Highlights of patent litigation, patent infringement in Vietnam, Vietnam Patent Law, Patent Law in Vietnam, Patent enforcement in Vietnam, Enforcement of Patent in Vietnam

Vietnam patent law: Litigation and Enforcement

Structural and procedural framework

1. What is the forum for the conduct of patent litigation in Vietnam?

For patent litigation in Vietnam, depending on the negotiation between the relevant parties, it may be resolved by a competent court or arbitrator. In case the parties agreed to choose the arbitration, they could choose the arbitrators who have the experience specialist in patent or technical field. However, in case the litigation has been handled and resolved by the competent court. It will be hard to have a judge who has experience in the technical or patent field.

2. What is the typical timeline and form of first instance patent litigation proceedings in Vietnam?

The timeline for the first instance patent litigation proceeding in Vietnam will depend on the complication of each case. In Vietnam, patent litigation is often the complication case and will take more time to resolve. Normally it will take about 12 months or more for the first instance proceeding in case the case has been handled by court. The party could request the court or arbitration to resolve the infringement or invalidation as well as claim the compensation simultaneously.

3. Can interim and final decisions in patent cases be applied in Vietnam?

Yes. The interim and final decisions in the Vietnam patent case could be appealed following the second instance proceeding at the court. The first instance judgement may be appealed by the relevant parties within 15 days as from the date of judgment pronouncement or from the recipes date of the judgement depending on the role of each party in the case.

Basic legal framework

1. Which acts constitute direct patent infringement in Vietnam?

The following acts shall be considered as infringements of rights of owners of inventions in Vietnam:

  • Using protected inventions within the valid term of a protection patent without permission from the owners.
  • Using inventions without paying compensation according to the provisions on provisional rights in article 131 of Law on the intellectual property of Vietnam.

2. Do the concepts of indirect patent infringement or contributory infringement exist in Vietnam? If, so what are the elements of such forms of infringement?

In Vietnam, It does not exist the concepts of indirect patent infringement or contributory infringement.

3. How is the scope of protection of patent claims construed in Vietnam?

In responding to this question, please consider whether a ‘doctrine of equivalents’ applies, and also whether a form of prosecution history estoppel exists.

4. What are the key defences to patent infringement in Vietnam?

For defending the patent infringement, the owner of the protected patent could request the relevant competent agency to settle the infringement at the court where the owner could claim the compensation from the infringer or following the administrative procedure where the infringer will be punished by administrative procedure but without the compensation claim.

5. What are the key grounds of patent invalidity in Vietnam?

A protection patent in Vietnam shall be entirely invalidated in the following cases:

  • The applicant for registration has neither had nor been assigned the right to register the invention;
  • The invention failed to satisfy the protection conditions at the time the protection title was granted.

6. How is prior art considered in the context of an invalidity action?

In case a party could prove that the protected patent did not meet the requirement of novel because the technical object in such patent has been published in a prior art, such patent may be invalided and the protection will be revoked.

7. Can a patentee seek to amend a patent in Vietnam that is in the midst of patent litigation?

In Vietnam, It is unable to amend a patent when it is granted. However, the patentee could request the National Office of Intellectual Property (NOIP) to amend the application while it is under the examination procedure and there are no regulations to prevent the patentee from performing this action.

8. Is some form of patent term extension available in Vietnam?

The protection term of patents in Vietnam is fixed and the owner could only request NOIP to annuity annually and cannot extend this term in any form.

EVIDENCE

1. How are technical matters considered in patent litigation proceedings in Vietnam?

In Vietnam, the court will accept the examination conclusion of Vietnam Intellectual Property Research Institute (VIPRI) under the Ministry of Science and Technology. This institute is the sole organization in Vietnam is entitled to perform the examination in the field of intellectual industries upon the request of some certain parties such as the relevant parties in the litigation, the authority competent agencies or the court.

2. Is some form of discovery/disclosure and/or court-mandated evidence seizure/ protection (e.g. saisie-contrefaçon) available, either before the commencement of or during patent litigation proceedings?

No it is not. All of the measures could be performed just in case one of the parties bring the case to the court except that the case has already been handled and settled following the administrative procedure by the competent state agency and this agency applied some administrative measures to collect the evidence related to the case.

3. Are there procedures available which would assist a patentee to determine infringement of a process patent in Vietnam?

Yes. As aforementioned, the patentee could request the VIPRI to examine and conclude whether a device or process could be considered as an infringement element against the protected patent or not. The court will accept the examination conclusion of VIPRI and based on this conclusion, the court will request the defendant to provide the evidence to prove the otherwise.

4. Are there established mechanisms to protect confidential information required to be disclosed/exchanged in the course of patent litigation in Vietnam (e.g. confidentiality clubs)?

Yes. The relevant parties could request the court to protect the trade secret which could be required to disclose in the course of patent litigation. Based on such a request, the court will order all relevant parties not disclose the trade secret to any third party.

JURISDICTION AND OTHER FORA

1. Is there a system of post-grant opposition proceedings in Vietnam? If so, how does this system interact with the Vietnam patent litigation system?

