and assigned application number. The filing is the actual date on which the National Office of Intellectual Property receives the application and stamps the receiving seal thereon.

7.2. Publication of Patent Application

An industrial design application shall be published within 2 months upon the acceptance date of the application as to formality.

7.3. Substantive Examination and Grant of Patent

The published applications for industrial design shall be automatically examined. The examination shall be conducted within 07 months from the publication date of the application.

The applicant may, any time before the Notification of Issuance is made, either at the applicant’s discretion or at the request of the NOIP, make amendments to the application. However, the amendments are not allowed to go beyond the disclosure originally filed.

7.4. Appeal/Opposition Proceedings

At any time during the period from the publication to the issuance of a patent, the applicant or any third party whose rights and interests are directly related to the granting of a patent shall be entitled to file written opposition with the NOIP, opposing either the grant or refusal to grant a patent.

Any opposition/appeal must be made in writing, accompanied by argumentation, and/or evidence to support the opposition. The opposition/appeal on the first instance must be submitted to the NOIP within 90 days from the date of receipt or awareness of the NOIP’s notification relating to refusal or grant of a patent as referred to above. In the event the party who file the opposition/appeal does not agree with the NOIP’s decision on the opposition, the party may appeal either to the MOST or the court.

8. Patent Term and Renewal

The patent for industrial design is effective from the granting date, lasts for five years from the filing date, and can be renewed for two further five year terms (subject to payment of renewal fee).

9. Rights and Obligations of Owners

9.1. Rights of the Patent Owners

A patent owner shall be granted the right to use or allow others to use the protected industrial design. The owner also has the right to prevent others from using the industrial design without his/her own authorization and to dispose thereof.

The use of an industrial design means carrying out the following acts: manufacturing products with an appearance embodying the patented industrial design; and circulating, advertising, offering for sale, stocking for circulation of and importing the above mentioned products.

9.2. Obligations of the Patent Owners

The patent owner has obligation to: (1) pay remuneration to the inventor(s); (2) pay the renewal fee.

9.3. Limitations to Patent Rights

The patent rights as mentioned above shall be limited by prior user’s rights and some others as follows:

9.3.1. Prior User’s Rights

The fact of the prior use to industrial design shall not be considered as an infringement of rights of the owner of the patented industrial design. Before the publication date of an industrial design application if there is a person who was using or had made substantial preparation for use of an industrial design independently created but identical with the industrial design claimed in the application, the said prior user shall be entitled to continue the use after the patent is granted, within the extent and volume of use or substantial preparation for the use already made. The prior user shall not be entitled to enlarge the extent and volume of use unless it is so permitted by the owner of the patented an industrial design. The prior user’s right shall not be allowed to be transferred except for the case it is transferred together with the business establishment where the prior user’s right is exercised.

9.3.2. Others

The following shall not be regarded as infringement of industrial design:

1.    Use of the industrial design for personal needs or non-commercial purposes, or for the purposes of evaluations, analysis, research, teaching, testing, pilot production or for collecting data to carry out procedures to obtain a production license, import or product marketing permit;

2.    Use of the industrial design only for the purpose of maintaining the operation of a foreign vehicle in transit or only temporarily entering into the territory of Vietnam;

3.    Use of the industrial design by prior user;

4.    Use of the industrial design by the licensee of a compulsory license authorized by the State competent authority.

10. Cancellation or Suspension of Patents

After a patent on industrial design is granted, any party may file a written request at any time with the NOIP to wholly or partially cancel or suspend such patent:

10.1. Cancellation

The grounds for cancellation are as follows:

a)  The patentee was not entitled to apply for the patent, nor assigned that right from the entitled person; or

b)  The patented industrial design did not meet the conditions for patentability at the time the patent was issued.

The patent shall be partly invalidated if the respective part of the subject matter failed to meet the criteria of protection.

10.2 Suspension

The grounds for suspension are as follow:

(a) The owner fails to pay the prescribed renewal fee as prescribed;

(b) The owner declares a disclaimer of the rights on the patent; or

(c) The owner no longer exists, and there is no lawful successor.

11. Infringement

The following acts shall be regarded as an infringement of the rights of the owner of industrial design:

– Using the protected industrial design insufficiently different from it within the validity term of the Patent on Industrial Design without permission of the owner;

– Using the industrial design without paying compensation in accordance with the provisions on provisional right.