As a helpful reminder, we have outlined the requirements for rightsholders when submitting an international application for industrial design under the Hague Agreement designating Vietnam. This new requirement has not been widely publicised by WIPO so far, therefore many applicants have not been made aware.

Last year the Vietnam Government issued Decree 65/2023/ND-CP that guides the implementation of Vietnam Intellectual Property Law (“Decree 65”). Decree 65 took effect from 23 August 2023.

According to Article 24.8 of Decree 65, for an international application for industrial design under the Hague Agreement (“Hague application”) designating Vietnam that claims priority rights from priority application(s), priority document(s) must be submitted to the Intellectual Property Office of Vietnam (“IP Vietnam”) within 3 months from the publication date of the Hague application by WIPO. Failing to submit the priority document(s) in proper format and in due time will result in IP Vietnam refusing the priority rights of the Hague application.

Please note the following:

1. Certified copy(ies) (in paper) of the priority application(s) is/are required. Please note that Digital Access Service(DAS) is unavailable for IP Vietnam currently. In case the IP office who receives priority applications either: (i) does not issue paper copies of priority applications or (ii) such office provides service for obtaining electronic copy online, for example, WIPO or EPO, IP Vietnam accepts colour print of priority applications issued by such office.
2. Applicants are required to appoint a Vietnamese IP agent to submit the certified copy(ies) of the priority application(s) to IP Vietnam. An original Power of Attorney (POA) simply signed (IP Vietnam does not accept electronic signatures) by a representative of the applicant is required. Notarization or legalization is not required.
3. The effective date that the applicants must submit the certified copy(ies) of the priority application(s)

Since Decree 65 took effect immediately from its issuance date, IP Vietnam will agree on a flexible approach to facilitate applicants’ rights for Hague applications designating Vietnam, in particular:

1. If Hague applications were published before or on 23 May 2023, it is not necessary to submit the certified copy(ies) of the priority application(s).
2. If Hague applications were published after 23 May 2023 and until the date that WIPO publish the new regulations (please see item (3) below for more details), the applicants should submit the certified copy(ies) of the priority application(s). The submission can be still made after the 3-month deadline.
3. IP Vietnam will notify WIPO about the new requirements, and WIPO will then publish the new regulations on its website. From the date WIPO publish the new regulations, applicants who file Hague applications designating Vietnam claiming priority rights from priority application(s) must submit the certified copy(ies) of the priority application(s) in due form within 3 months from the publication date of the Hague applications. Late submission is impossible.

At the time of writing, WIPO has not yet published the new regulations, therefore, the priority documents can still be submitted after the 3-month deadline.

Given the requirements, we recommend that if the Hague applications were published after 23 May 2023, the applicants should submit the certified copy(ies) of the priority application(s) to IP Vietnam.

Rouse can help applicants navigate these requirements. For any questions or to find out more, please contact: PatentsVietnam@rouse.com.

Authors: Huy Le, Dung Vu

TAGS

• industrial designs
• Design
• vietnam
• Hague Agreement