Patent Litigation 2024 Comparisons

There are two types of patents accorded to an invention under the Vietnam 2022 IP Law – patent for invention and patent for utility model.

The procedure for obtaining both a patent for invention and patent for utility model is the same, namely:

• filing – an application for registration filed and assigned application number and filing date by VNIPO;
• formality examination – the application is examined as to formality in one month (or 32nd month for PCT applications) before a decision on formality acceptance is issued by VNIPO;
• application publication – the legitimately accepted application will be published in the IP Gazette in the 19th month from the filing date (or priority date), or within two months from the date of formality acceptance, whichever date is later;
• substantive examination – three criteria, namely novelty, creativity, and susceptibility of industrial application for applied-for invention or two criteria, namely novelty and susceptibility of industrial application for a utility model are examined in 18 months from the publication date where a request for examination is filed sooner than the publication date; and
• notice of allowance and issuance of a patent – fee for grant of patent for invention or patent for utility model including 1st annuity shall be paid by the applicant within 90 days from the date of notice of allowance.

The procedure for the grant of a patent may take three to four years on average. An applicant needs to be represented by an accredited local IP attorney if the applicant is a foreign individual or a foreign entity without a commercial presence in Vietnam. The average cost for grant may be several hundreds of US dollars to thousands of US dollars, subject to the number of pages of specification and number of independent claims.

The term of protection for a patent for invention is 20 years, and a patent for utility model is ten years, all from the filing date.

A patentee has three types of rights: (i) to exclusively use or permit others to use, or exploit the usage of a patented product or method; (ii) to prevent others from using, or exploiting a patented product or method; (iii) to dispose of a patented product or method (eg, relinquishment, assignment, inheritance). However, a patentee is obliged to produce a patented product or to apply a patented process to meet the needs of national defence, security, disease prevention, nutrition for the people or other urgent needs of society, otherwise a compulsory licensing may be granted without the consent of the patentee. Where a patented invention is infringed, a patentee is entitled to ask the court to apply provisional emergency measures (injunction), award damages and other costs remedying the damage caused by the infringement.

All patented inventions or utility models in basic mode are searchable on the VNIPO’s homepage. The full text of patented inventions or utility models in Vietnamese may be viewed in the VNIPO’s independent publications twice a month.

No supplementary protection regime (served as an extension to a patent right) is available in the 2022 IP Law, except for where annuity for a patented invention (fee for using a patent) can be waived if a procedure for registering first circulation of a pharmaceutical bearing such patent with the Drug Administration of Vietnam (DAV) is delayed.

Any third party (including those without concerned interest) can proceed with an opposition procedure, or third-party observation, or both, against a pending patent application.

For the opposition procedure, an opposition shall be filed in nine months (non-extendable) from the date of patent application publication against a fee of USD24 per independent claim. VNIPO shall deliver such opposition to be responded to by applicant (the “Opposed Party”) in two months. Only where the VNIPO itself finds it necessary to further clarify the content of the opposition, or upon the request made by both the opponent and the Opposed Party, will the VNIPO organise an in-person dialogue between the parties.

For cases where the relevant parties have received the first notice or the second notice without/with the result of a dialogue between the parties (if any), the opposition will be settled, and the opponent will receive the result of handling of the opposition along with the substantive examination report against the opposed patent.

VNIPO would not accept an opposition and would issue a notice requesting the opponent to initiate a civil lawsuit before a competent court if the content of the opposition is related to the rights to register the opposed patent.

An opposition will be considered withdrawn, and the opposed patent will continue to be examined as if there was no opposition, if within two months from the date of notice by the VNIPO requesting the opponent to file a civil lawsuit, they had not yet sent to the VNIPO a notice of acceptance of the case by the court. In case a copy of the court’s notice of acceptance is received on time, VNIPO will temporarily suspend the examination against the opposed patent pending the court’s judgment.

For TPO (third-party observation), neither fee nor procedure is available. This means any third party can send a TPO to VNIPO from the application publication until prior to the date of VNIPO’s issuance of grant decision. However, VNIPO will only consider TPO as a reference source in support of its examination against such objectionable patent. Therefore, unlike patent opposition, the opponent who filed a TPO will not receive any notice from VNIPO including the substantive examination report for the contested patent.

Any opposition must be accompanied by one of the nine legal grounds below coupled with evidence and documents proving the reason for opposition.

