Dossier and Procedures for Issuing a Decision on the Mandatory Transfer of Patent Usage Rights: Latest Implementation Instructions
What Documents Are Needed to Perform the Procedure for Mandatory Transfer of Patent Usage Rights?
Based on the regulations in Subsection 20, Section A of Administrative Procedures issued with Decision 2060/QD-BKHCN in 2023, it is clearly stated that the documents required to perform the procedure for the issuance of a mandatory transfer decision for patent usage rights include:
+ A request form for mandatory transfer of patent usage rights according to Form No. 04 in Appendix I of Decree 65/2023/ND-CP;
+ Documents proving that the request for mandatory transfer of patent usage rights is well-founded according to legal regulations;
+ Authorization document (in case the request is filed through a representative);
+ A copy of the fee payment receipt (in case fees are paid via postal services or directly into the account of the Intellectual Property Department).
The number of document sets required to perform the procedure for mandatory transfer of patent usage rights: 01 set.
What are the latest procedures for making a mandatory transfer decision for patent usage rights? (Image from Internet)
What Are the Latest Procedures for Making a Mandatory Transfer Decision for Patent Usage Rights?
Based on the regulations in Subsection 20, Section A of Administrative Procedures issued with Decision 2060/QD-BKHCN in 2023, it is clearly stated that the latest procedures for making a mandatory transfer decision for patent usage rights are as follows:
- Step 1: Receipt of documents
+ In cases where the use of the patent is for public, non-commercial purposes, national defense, security, disease prevention, treatment, nutrition of the people, or to meet urgent social needs, or to meet the pharmaceutical needs for preventing and treating diseases of another country that is eligible for importation under international treaties to which Vietnam is a member: 01 document set is to be sent to the Ministry and relevant field management agencies.
+ For other cases: 01 document set is to be submitted to the Intellectual Property Department.
- Step 2: Document appraisal
In case the document is invalid (the request for a decision to transfer the use of the patent is not well-founded):
+ The Minister of Science and Technology/Minister or Head of the equivalent agency issues a notice of the intended rejection, clearly stating the reasons for the rejection and setting a deadline of 01 month from the date of notification for the applicant to provide their comments about the intended rejection;
+ If the applicant does not provide comments or provides inadequate comments, the Minister of Science and Technology/Minister or Head of the equivalent agency issues a notification rejecting the mandatory transfer of patent usage rights;
In case the document is valid:
+ For mandatory transfer requests related to the use of the patent for public, non-commercial purposes, national defense, security, disease prevention, treatment, nutrition of the people, or to meet urgent social needs, or to meet the pharmaceutical needs for preventing and treating diseases of another country that is eligible for importation under international treaties to which Vietnam is a member:
++ The Ministry or equivalent agency sends the document to the Ministry of Science and Technology (via the Intellectual Property Department) for opinion;
++ The Intellectual Property Department provides its opinion and reports to the Minister of Science and Technology;
++ The Ministry or equivalent agency sends feedback regarding the Intellectual Property Department's opinion (if disagreeing, the reasons should be clearly stated);
++ The Minister or Head of the equivalent agency makes a decision on whether to accept or not accept the mandatory transfer request.
+ For mandatory transfer requests related to other cases:
++ The Intellectual Property Department issues a notice about the mandatory transfer request to the patent holder and requests feedback in writing;
++ Requests the parties to renegotiate to sign a transfer agreement (if necessary);
++ If the involved parties do not reach an agreement, the Minister of Science and Technology issues a decision for the mandatory transfer of patent usage rights.
+ Record the decision in the National Register of Industrial Property Rights Transfers within 01 month and publish it in the Industrial Property Gazette within 02 months from the date of the decision.
Method of implementation:
- Submit online via the Administrative Procedure Resolution Information System of the Ministry of Science and Technology.
- Directly or via postal service to the headquarters of the Intellectual Property Department in Hanoi or 2 representative offices of the Department in Ho Chi Minh City and Da Nang.
What Are the Requirements for Implementing the Procedure for the Mandatory Transfer of Patent Usage Rights?
Based on the regulations in Subsection 20, Section A of Administrative Procedures issued with Decision 2060/QD-BKHCN in 2023, it is clearly stated that the requirements and conditions for implementing the procedure for the mandatory transfer of patent usage rights are as follows:
- The use of the patent is for public, non-commercial purposes, national defense, security, disease prevention, treatment, nutrition for the people, or to meet urgent social needs.
- The exclusive patent holder does not perform the obligation to use the patent after four years from the date of filing the patent application and three years from the date of issuance of the exclusive patent.
- The patent usage requestor does not reach an agreement with the exclusive patent holder on signing a usage agreement even though they have reasonably negotiated with a satisfactory price and commercial terms for a reasonable period.
- The exclusive patent holder is considered to be performing prohibited anti-competitive practices according to the competition law.
- The use of the patent is to meet the pharmaceutical needs for preventing and treating diseases of another country that is eligible for importation under international treaties to which Vietnam is a member.
LawNet