What does an application for the request for compulsory transfer of invention licensing rights in industrial property rights in Vietnam include?
Application form for compulsory transfer of invention licensing rights in accordance with Decree 65/2023/ND-CP
On August 23, 2023, the Government of Vietnam issued Decree 65/2023/ND-CP detailing some provisions and implementation measures of the Intellectual Property Law regarding industrial property, protection of industrial property rights, rights to plant varieties, and state management of intellectual property.
In Appendix I issued together with Decree 65/2023/ND-CP, the application form for compulsory transfer of invention licensing rights for industrial property rights is stipulated as follows:
Download the application form for compulsory transfer of invention licensing rights for industrial property rights here.
Application for the request for compulsory transfer of invention licensing rights in industrial property rights in Vietnam
Who has the right to request a compulsory transfer of invention licensing rights in Vietnam?
According to Article 54 Decree 65/2023/ND-CP, the right to request a compulsory transfer of invention licensing rights is regulated as follows:
Organizations and individuals capable of, tasked with, or needing to use the patent as stipulated in points a, b, c, and đ or those facing competitive obstruction as defined in point d, clause 1, Article 145 of the Intellectual Property Law 2005 have the right to request the competent authority as specified in clause 1, Article 147 of the Intellectual Property Law 2005 to issue a decision for the compulsory transfer of invention licensing rights for themselves under the specific provisions in Articles 55 and 56 of Decree 65/2023/ND-CP.
Documents required for the request for compulsory transfer of invention licensing rights in industrial property rights in Vietnam
According to Article 55 of Decree 65/2023/ND-CP, the documents required for the request for the compulsory transfer of invention licensing rights include the following:
* The documents required for a mandatory transfer request include the following:
- application form for compulsory transfer of invention licensing rights, according to Form No. 04 in Appendix I of Decree 65/2023/ND-CP.
- Documents proving that the request for a compulsory transfer of invention licensing rights is justifiable according to the specific provisions in clauses 2, 3, 4, 5, 6, and 7, Article 55 of Decree 65/2023/ND-CP.
- Power of attorney (if the request is submitted through a representative).
- Copies of receipts for fees and charges (if fees and charges are paid via postal service or directly into the account of the competent authority handling this procedure).
* In case the request for a compulsory transfer of invention licensing rights is based on the provision stipulated in point a, clause 1, Article 145 of the Intellectual Property Law 2005, the dossier must include documents proving that at the time of application submission, there is an actual need to use the patent for public, non-commercial purposes, for national defense, security, disease prevention, treatment, nutrition for the people, or to meet other urgent social needs, but the exclusive patent holder has not used the patent, and the failure to use the patent will affect the achievement of these objectives.
* In case the request for a compulsory transfer of invention licensing rights is based on the provision stipulated in point b, clause 1, Article 145 of the Intellectual Property Law 2005, the dossier must include documents proving that the exclusive patent holder has not fulfilled the obligation to use the patent as stipulated in clause 1, Article 136, and clause 5, Article 142 of the Intellectual Property Law 2005 and at the time of the dossier submission, the 4-year term since the filing date has ended, and the 3-year term since the patent was granted has ended.
* In case the request for a compulsory transfer of invention licensing rights is based on the provision stipulated in point c, clause 1, Article 145 of the Intellectual Property Law 2005, the dossier must include documents proving that the person requiring the use of the patent could not reach an agreement with the exclusive patent holder on concluding a contract for using the patent, even though reasonable efforts have been made to negotiate with appropriate prices and commercial conditions for a reasonable period of time;
In which, it must clearly state the need to use the patent, the time spent in negotiations, the price, and specific commercial conditions proposed by the person requiring the use of the patent.
* In case the request for a compulsory transfer of invention licensing rights is based on the provision stipulated in point d, clause 1, Article 145 of the Intellectual Property Law 2005, the dossier must include documents proving that the exclusive patent holder has engaged in conduct considered to be restricted competition prohibited under the law on competition.
* In case the request for a compulsory transfer of invention licensing rights in the semiconductor technology field is based on the provision stipulated in points a and d, clause 1, Article 145, and point b, clause 1, Article 146 of the Intellectual Property Law 2005, the dossier must include documents proving that the use of the patent is solely for public, non-commercial purposes or presenting documents showing that the exclusive patent holder has engaged in conduct considered to be restricted competition prohibited under the law on competition.
* In case the request for a compulsory transfer of invention licensing rights is based on the provision stipulated in point đ, clause 1, Article 145 of the Intellectual Property Law 2005, the dossier must include documents proving that the use of the patent is to meet the demand for pharmaceuticals to prevent and treat diseases in another country that is eligible for import under the provisions of Article 31bis of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
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