Conditions for the Enjoyment of Priority Rights for Patent and Industrial Design Applications
What Are the Conditions for Enjoying the Priority Right of a Patent or Industrial Design Application?
According to Clause 1, Article 12 of Decree 65/2023/ND-CP, to enjoy the priority right of a patent or industrial design application under the Paris Convention, the following conditions must be met:
- The applicant must be a Vietnamese citizen or a citizen of a member country of the Paris Convention, or a citizen of another country residing or having a production or business establishment in Vietnam or in a member country of the Paris Convention.
- The first application must have been filed in Vietnam or in a member country of the Paris Convention and must contain parts corresponding to the priority claim of the patent, industrial design, or trademark application.
- The application must be filed within the following period from the first application date: 6 months for an industrial design or trademark application, and 12 months for a patent application.
- In the patent, industrial design, or trademark application, the applicant must clearly state the priority claim and submit a copy of the first application in case of filing abroad, which includes confirmation of the first filing office. The copy of the first application can be submitted within 3 months from the filing date.
- Pay the required priority claim fee.
*What Are the Conditions for Enjoying the Priority Right of a Patent or Industrial Design Application?*
How Are the Time Limits in Industrial Property Activities Defined?
According to Article 15 of Decree 65/2023/ND-CP, the calculation of time limits in industrial property activities is carried out according to the time limit regulations of the Civil Code 2015.
- The time limit for applicants and related parties to submit, amend, supplement documents, or raise opinions can be extended once for a period equal to the time limit set forth in the notification of the state management body regarding industrial property rights.
However, this is only applicable if the extension request is submitted before the end of the prescribed time limit and the extension fee is paid as per the regulations.
- The time during which force majeure events or objective obstacles occur is not counted in the time limit, provided that the organization or individual with rights and obligations cannot fulfill them within the prescribed time limit and submits a valid request with evidence proving the situation.
If the request is accepted, the state management body regarding industrial property rights will issue a decision, notification to withdraw previously issued decisions or notifications for the reason that the organization or individual did not perform their rights and obligations within the time limit and will restore the processing status of the application as if the time limit had not ended.
- A force majeure event is an objectively occurring event that cannot be foreseen (e.g., natural disasters, enemy attacks, etc.) and cannot be remedied despite the application of necessary and allowable measures.
An objective obstacle is a difficulty caused by objective circumstances (e.g., illness, work trips, studying in distant places, etc.) that prevents the person entitled to rights and obligations from knowing about the infringement of their lawful rights or interests or from exercising their rights and obligations.
Can an Industrial Property Registration Applicant Amend the Industrial Property Representative?
According to Clause 1, Article 16 of Decree 65/2023/ND-CP regarding amendments and supplements to an industrial property registration application, it states:
Amendment and Supplementation of Industrial Property Registration Applications
1. Before the state management body regarding industrial property rights issues a decision to refuse the acceptance of the application, a decision to grant or refuse the grant of a protection title, the applicant may:
a) Amend or supplement documents in the application, provided that such amendments or supplements do not expand the scope (volume) of protection disclosed in the description for patent applications, the photo set, drawing set, and description for industrial design applications disclosed in the photo set, drawing set for industrial design applications, in the trademark sample, and list of goods or services for trademark applications and do not alter the nature of the subject matter stated in the application;
b) Amend the name, address, and national code of the applicant, name, nationality, and address of the inventor, layout design, industrial designer; amend the industrial property representative.
...
Thus, an industrial property registration applicant may amend the industrial property representative before the state management body regarding industrial property rights issues a decision to refuse the acceptance of the application or a decision to grant or refuse the grant of a protection title.
LawNet