• Subject matter sought for registration does not fully meet the criteria for patentability.
• Applicant does not entitle to register an invention.
• Subject matter seeking for patent, although having fully met the criteria for patentability, is not a patent application having the earliest priority date or filing date.
• There is more than one identical or equivalent patent application being filed on the same day by more than one applicant and those applicants have not yet come to an agreement to withdraw one of those filed applications.
• Patent application as amended or supplemented widens the scope of disclosed subject matter described in the application or changes the nature of the subject matter seeking for registration stated in the application.
• Patent application as filed goes beyond the scope of disclosure as specified in its original specification.
• Patent application has not yet been disclosed in a full and clear manner to the extent that it cannot be comprehended and implemented by a person having ordinary skill in the art in the corresponding technical field.
• For patent application directly created by virtue of genetic resources or traditional knowledge of genetic resources, that patent application does not disclose or incorrectly discloses the origin of genetic resources or genetic resources-related traditional knowledge.
• Patent application is filed in contrast with the regulations on security control over inventions seeking for protection overseas.

An applicant can respond to VNIPO’s rejection in three months (one-time request for three-month extension of time allowable) arguing that a patent seeking protection, amongst other things, meets the standard of novelty (does not fall into the prior art), or inventive step (not obvious to a person skilled in the art).

Upon receipt of the applicant’s dissatisfactory response, if VNIPO upholds the initial refusal, it will issue a decision on confirmation of refusal, and the applicant can appeal it to VNIPO’s board of appeal, an independent division from the Patent Examination Centre where the patent application was rejected, in a period of 90 days (cannot be extended), or initiate an administrative lawsuit at the administrative court under the law on administrative proceedings.

Failure to pay the annual fee (in six months prior to the annual due date or in a grace period of six months after the due date) would cause the validity of a registered patent to be terminated.

Once a patent for invention or patent for utility model is granted, in some limited cases, amendments regarding such patent may be accepted – eg, amending specification, narrowing the scope of protection, correction of name and address, nationality, of patentee, or inventor, but the fee for these changes or correction must be paid. In addition to the required fee payable for amendments, a fee for substantive examination must be paid for the purpose of re-examination.

Available actions against infringement include a request for administrative sanction, initiating a civil lawsuit before a court, or bringing the case before an arbitration centre (if chosen by both parties).

Any third party without concerned interest (except for initiating an administrative lawsuit) can prevent or remove the effects of a patent right by using one of the statutory actions – ie, opposition action (see 1.7 Third-Party Rights to Participate in Grant Proceedings), invalidation action (eg, no annuity is paid on time), revocation action (eg, subject matter sought for registration does not fully meet the criteria for patentability as mentioned in 1.7 Third-Party Rights to Participate in Grant Proceedings), compulsory license (see 1.5 Rights and Obligations of Owners of Intellectual Property Rights), or administrative lawsuit against the decision on granting a patent right.

Subject to the subject being sued in an administrative or civil case, a specialised court (administrative court) or a civil court has jurisdiction to hear the lawsuit. Vietnam applies the principle of two-level trial – ie, first instance and appellate trial. In addition, a legally enforceable judgment or decision issued by a court may be subject to a cassation review (eg, there are serious breaches in proceedings or serious mistakes in applying laws) or retrial review (ie, new evidence appears that can significantly change the nature of case). For example, VNIPO’s decision on grant of patented invention is regarded as an administrative decision, which is subject to an administrative lawsuit sued by a third party with relevant interest.

Vietnam has neither specialised bodies nor IP-specialised courts in charge of resolving IP disputes.

Three prerequisites for bringing a patent lawsuit against an infringer comprise: standing to sue (patentee or its licensee), evidence of infringement act (unauthorised use or exploitation of a patented invention or method), and infringement element (eg, product or a part thereof is identical or equivalent to a product or its part within the scope of protection of a patent).

Formal demands, warning letters, or cease-and-desist letters are not deemed as preconditions before commencing legal action. However, according to the 2020 law on mediation and dialogue at the civil court, within two working days from the date of receipt of the lawsuit, the court shall notify the plaintiff of the right to choose mediation, dialogue, and mediator before it accepts the lawsuit, except where the litigants do not request mediation or dialogue, or one of the litigants asks for application of provisional emergency measures. Therefore, pre-litigation mediation (other than litigation mediation) is a required procedure conducted by the court before its acceptance of the lawsuit.

