Procedures for requesting cancellation of protection certificate and termination of patent validity

1. Right to request

Any organization or individual with directly related rights and interests who finds that a granted trademark, industrial design, utility solution or invention affects the rights of their protection certificate has the right to request the competent authority to cancel the validity of the granted protection certificate.

2. Legal basis

The legal basis for the proposed cancellation is as follows:

“According to the provisions of Article 96 of the Law on Intellectual Property:

1. The Certificate of Protection shall be completely invalidated in the following cases:

a) The applicant applies for trademark registration with bad faith;

b) The patent application is submitted contrary to the provisions on security control for inventions specified in Article 89a of this Law;

c) An application for a patent for an invention directly created based on genetic resources or traditional knowledge about genetic resources but does not disclose or incorrectly discloses the origin of the genetic resources or traditional knowledge about genetic resources contained in the application.

2. A protection certificate shall be invalidated in whole or in part if it does not satisfy the provisions of this Law on registration rights, protection conditions, amendments and supplements to applications, disclosure of inventions, and the first-to-file principle in the following cases:

a) The applicant does not have the right to register and is not assigned the right to register the invention, industrial design, layout design or trademark by the person with the right to register;

b) The industrial property object does not satisfy the protection conditions prescribed in Article 8 and Chapter VII of this Law;

c) Amendments and supplements to an industrial property registration application that expand the scope of the subject matter disclosed or stated in the application or change the nature of the subject matter requested for registration stated in the application;

d) The invention is not disclosed so completely and clearly that a person with average knowledge in the art can carry out the invention;

d) The invention granted a protection certificate exceeds the scope of disclosure in the original description of the patent application;

e) The invention does not satisfy the first-to-file principle prescribed in Article 90 of this Law.

3. If a protection certificate is wholly or partly revoked as prescribed in Clause 1 and Clause 2 of this Article, the whole or the revoked part of that protection certificate shall not be valid from the time of issuance of the certificate.

4. Organizations and individuals have the right to request the state management agency of industrial property rights to cancel the validity of protection certificates in the cases specified in Clauses 1 and 2 of this Article, provided that fees and charges are paid.

The statute of limitations for exercising the right to request the cancellation of the validity of a protection certificate is the entire protection term, except for the case of requesting the cancellation of the validity of a protection certificate for a trademark for the reason specified in Clause 2 of this Article, the statute of limitations is five years from the date of issuance of the protection certificate or from the date of international registration of the trademark taking effect in Vietnam.

5. Based on the results of the examination of the request for cancellation of the protection certificate and the opinions of the relevant parties, the state management agency of industrial property rights shall decide to cancel the protection certificate or notify the refusal to cancel the protection certificate.

6. The provisions of Clauses 1, 2, 3, 4 and 5 of this Article shall also apply to the cancellation of international registrations of trademarks and industrial designs.”

3. Submit application

The application for termination of validity and cancellation of validity of Trademark Protection Certificate includes:

- Application form for termination or cancellation of protection certificate;

- Application form for termination or cancellation of protection certificate according to Form No. 8 in Appendix II of Decree 65;

- Evidence related to the request to terminate/cancel the Certificate of Protection,

- Authorization document (in case the request is submitted through a representative);

- Explanation of the reason for the request (clearly stating the certificate number, reason, legal basis, content of the request to terminate, cancel part or all of the validity of the protection certificate) and related documents;

- Copy of fee payment receipt (in case of payment of fees via postal service or direct payment to the account of the state management agency of industrial property rights).

4. Resolve the application

The procedure for handling requests to terminate the validity and request to cancel the validity of a Certificate of Protection is as follows:

In case a third party requests to terminate or cancel the validity of a protection certificate, within 01 month from the date of receipt of the request, the Intellectual Property Office shall notify in writing the third party's opinion to the owner of the protection certificate, setting a time limit of 02 months from the date of issuance of the notice for the owner of the protection certificate to provide his/her opinion. The Intellectual Property Office may organize a direct exchange of opinions between the third party and the owner of the relevant protection certificate;

Based on the consideration of the opinions of the parties, the state management agency of industrial property rights shall issue a decision to terminate/cancel part or all of the validity of the protection certificate or notify the refusal to terminate/cancel part or all of the validity of the protection certificate according to the provisions of Clause 5, Article 95 and Clause 5, Article 96 of the Law on Intellectual Property.

5. Complaints about settlement decisions

If the applicant or related party does not agree with the content of the decision to handle the request to terminate or cancel the validity of the protection certificate of the Intellectual Property Office, the applicant or related party has the right to appeal the decision or notice in accordance with the provisions of law on complaints related to industrial property procedures.

6. Announcement

The decision to terminate or cancel the validity of a protection certificate shall be published in the Industrial Property Gazette and recorded in the National Register of Industrial Property within 60 days from the date of signing the decision.

[Article 96, Article 99 of the Law on Intellectual Property; Article 32 of Decree 65/2023/ND-CP; Article 34 of Circular 23/2023/TT-BKHCN]

Complaint Form issued with Decree No. 124/2020/ND-CP dated October 19, 2020 of the Government