1. Definition of Invention/Utility Solution Inventions are technical solutions relating to a product or process which is to solve a…
Transfer of rights on IP objects
According to our current regulations of law, the rights on IP objects in Vietnam (except geographical indication) can be transferred. Particularly, an IP object can be licensed or assigned. However, to license an IP object in Vietnam, such object must be already protected in Vietnam, i.e. it has been granted patents or certificates of registration. Those IP objects not yet registered in Vietnam cannot be licensed.
The assignor or licensor must guarantee that he is the registered owner of the assigned/licensed object and that the assignment/license must not result in dispute with a third party. If dispute arises from the assignment/license of an IP object, the assignor/licensor shall be responsible for settlement.
For geographical indication, it should be noted that the rights to this kind of IP object may not be assigned or licensed.
For trademark, the assignment/license of a trademark must not cause confusion in terms of ơnership or origin of goods and/or services bearing the trademark.
Assignment or license agreements of IP objects must be made in writing, and contain minimum provisions applicable to each kind (prescribed under our law). If the assignment or license of an IP objects is included in another agreement (such as technology transfer contract, etc.), it must be made in a part separate from the other parts.
The assignment or license agreement must include the followings:
(i) The identity of the parties;
(ii) The basis of the assignment/license;
(iii) The IP object(s) to be assigned, or in case of license, the scope of license granted including: kind of license (exclusive or non-exclusive), the IP object(s) to be licensed, license territory, license term (within the balance of protection term granted by the respective patent or certificate of registration);
(iv) Assignment price or license royalty;
(v) The rights and obligations of the parties as stipulated;
(vi) Conditions for amendment, termination or invalidation of the agreement;
(vii) Dispute settlement;
(viii)Signatory date and place;
(ix) The signatures of the parties.
The license agreement must not contain the following provisions which are considered as unreasonably restricting the rights of the licensee:
(i) Provisions directly or indirectly restricting the export of products manufactured under the license to other markets/territories except those where the licensor is the owner of the corresponding IP rights or holds the exclusive right over the importation of the corresponding IP object;
(ii) Provisions compelling the licensee to purchase the whole or part of materials, components or equipment from the licensor or from sources appointed by the licensor, without aiming to ensure the quality of the licensed products;
(iii) Provisions forbidding the licensee to improve the IP objects (except for trademarks), or compelling the licensee to transfer free of charge to the licensor the improvements made by the licensee or the right to apply for IP protection over such improvements;
(iv) Provisions forbidding the licensee to appeal against the validity of the licensed IP object or the right to grant license of the licensor.
3. Recordal of assignment/license
The registration of the assignment/license with our National Office of Intellectual Property (NOIP is not compulsory under our regulation of laws. However, it should be registered with NOIP in order to make them legally effective against a third party in case any dispute relating to the IP object happens.
Therefore, we strongly recommend them to the agreements of all kind to be recorded at NOIP to ensure the smooth implementation and enforcement.
The request for recordal of the assignment/license agreement shall be filed with our NOIP, upon the request of the applicant. The examination of such request will be taken within around 03 months.