Parties can litigate by themselves or through their authorised representatives, or authorised representatives being local lawyers, with/without appointed lawyers protecting the litigants’ legitimate rights and interests. Lawyers protecting the litigants’ legitimate rights and interests are other than those appointed as the litigants’ authorised representatives. IP litigation is usually considered as complex, so local qualified IP attorneys should be involved.

A request for application of interim injunctions or injunction reliefs (provisional emergency measure) can be accepted by the court on or after the time of filing a lawsuit if it satisfies both conditions: (i) there is a risk of irreparable damage to a patent right-holder; and (ii) allegedly infringing goods or evidence of patent infringement are at risk of being dispersed or destroyed.

According to the 2022 IP Law, acceptable injunctive relief includes seizure, distraint, sealing, prohibiting changes in the status quo, and forbidding to move. In addition, according to the 2015 Civil Code, freezing of a bank account is prescribed as an injunctive relief. However, in practice, freezing of a bank account of a suspected infringer is seemingly not yet realised by the court.

In addition to the legal requirement of emergency, the party demanding the issuance of injunctive relief shall post a bond (security deposit) of 20% of the value of the suspected goods or at least VND20 million, or provide a guarantee from a bank.

A litigant who is adversely affected by the court’s injunctive relief has the right to ask the court to cancel such provisional measure if they have grounds or evidence proving that the injunctive relief was contrary to the law or the ground of application for the injunctive relief no longer exists.

As long as one of two conditions for application for an interim injunction no longer exists (as indicated at 2.7 Interim Injunctions), the interim injunction shall be removed. For a patent infringement lawsuit claiming damages before a civil court, the statute of limitations is three years from the date the person with the right to make a claim knows or should know that their legitimate rights and interests are being violated.

The court is responsible for assisting litigants to collect evidence in some limited cases – eg, request for the court to verify, collect evidence that cannot be done on their own, or request the court to force other litigants to present documents and evidence they are holding.

To be accepted by the court, a pleading (petition) must meet some standards – eg, full name and address of plaintiff and defendant, name of competent court, specific claims required of the court to award against the defendant, evidence and documents proving the plaintiff’s legal rights and interests are infringed (see further detail on the three prerequisites for bringing a patent lawsuit at 2.5 Prerequisites to Filing a Lawsuit).

In general, legal rules applicable for non-intellectual property lawsuits are the same as those applicable for IP lawsuits.

Litigants have the right to supplement or change their claims with additional arguments. However, the court or trial panel may reject the changes or revisions if these exceed the scope of initially filed claims, counterclaims, or pleadings.

The Vietnam legal system does not permit representative or collective actions (such as class actions) for patent proceedings. However, under Section 42 of the 2015 Civil Proceeding Code, the court may decide to merge different lawsuits initiated by multiple plaintiffs if the claims asked by these plaintiffs are the same and together, they are fighting against the same individual defendant or organisational defendant.

In general, there are no restrictions on the patent right-holder asserting its right against others.

A person or entity who can bring a patent infringement to the court can be the right-holder (patentee), patent licensees (including non-exclusive licence), inheritors, or third parties damaged by a patent infringement.

Third parties may join a patent infringement lawsuit as a person with related interests and obligations if they demand to participate in the proceedings by themselves or they are requested by litigants and granted leave by the court.

No indirect patent infringement is available in the 2022 IP Law. Indirect infringement incorporated in the 2022 IP Law is merely applicable for online service providers (OSPs) where they do not enjoy “safe harbour” provisions regarding copyright infringement occurring on their OSP platforms.

According to the territoriality principle, only a suspected patent infringement which occurred in the territory of Vietnam may constitute a patent infringement act. This means that the allegedly infringing acts must take place in Vietnam and they must have satisfied three prerequisites (see 2.5 Prerequisites to Filing a Lawsuit) to commence a patent infringement lawsuit before an IP enforcement body or a court. More specifically, these acts must occur in the Vietnam in the form of manufacture, application, exploiting the usage, circulating, advertising, offering for sale, storing for circulation, or importation of a patented product or process.

The scope of protection of a patent invention or utility model lies in the protected subject matter seeking registration (eg, substance, product, or process) that is embodied in the form of granted independent claims with or without one or more dependent claims. A suspected act is considered a patent infringement act if it is of (i) unauthorised use of a patent invention or utility model, and (ii) there is an infringement element found in that infringement act. Use of a patent means activity such as manufacture, application, exploiting the usage, circulating, advertising, offering for sale, storing for circulation, or importation of a patented product or process.