No, it is not in Vietnam. However, any parties could file the request to NOIP to invalid the protected patent based on the ground of invalidation of patent as mentioned in question 8.

2. To what extent are decisions from other fora / jurisdictions relevant or influential, and if so, are there any particularly influential fora/ jurisdictions?

The court or NOIP may accept the decision from other jurisdictions relevant to the case as evidence to resolve the case in Vietnam if it meets the requirement of laws.

3. How does a court determine whether it has jurisdiction to hear a patent action in Vietnam?

Based on the principles set out by the Civil procedure code of Vietnam. Dispute on the patent is classified as intellectual property dispute and the court is entitled to handle and resolve this type of dispute.

4. What are the options for alternative dispute resolution (adr) in patent cases in Vietnam? Are they commonly used? Are there any mandatory adr provisions in patent cases?

Arbitration procedure is a common alternative dispute resolution in Vietnam. However, the patent dispute could only be resolved by arbitration in case the parties could agree with each other about this ADR by using the arbitration clause.

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COMMENCING PATENT LITIGATION

1. What are the key procedural steps that must be satisfied before a patent action can be commenced in Vietnam? Are there any limitation periods for commencing an action?

Collecting the evidence proving the infringement is the key procedural step before a patent action can be commenced. This step is very important and it could affect the result of the case. Normally, it does not have any limitation period for this action. However, please ensure the prescriptive period.

2. Which parties have standing to bring a patent infringement action in Vietnam? Under which circumstances will a patent licensee have standing to bring an action?

The owner or the licensee of the patent could bring the patent infringement action to the court in Vietnam. The patent licensee has the right to bring an action in case they could provide the license agreement with the owner and there are no any regulations in the agreement to limit the right of the licensee to bring an action against the infringement.

3. Who has standing to bring an invalidity action against a patent in Vietnam? Is any particular connection to the patentee or patent required?

Any parties have the right to bring an invalidity action against a patent. It is not required this party must be connected/related to the patentee or patent.

REMEDIES

1. Are interim injunctions available in patent litigation proceedings in Vietnam?

During the resolution of civil lawsuits, the involved parties or their lawful representatives or agencies, organizations or individuals instituting the cases as defined in the civil procedure code may petition the Courts handling such cases to apply one or more provisional emergency measures to provisionally deal with the urgent petitions of the involved parties, to protect lives, health, properties, gather and protect evidences, preserving their current conditions in order to avoid irrecoverable damage and to ensure the lawsuit settlement or judgment execution.

In urgent cases where it is necessary to immediately protect evidences or to prevent possible serious consequences, relevant agencies, organizations and individuals may petition the competent Courts to issue decisions to apply provisional emergency measures simultaneously with the submission of applications to initiate the lawsuits to such courts.

2. What Final Remedies, Both Monetary And Non-Monetary, Are Available For Patent Infringement in Vietnam? Of These, Which Are MostCommonly Sought And Which Are Typically Ordered?

The final remedies may be the judgement to (i) recognize, respect, protect and guarantee of the right of the patentees, or (ii) order the termination of the patent infringement; or (iii) order the infringer to make a public apology and/or rectification, (iv) order the performance of an obligations, (v) order compensation for damage, (vi) cancellation of isolated unlawful decision of competent agencies, organizations or persons or the combination of such remedies.

3. On what basis are damages for patent infringement calculated in Vietnam? Is it possible to obtain additional or exemplary damages?

Damage as a result of intellectual property right infringement must be actual losses including both physical and spiritual losses directly caused to the intellectual property right owner by acts of intellectual property right infringement. Actual losses shall be regarded as having been occurred when all of the following bases exist (i) the

physical or spiritual benefit is real and belongs to the aggrieved person, (ii) the aggrieved person could achieve the benefit referred to at item (i) before and (iii) there is a decrease in or loss of the benefit of the aggrieved person after the act of intellectual property right infringement is committed as compared to the possibility of achieving such benefit if such act of intellectual property right infringement would not happen and it constitutes the direct cause of such decrease in or loss of the benefit.

4. How readily are final injunctions granted in patent litigation proceedings in Vietnam?

Because the Vietnam patent litigation proceedings are often the complication case. So that in order to issue the final injunctions, it will take more time than other types of dispute at the court.

5. Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?

In responding to this question, please consider whether declarations of non-infringement and/or “Arrow” declarations (or equivalent) are available.

COSTS

1. What are the costs typically incurred by each party to patent litigation proceedings at first instance in Vietnam? What are the typical costs of an appeal at each appellate level?

Cost for collecting the evidence such as requesting VIPRI to examine and conclude on the infringement elements, fee for requesting the bailiff to issue the eyewitness evidence, etc. This fee will be calculated based on the schedule of VIPRI or service fee of the bailiff. The fee for a first instance court is also a typical cost, this cost will be calculated based on the prescribed schedule as regulated by law.

2. Can the successful party to a patent litigation action in Vietnam recover its costs?

Yes. In case the court accepts all claims of the successful party, the losing party must bear the court fee or relevant fees at the court. The successful party could also calculate another fees such as fee for collecting the evidence, fee for examination in the compensation amount.

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