What are the regulations on compensation for rights to use inventions transferred under compulsory decisions in Vietnam under the Decree 65/2023/ND-CP?
- What are the regulations on compensation for rights to use inventions transferred under compulsory decisions in Vietnam under the Decree 65/2023/ND-CP?
- Which entities have the rights to request decisions on compulsory transfer of invention use rights in Vietnam?
- What are the procedures for processing applications for decisions on compulsory transfer of invention use rights in Vietnam?
What are the regulations on compensation for rights to use inventions transferred under compulsory decisions in Vietnam under the Decree 65/2023/ND-CP?
Article 53 of Decree 65/2023/ND-CP stipulates compensation for rights to use inventions transferred under compulsory decisions as follows:
- Compensation for rights to use an invention under a compulsory decision according to Point d Clause 1 Article 146 of the Law on Intellectual Property shall be determined according to the economic value of the transferred rights with consideration for the following elements:
+ Price of the transfer of rights to use the invention under contract;
+ Investment in the creation of the invention, including consideration for the state budget funding (if any);
+ Profits from the use of the invention;
+ Remaining validity period of the protection title;
+ Necessity level of the transfer of the rights to use the invention;
+ Transfer scope and time limit;
+ Other elements directly determining the economic value of the transferred use rights.
- Compensation for rights to use transferred inventions under compulsory decisions in case of failed agreement between the receiving party and the right holder shall not exceed 5% of the net selling price of products produced according to the invention, providing that compliance with Clause 1 of this Article is ensured.
- If necessary, the authority competent to issue decisions on the compulsory transfer of invention use rights may establish a council to determine the compensation according to laws.
What are the regulations on compensation for rights to use inventions transferred under compulsory decisions in Vietnam under the Decree 65/2023/ND-CP?
Which entities have the rights to request decisions on compulsory transfer of invention use rights in Vietnam?
Article 54 of Decree 65/2023/ND-CP stipulates the rights to request decisions on compulsory transfer of invention use rights as follows:
Organizations and individuals that have the capability, tasks, or needs to use inventions as prescribed in Points a, b, c, and dd or are subject to anti-competitive activities as prescribed in Point d Clause 1 Article 145 of the Law on Intellectual Property 2005 may request the competent person prescribed in Clause 1 Article 147 of the Law on Intellectual Property 2005 to issue decisions on compulsory transfer of invention use rights following Article 55 and Article 56 of Decree 65/2023/ND-CP.
What are the procedures for processing applications for decisions on compulsory transfer of invention use rights in Vietnam?
Procedures for processing applications for decisions on compulsory transfer of invention use rights are specified in Article 56 of Decree 65/2023/ND-CP:
* Applications for decisions on compulsory transfer of invention use rights shall be submitted in compliance with the following regulations:
- Applications subject to cases prescribed in Points b, c, and d Clause 1 Article 145 of the Law on Intellectual Property 2005 shall be submitted to the Ministry of Science and Technology of Vietnam;
- Applications subject to cases prescribed in Points a and dd Clause 1 Article 145 of the Law on Intellectual Property 2005 shall be submitted to ministries and ministerial agencies concerning inventions;
- The Ministry of Science and Technology of Vietnam, ministries, and ministerial agencies shall designate an authority to receive and appraise applications prescribed in Clause 1 Article 56 of Decree 65/2023/ND-CP (hereinafter referred to as "application appraisal authority").
* An applications for a decision on compulsory transfer of invention use rights shall be appraised as follows:
Within 2 months from the date of receipt of the application, the application appraisal authority shall assess the application according to the following regulations:
- If the application is valid, within 20 days from the application receipt date, the application appraisal authority shall issue a notification of the request for transfer of invention use rights under a compulsory decision to the owner of the invention patent and request such a person to propose any suggestion in writing within 1 month after receiving the notification; request concerned parties to conduct a re-negotiation to overcome disagreements to conclude the transfer contract of invention use rights if necessary. In case of disagreement between parties, if the refusal to conclude the contract of the right holder party is unreasonable, report the results of the application assessment to and request the Minister of Science and Technology of Vietnam or the concerned Minister or head of the concerned ministerial agency to issue a decision on compulsory transfer of invention use rights.
If the request is subject to cases prescribed in Point a Clause 1 Article 145 of the Law on Intellectual Property 2005 and the use of the invention for public and non-commercial purposes, the concerned Ministry or ministerial agency may issue a decision on compulsory transfer of invention use rights without having to request the owner of the invention patent to provide any suggestion or parties to negotiate.
- If the request for the decision on transfer of invention use rights does not have any reasonable ground according to Article 145 of the Law on Intellectual Property 2005, the application appraisal authority shall report the results of the application assessment to and request the Minister of Science and Technology of Vietnam or the concerned Minister or head of the concerned ministerial agency to issue a notification of intended refusal, specifying the reasons and imposing a 1-month time limit from the notification issuance date for the applicant to propose any suggestion on the intended refusal.
The time when the applicant remedies deficiencies of the application or has objections shall not be included in the time limit for application assessment.
- Regarding applications subject to cases prescribed in Point a and Point dd Clause 1 Article 145 of the Law on Intellectual Property 2005, application appraisal authorities of ministries and ministerial agencies shall send copies of such applications to the Ministry of Science and Technology of Vietnam for suggestions (through the application appraisal authority of the Ministry of Science and Technology of Vietnam) before presenting them to the Ministers and heads of ministerial agencies for decisions according to Points a and b of Clause 2 of Decree 65/2023/ND-CP. Within 20 days from the application receipt date, the application appraisal authority of the Ministry of Science and Technology of Vietnam shall assess the applications and submit reports to the Minister of Science and Technology for written requests for the concerned Ministers or heads of concerned ministerial agencies to issue decisions on compulsory transfer of invention use rights or refusal notifications.
* Within 20 days from the date of receipt of the report on the results of the application assessment of the application appraisal authority of the Ministry of Science and Technology of Vietnam, the Minister of Science and Technology of Vietnam shall consider issuing a decision on compulsory transfer of invention use rights or send notification of refusal of the request for compulsory transfer of invention use rights to the applicant, specifying the reasons.
Within 20 days from the date of receipt of the written request of the Minister of Science and Technology of Vietnam, the concerned Minister or head of the concerned ministerial agency shall consider issuing a decision on compulsory transfer of invention use rights or send notification of refusal of the request for compulsory transfer of invention use rights to the applicant, specifying the reasons.
In case of disagreement with the request of the Minister of Science and Technology of Vietnam, the concerned Minister or head of the concerned ministerial agency shall provide a written notification, specifying the reasons.
* The concerned Minister or head of the concerned ministerial agency shall send the decision on the compulsory transfer of invention use rights to the receiving party, owner of the invention patent, and application appraisal authority of the Ministry of Science and Technology of Vietnam.
The application appraisal authority of the Ministry of Science and Technology of Vietnam shall record the decision to the National Industrial Property Register within 1 month and disclose it on the Industrial Property Official Gazette within 2 months from the date of decision issuance.
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