However, an infringement act against a patent shall meet all four constitutive conditions: (i) the suspected subject is within the scope of protection of a valid patent; (ii) the infringement element is found in the suspected subject; (iii) persons committing the suspected act are not those enjoyed exceptions to patent infringement (eg, prior user right, parallel import, private use and not for commercial purpose, etc), and (iv) suspected acts occurring in Vietnam, including those on the internet and telecommunications networks in which Vietnamese consumers use digital content in Vietnam.

Vietnam applies both literal infringement and equivalent infringement in determining whether a suspected infringement act contains an infringement element or not. For example, Article 74 Decree 65/2023 stipulates that a suspected product/process or a suspected part of a product/process is identical or equivalent to a patented product/process or a part of patented product/process.

In general, both courts and IP enforcement bodies in Vietnam do not yet have rich experience in handling patent infringement cases or determining the scope of protection of a patented product or process. Moreover, the fact that the history of patent application prosecution, particularly cited prior arts, is not yet to published, makes it difficult for third parties challenging the patent.

A defence against a patent infringement claim may be one of the following:

• prior user right;
• compulsory licence;
• patent exhaustion and parallel imports;
• unauthorised use of a patented product or process in the name of the state in limited cases (ie, disease prevention, meeting other urgent needs of society, etc);
• unauthorised use of a patented product or process in the name of the state patentee, or the state may grant a compulsory licence in favour of other persons if a patentee fails to implement effective measures in a reasonable period of time to use a patented product or process, which are the results of scientific and technological tasks funded by the state in an amount over 30% of total capital; and
• expiry of statute of limitations (eg, regarding a claim for damage or contractual dispute, the statute of limitations applicable would be three years from the date a patentee or its licensees knows or should know that their legitimate rights and interests are being violated.

Experts’ opinion is very crucial for courts and IP enforcement authorities to determine a patent infringement. However, in the absence of technical judges or judges knowledgeable about IP matters, in practice, courts are often much influenced by experts who can be hired by litigants or invited by the trial panel to determine the patent infringement or non-infringement elements. Given that it is believed that obtaining a favourable expert opinion would usually be the key for success in the litigation.

Expert opinions (statutorily known as “assessment conclusion”) are mainly delivered by VIPRI (Vietnam Intellectual Property Research Institute, a quasi-governmental organisation under the Ministry of Science and Technology). VIPRI operates as an assessment organisation in accordance with the 2022 IP Law. In addition, expert opinions may be provided (but rarely) by individual judicial assessors who are accredited under the 2012 Law on judicial assessment, as revised in 2020.

There is no guidance, interpretation, nor procedure is available in Vietnam for construing granted claims.

Vietnam has no regime permitting a court to seek or receive an amicus brief (third-party opinions).

Both VNIPO and administrative courts have jurisdiction to receive and resolve a cancellation action against a valid patent for invention or utility model. In case of initiating a lawsuit, an administrative court (not civil court) – ie, an administrative court under the Provincial People’s Court where the plaintiff has a place of residence or head office in Vietnam, has jurisdiction to accept and hear the case, and the subject matter of the administrative lawsuit shall be VNIPO’s decision on grant of patent. However, the statute of limitations for commencing an administrative lawsuit is one year from the date of decision, while no statute of limitations is imposed if a cancellation action against a valid patent is filed with VNIPO during its term of protection.

Below are eight legal grounds that a third party can invoke to demand that a granted patent be cancelled in whole or in part.

• Patent application is filed in violation of the regulations on security control over inventions seeking protection overseas.
• Patent applications for inventions which are directly created on the ground of genetic resources or traditional knowledge about genetic resources but fail to disclose or incorrectly disclose the origin of genetic resources or traditional knowledge about genetic resources included in such application.
• Applicant neither has entitlement to register invention nor being assigned such entitlement.
• Patent application does not satisfy criteria for protection, namely novelty, inventive step, and industrial applicability; or the content in the patent application is contrary to social morality and public order.
• Patent application as revised or supplemented widens the scope of disclosed subject matter described in the application or changes the nature of the subject matter seeking registration stated in the application.
• Patent application has been not yet disclosed in a full and clear manner to the extent that it cannot be comprehended and implemented by a person having ordinary skill in the art in the corresponding technical field.
• Patented invention goes beyond the scope of disclosure as specified in its original specification.
• Granted patent does not satisfy the first-to-file principle specified in Article 90.

