Some highlights of the 5th draft of Law on amendment and supplementation of some articles of the Law on Intellectual Property of 2005
The 2005 Law on Intellectual Property (IP Law), which includes 222 articles and took effect on July 01, 2006, has opened a new chapter for protection of intellectual property rights (IPR) in Vietnam. This law together with its guiding regulations helped pave the way for Vietnam’s accession to the World Trade Organization (WTO).
After more than two years of implementation, however, some limitations of the Law should be addressed to enhance its applicability and capacity to contribute to Vietnam’s development. This article introduces some major contents of the fifth and latest draft of the Law (“the Draft”) that revises some articles of the current IP Law. The Draft will be presented for approval by the National Assembly in 2009.
Under the Draft, 36 articles of the IP Law would be amended and one article, Article 220a, would be added. Following are some notable proposed changes.
Copyright terms extended
The term of copyright protection for cinematographic works, photographic works, dramatic works, applied art works, and anonymous works as well as the term of protection for related rights (Article 27.2.a & Article 34) would be extended to 75 years, from 50 years as currently provided. The extension should be made for a number of reasons. First, it aims to provide an equal treatment for Vietnamese individuals and legal entities and those of the United States of America in which said works are protected for 75 years under the US Copyright Law. In addition, as a WTO member, Vietnam should apply the national treatment principle. Since the average life expectancy in Vietnam has reached 73 years, it is reasonable to extend the term of protection for some works to establish a protection term equivalent to that of works protected for the life of the author plus 50 years.
The proposed amengment to Article 119 would remove the specific terms guiding examination of industrial property applications. These terms would instead be stipulated in a separate legal document issued by the Ministry of Science and Technology. This amendment would streamline the process for extending the examination period of IP applications, thereby facilitating the efforts of the National Office of Intellectual Property of Vietnam (NOIP) to deal with its current overload.
Enforcement of IP rights
In the proposed amendment to Article 201.1, state authorities in charge of IP management would gain the authority to assess IPR infringements. This amendment would pave the way for the NOIP or Copyright Office of Vietnam (COV) to regain the authority to assess IPR infringements that they possessed before the IP Law was enacted. Under the current IP Law, the NOIP and the COV do not have the right to assess IPR infringements because they are only classified as registries of IPRs. The roles of the state authorities were limited in this way because of fears that conflicting roles might threaten the objectivity of IPR infringement assessments. It was thought that IPR assessments should be conducted by other individuals or organizations with substantial knowledge of IP and without conflicting interests. After two-years of implementation, and contrary to the expectation of lawmakers, this limitation has emerged as the main obstacle to enforcement of IPRs, due to a lack of assessment organizations or assessment specialists. Therefore, IPR owners as well as IPR enforcement lawyers hope that the new amendment will enhance the effectiveness of IPR enforcement in the near future.
Under the proposed amendment to Article 211.1., current administrative procedures would be revised by eliminating the requirement to send a warning letter to suspected infringers. However, IPR infringements are considered to be civil infringements but not infringements of public order (administrative affairs) because IPR infringements involve private ownership rights). Thus, the drafters noted that this is a temporary solution that should only apply as long as IPR infringements are limited to civil remedies (handled by civil courts). Civil remedies are disfavored by IPR owners and IP lawyers because this form of relief is limited.
Under the proposed amendment to Article 211.1.b, acts of unfair competition would be handled under the IP Law, rather than under the Competition Law as they are currently. The drafters argue that acts of unfair competition are considered civil infringement and would be protected more effectively if handled under the IP Law.
Under the proposed amendment to Article 214.4, the Government would apply fine levels in compliance with the newly amended Ordinance on Handling of Administrative Violations (amended in 2008). Accordingly, a fine imposed for IPR infringements must not exceed VND 500 million under administrative procedures since VND 500 million is the maximum fine level provided under the Ordinance. The maximum fine of VND 500 million stipulated in the 2008 Ordinance on Handling of Administrative Violations is strict enough to punish and deter the IPR infringers from infringing acts, while the current fine level, which ranges between one to five times the total value of IPR-infringing goods seized, is considered excessive and infeasible.
Under the current IP Law and Ordinance on Handling of Administrative Violations, only the chief inspector in charge of IP has the right to issue administrative decisions imposing a fine of over VND 500 million. This could overburden the IP Chief Inspector, making this existing provision infeasible.
Under Article 220A on the settlement of appeals and disputes involving IP, the Government will provide detailed regulations on the settlement of appeals related to the establishment, transfer and protection of IPRs. The People’s Supreme Court will prepare and submit to the Standing Committee of the National Assembly a plan for setting up specialized IP courts located in Hanoi, Ho Chi Minh City and Da Nang in order to deal with IP cases nationwide. The drafters argue that since IP is a very specific and complicated field, the settlement of IP disputes requires specialized judges and courts. Moreover, the establishment of IP courts would pave the way for the education and training of qualified judges specializing in IP cases.
In addition, the Draft contains amendments regarding certain provisions concerning rights for plant varieties that are considered to be non-compliant with UPOV (the International Union for the Protection of New Varieties of Plants). Affected provisions include: distinctiveness of the plant variety (Article 160), extension of the rights of protection of certificate holders (Article 187) and limitation of the rights of certificate holders (Article 190).
The Draft is scheduled to be presented to the National Assembly for approval in mid- 2009. If the changes are approved by the National Assembly, the IP Law would more effectively contribute to the development of the country and the enhancement of our technology level in the near future.
Vision & Associates