The trend of development and application of science and technology in production has confirmed that intellectual property and intellectual property rights have become increasingly important, intellectual property protection is considered a fundamental principle in the movement of the world economy. In order to reconcile the monopoly of industrial owners and the common interests of the community, limitations of industrial property rights have been specifically prescribed by law. The following article shall analyze cases of limitation of industrial property rights under Vietnamese intellectual property law.
1. The concept of industrial property rights limitation
The 2005 Intellectual Property Law, amended and supplemented in 2009 (hereinafter referred to as the “IP Law“) does not provide a definition of “limitation of industrial property rights”. It can be understood that the “limitation of industrial property rights” is the restriction on the rights of organizations and individuals to the objects of industrial property created or owned by them. Intellectual property rights are not absolute rights but are limited in some cases.
2. Cases of limitation of industrial property rights
2.1. Limitation of industrial property rights in terms of duration
Industrial property objects are usually protected for a definite period of time, specifically specified in Article 93 of the IP Law on the validity of protection titles. Term of protection can be divided into three categories:
Firstly, the term of protection is determined and cannot be extended as specified in Clauses 2, 3 and 5, Article 93 of the IP Law:
– An invention patent shall be valid from the grant date until the end of twenty (20) years after the filing date.
– An invention patent shall be valid from the grant date until the end of twenty (20) years after the filing date.
– A certificate of registered design of semi-conducting closed circuits shall be valid from the grant date until the earliest date among the following: (i) The end of ten (10) years after the filing date; (ii) The end of ten (10) years after the date the layout design was first commercially exploited anywhere in the world by a persons with the registration right or his or her licensee; (iii) The end of fifteen (15) years after the date of creation of the layout design.
Second, the term of protection is determined and can be extended (Clause 4 and 6, Article 93 of the IP Law). An industrial design patent shall be valid from the grant date until the end of five (5) years after the filing date and may be renewed for two consecutive terms, each of five (5) years; A certificate of registered mark shall be valid from the grant date until the end of ten (10) years after the filing date and may be renewed for many consecutive terms, each of ten (10) years.
Third, the term of protection is indeterminate: This type of time limit is applied to trade names, geographical indications, and business secrets until these industrial property objects no longer satisfy the protection conditions (Clause 7, Article 93 of the IP Law).
2.2. Limitation of intellectual property rights to inventions in the public interest (Article 133 of the IP Law)
Article 7 of the IP Law holds that: “In order to assure objectives of national defense and security, the people’s livelihood and other interests of the State and society stipulated in this Law, the State may prohibit or restrict the exercise of intellectual property rights by the holders thereof or may compel such holders to license one or more of their rights to other organizations or individuals on appropriate terms”. Therefore, in cases for public purposes, non-commercial purposes, national defense and security, disease prevention, treatment, nutrition for the people and meeting other urgent needs of society, the owner must transfer the right to use the invention under the decision of the state agency. Ministries and ministerial-level agencies have the right to use on behalf of the State or permit other organizations and individuals to use inventions under their management for the above purposes without the consent of the patent owner. or the licensee of the right to use the invention under an exclusive contract as provided for in Articles 145 and 146 of the IP Law. This right is determined on the basis of the element of licensing the right to use the invention under a decision of a competent state agency and must be consistent with the conditions specified in Clause 1, Article 146 of the IP Law, except for Inventions are created by using material – technical foundations, funded from the state budget. Example: Invention of a 10,000 VND water filtration system by Truong Quoc Vi and Nguyen Anh Hung (Students of the Faculty of Environmental Management – Industrial University of Ho Chi Minh City) with simple design, low cost and high efficiency in cleaning water, has been transferred to the State agency for application in the actual construction project in the summer of 2014.
2.3. Right of prior use of inventions and industrial designs (Article 134 of the IP Law)
According to Article 134 of the IP Law, the owner of an industrial property object has the obligation to respect the person having the right to use the invention or industrial design. Where a person has, before the publication date of an application for registration of an invention or industrial design, used or prepared necessary conditions for use of an invention or industrial design identical with the protected invention or industrial design stated in such application for registration, but created independently, then after a protection title is granted, such person shall be entitled to continue using such invention or industrial design within the scope and volume of use or use preparations without having to obtain permission or paying compensation to the owner of the protected invention or industrial design. However, in order to ensure that the owner’s rights are not affected, the IP Law stipulates that prior use right holders to inventions or industrial designs must not assign such right to others, except where such right is assigned together with the transfer of a business or production establishment which has used or has prepared to use the invention or industrial design. Prior use right holders must not expand the use scope and volume unless it is so permitted by the owner of the invention or industrial design.
For example: X was granted a patent for the industrial design “Round pot pot set” in 2008. X requested the competent authority to handle Y due to an act of infringing upon the industrial design when manufacturing a set of pots of this type that is similar to X. Y has provided evidence that this establishment hired Mr. T to manufacture in 2005. Thus, according to Article 134 of the IP Law, X has no right to request Y to be handled.
2.4. Limits on industrial owner’s obligations
Firstly, obligation to pay remuneration to authors of inventions, industrial designs and layout designs (Article 135 of the IP Law). Owners of inventions, industrial designs and layout designs shall be obliged to pay remuneration to the authors of such inventions, industrial designs and layout designs, unless otherwise agreed upon by the parties. The minimum level of remuneration payable by an owner to an author shall be regulated as follows: Ten (10) per cent of the profit gained by the owner from the use of the invention, industrial design or layout design; Fifteen (15) per cent of the total amount received by the owner in each payment for licensing of the invention, industrial design or layout design, unless otherwise agreed upon by the parties according to Clause 1 Article 135 of the IP Law.
Secondly, Obligation to use inventions and marks (Article 136 of the IP Law). Owners of inventions shall be obliged to manufacture protected products or apply protected processes to satisfy the requirements of national defense and security, disease prevention, and treatment and nutrition of the people or to meet other social urgent needs. When such needs arise but an invention owner fails to perform such obligation, the competent State body may license such invention to others without permission from the invention owner. For example: Company X is protected for the invention of drug Y, which has the effect of preventing dengue fever. Thus, company X has an obligation to meet the essential needs of society at that time. If company X cannot do this, the competent state agency can transfer the right to use the invention of drug Y to another person without X’s permission.
Owners of marks shall be obliged to use such marks continuously. Where a mark has not been used for five consecutive years or more before the date of request for invalidation without a plausible reason, the protection title will be terminated, the ownership of that mark will cease to be effective, unless the use is commenced or commenced at least three months prior to the date of the request for termination.
Thirdly, obligation to authorize the use of principal inventions for the purpose of using dependent inventions (Article 137 of the IP Law). According to Article 137 of the IP Law, not all dependent invention owners have the right to request the principal invention owner to transfer the right to use the principal invention, but only “where the owner of a dependent invention can prove that his or her invention makes an important technical advance as compared with the principal invention and has great economic significance, he or she may request the owner of the principal invention to license such principal invention at a reasonably commercial price and conditions”. Where the owner of a principal invention fails to satisfy the request of the owner of a dependent invention without justifiable reason, the State body concerned may license such invention to the owner of the dependent invention without permission from the owner of the principal invention. In addition, the use of the underlying invention must be aimed at the use of the dependent invention. If the purpose is not to use the dependent invention, then the owner of the underlying invention is not obligated to license the use of the underlying invention.
This is the article advising on “Limitations of industrial property rights under Vietnamese Intellectual Property Law” by Apra Law Firm. If you have any questions or concerns, please contact the hotline for further advice and support.
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