Partial revocation against a valid patent is possible if such partial revocation does not meet criteria for protection, right to register, or violates first-to-file rule, or breaches the rules for amendment, supplement, disclosure. Partial revocation or whole cancellation must revoke one of eight legal grounds mentioned at 4.1 Reasons and Remedies for Revocation/Cancellation.

In general, it is possible to amend the as-filed cancellation actions if there is incorrect information or explanation/argument not consistent with the evidence.

Vietnam legislation and the 2022 IP Law do not accept that revocation action and infringement claims are combined and will be heard/settled together.

Vietnam has no special procedures for resolving IP rights disputes, including patent ones. To handle a patent infringement, on case-by-case basis, a patentee or its licensee may use civil remedies or administrative remedies. However, administrative action is not highly recommended because a patent infringement is a complicated case and very few IP enforcement agencies have sufficient knowledge and experience to resolve this.

A typical process for handling a patent infringement claim in case of administrative remedy comprises the following steps.

• Step one – preparing and filing a request for handling of a violation. The request must state the name of the enforcement agency, the relevant protected intellectual property subject matter, suspected infringing goods/services, name, and address of the violating organisation or individual, evidence proving the violation and documents proving the eligibility to file the request by the right-holder.
• Step two – accept the request within ten working days. This step includes receiving and reviewing petitions, including determining the authority to handle violations and checking the validity of documents and evidence. If the request is found to be incomplete, it may request the right-holder to supplement documents, evidence, or explanation for up to 30 days. In this step, the enforcement agency may solicit or consult professional opinions of the state agency on industrial property or conduct a referendum for IP infringement assessment to clarify details of the case.
• Step three – request for explanation. The enforcement agency may request the suspected infringer to provide information, documents, evidence, or explanation within ten days after the enforcement agency issues a notice to the alleged infringer or from the date of making inspection records, minutes of administrative violations. The alleged infringer may request an extension of the time limit for explanation mentioned above but must not exceed 30 days from the date of making the inspection record or record of administrative violation. The purpose of the explanation step is to give an opportunity to the alleged infringer to provide evidence, documents or counter-arguments to prove that they have not infringed the intellectual property rights of the rights-holder, for example, their defence may include that suspected trade mark is not deceivably confused with the right-holder’s registered trade mark, the work is suspected of copyright infringement independently created by the alleged infringer, or the case in question may fall into exceptions to non-infringement (ie, the use of an invention, industrial design, layout design for personal needs or non-commercial purposes, or circulating, importing, and exploiting the uses of the products that were legally marketed, including foreign markets (parallel import or grey market goods) by the right-holder or other person authorised by them, etc.
• Step four – prepare to handle administrative violations. Within 30 days from the day on which the satisfactory request is received, the competent person shall notify the right-holder of the intended time, procedures, handling measures and request co-operation and support of industrial property rights-holders in inspection, examination, verification, and handling of violations.
• Step five – making a sanction decision. Decision on sanctioning administrative violations together with additional sanctioning forms and remedial measures, issued by enforcement agencies. An organisational infringer may be fined up to VND500 million (roughly USD22,000); possibly accompanied by additional sanctions, namely temporary suspension of production and business for one to three months.

A typical process for filing, mediation and hearing a patent infringement at a court includes: (i) file a lawsuit with or without the request for the application of provisional emergency measures; (ii) pre-litigation mediation prior to the court’s acceptance of the lawsuit; (iii) mediation within the litigation; and (iv) opening a first-instance trial. Time limit for trial preparation is statutorily between two and four months from the date of acceptance of the case for commercial disputes. However, in fact, it may take on average about one to two years for the court to make a first-instance judgment.

Experts or witnesses may be invited in person to the trial if they are qualified as accredited judicial assessors or an accredited IP assessment organisation (eg, VIPRI).

Only one official hearing session is conducted by the trial panel in addition to one or several possible meeting sessions for checking the handover, access and disclosure of evidence and dialogue.

Cross-examination may be conducted at the request of litigants or by the judge if they find that there is a contradiction in the testimonies made by litigants or witnesses.

Vietnam has no jury system, and it has no technical judges in charge of technology or IP-related disputes. Except for the lawsuit applied by simplified procedure, a patent case shall be determined by the trial panel comprising one judge and two people’s jurors (only applicable at first-instance court). These people’s jurors and judge have equal rights when deliberating and resolving the case by majority vote.

The courts have responsibility to conduct mediation as well as create favourable conditions for the litigants to reach agreement during the resolution of the case. In addition, the involved parties should note that a pre-litigation mediation (other than litigation mediation) prior to the court’s acceptance of the lawsuit is a required procedure.

The court that accepted and is resolving a patent infringement lawsuit may issue a decision on suspension pending the result of resolution of other related cases prescribed by law that must be resolved first by other state agencies. For instance, a request for cancellation of validity of a registered patent or an administrative lawsuit against VNIPO’s decision on grant of such patent subject to the current patent infringement lawsuit was accepted and pending the resolution by VNIPO or by an administrative court.

Vietnam has no statutory provisions on provisional damages or enhanced damages for wilful infringement. Actual damage that must be proved by the IP holder is the only ground for the court to award the amount of damage.

For injunctive relief (Vietnam calls this provisional emergency measure), a litigant shall file an application for provisional emergency measure and such application is accepted by the court on or after the time of filing a lawsuit if it satisfies both conditions: (i) there is a risk of irreparable damage to a patentee or its licensee; and (ii) allegedly infringing goods or evidence of patent infringement are at risk of being dispersed or destroyed if no court order is issued.

According to the 2022 IP Law, acceptable injunctive relief includes seizure, distraint, sealing, prohibiting changes in the status quo, and forbidding to move. However, in practice, freezing of a bank account of a suspected infringer is seemingly not yet realised by the court. It is not possible to request to destroy the suspected goods as an injunctive relief. Forced destruction of infringing goods, as a civil remedy requested by a patentee, may be decided and implemented only after an effective judgment is ruled by the court. However, posting a bond (security deposit) of 20% of the value of the suspected goods or at least VND20 million, or providing a guarantee from a bank to obtain an injunction is required.

Attorney’s fees are claimable by the plaintiff and even the defendant (if their counterclaim is accepted) in addition to other proceeding costs such as expert opinion, preservation, storage, provisional emergency measures, rectification of information in the mass media, and costs for remedying and preventing infringements. In principle, if all the plaintiff’s claims are accepted by the first-instant court, the defendant shall bear all court fees, and vice versa – the plaintiff must bear all court fees if all claims are not accepted by the court. The plaintiff must pay the court fee corresponding to the portion of claims unacceptable to the court. Where the defendant’s counterclaims or a part of counterclaims are not accepted, the court fee applicable for those unaccepted portions shall be borne by the defendant. In practice, attorney’s fees claimed by the winning party are rarely accepted in full by the court. In some cases, attorney’s fees of USD10,000 have been awarded by Ho Chi Minh city’s court.

The 2022 IP Law requires that damages be calculated in monetary value on the ground of actual loss and causal relationship between the actual damage and the infringement on the ground of one of four methods of damage calculation.

• Total material damage in monetary value plus profits earned by the defendant due to IP infringement, if the plaintiff’s reduced profits have not been included in the total material damage.
• Royalties payable for granting a licence of a patent right assuming that the defendant is transferred to the right to use such patent by the plaintiff under the licence agreement to the extent corresponding to the infringement committed.
• Other calculation methods proposed by the right-holder in accordance with the law.
• If one of three methods cannot be determined, damages in the amount of VND500 million VND (USD22,000) at a maximum may be decided by the judge (trial panel) depending on the extent of damage.

If the court concludes that a defendant in an IP infringement lawsuit did not commit the infringement, the defendant has the right to demand the court to force the plaintiff to pay them reasonable costs for hiring lawyers, and other expenses.

IP protection in Vietnam is characterised by a dual-track protection. That means a patentee may use administrative measures (administrative sanction) before an IP enforcement agency (eg, specialised inspectors, market surveillance forces, customs authorities), or civil proceedings before a court, or both measures may be conducted by the patentee.

No provisions on injunctions pending appeal are available in the 2015 Civil Proceeding Code.

There are no special provisions governing the appellate procedure for a patent infringement proceeding in the 2015 Civil Proceeding Code.

A court of appeal shall solely review the part of the first-instance judgment/decision that is appealed or protested or related to the review of the content of the appeal or protest. Therefore, the court of appeal does not differentiate the facts or legal issues of the case under review.

Costs for litigation typically include court fees, attorney’s fees, and other civil proceeding expenses.

Court costs include court fees and charges prescribed by Resolution 326/2016/UBTVQH14 of the National Assembly’s Standing Committee of 30 December 2016 (Resolution 326).

A patent infringement lawsuit is considered as a civil lawsuit or commercial lawsuit. A patent dispute is regarded as a commercial lawsuit if it arises amongst individuals, entities, and all for profit purposes. In the case of commercial lawsuits and no quotas, court fees would be VND3 million (about USD135). If the case had the quotas – eg, the dispute value was worth less than VND60 million (roughly USD2700), between VND60 million and less than VND400 million (roughly USD18,000), court fees would be VND3 million plus 5% of the disputed value respectively. Where the dispute value was worth more than VND4 billion, the court fees would be VND112 million plus 0,1% of the dispute value exceeding VND4 billion.

In principle, if all the plaintiff’s claims are accepted by the first-instant court, the defendant shall bear all the court’s fees and vice versa – the plaintiff must bear all the court’s fees if all claims are not accepted by the court. The plaintiff must pay the court fee corresponding to the portion of claims unacceptable to the court. Where the defendant’s counterclaims or a part of the counterclaims are not accepted, the court fee applicable for those unaccepted portions shall be borne by the defendant. In practice, the attorney’s fees claimed by the winning party are rarely accepted in full by the court. In some cases, attorney’s fees of USD10,000 have been awarded by Ho Chi Minh city’s court.

If a court concludes that a defendant did not conclude the infringement, they have the right to demand the court to force the plaintiff to pay them reasonable costs for hiring lawyers, and other expenses.

Alternative dispute resolution in a patent infringement action may be an arbitration procedure if chosen by both parties, or settlement by mediation prior to litigation or within litigation at courts.

Restriction on assignment of valid patent rights shall be applicable for a registered patent as a result of the scientific and technological tasks funded by the state. Thereby, a potential assignee must be an individual having Vietnamese nationality and a place of permanent residence in Vietnam, or an organisation established under the laws of Vietnam. Moreover, the potential assignee shall make sure that they will implement their obligations as an organisation presiding over the scientific and technological tasks funded by the state.

The 2022 IP Law does not recognise any assignee as the new owner of an assigned patent as long as the patent assignment contract signed by the assignor and assignee has been not yet recorded by VNIPO. Therefore, the recordal of patent assignment contract is a required procedure.

Involved parties can assign a part or whole ownership over a valid patent. A patent assignment agreement must be made in writing including four main contents: (i) the full name and address of the assignor and assignee; (ii) grounds for assignment (number of protection titles, date of issue, and term of protection); (iii) transfer price (specific amount in dong required, or free of charge); and (iv) the rights and obligations of the assignor and assignee.

Required documents comprise:

• a request for recordal of a patent assignment;
• an original copy of a patent to be assigned;
• two original copies or two certified copies of patent assignment contract signed by the assignor and assignee (the parties’ signature must be shown on each page thereof) along with a Vietnamese translation thereof;
• a simply signed Power of Attorney in favour of a licensed patent agent (eg, Bross & Partners) on behalf of the parties to proceed with recordal of change in ownership; and
• official fee of USD25 per patent and USD18 per each further patent from the second one on.

Upon the examination of the dossier for recordal of change in ownership in two months, if no irregularities are found, VNIPO shall issue a decision on recordal of change in ownership and endorse the assignee as new owner on the registered patent for invention or patent for utility model.

A patent licence agreement must be made in writing and its validity is established based on the agreements between the parties without having to register with VNIPO.

A patent licence contract must include key terms and conditions:

• full name and address of licensor and licensee, or sub-licensor or sub-licensee;
• basis for licence (patent registration number) including sub-license (if any);
• scope of licence including the limitations in the right to use and territory limitations;
• form of licence agreement – eg, exclusive licence, non-exclusive licence; sub-licence;
• term of contract (not exceeding term of protection of licensed patent);
• price of licence, mode of payment; and
• rights and obligations of the parties.

Required documents comprise:

• a request for recordal of a patent licence;
• a copy of a registered patent;
• two original copies or two certified copies of the patent licence contract signed by the licensor and licensee (the parties’ signature must be shown on each page thereof) along with a Vietnamese translation thereof;
• a simply signed Power of Attorney in favour of a licensed patent agent (eg, Bross & Partners) on behalf of the parties to proceed with recordal of the patent licence; and
• official fee of USD22 per patent and USD17 per each further patent from the second one.

Upon the examination of the dossier for recordal of the patent licence in two months, if no irregularities are found, VNIPO shall issue a decision on recordal of the patent licence.