Regulations on handling complaints related to intellectual property

1. General provisions

1.1. Right to complain

Applicants and all organizations and individuals with rights and interests directly related to decisions or notices related to the processing of industrial property registration applications issued by the state management agency of industrial property have the right to file complaints with the state management agency of industrial property or file lawsuits in court in accordance with the provisions of the Law on Intellectual Property and relevant laws.

1.2. Time limit for complaints

The first complaint shall be made within ninety days from the date the person entitled to complain receives or learns of the decision or notice on the processing of the industrial property registration application;

The second complaint is thirty days from the date of expiration of the first complaint settlement period if the complaint is not settled or from the date the person with the right to complain receives or knows about the decision to settle the first complaint.

1.3. Complaint procedure

If the complaint is not resolved within the time limit set by the authority directly issuing the decision or notice related to industrial property (first complaint), or if the complainant or person with rights or interests directly related to that decision does not agree with the decision to resolve the complaint, the complainant or person with rights or interests directly related to that decision has the right to appeal to the Minister of Science and Technology (second complaint) or file a lawsuit in court. If the complainant or person with rights or interests directly related to that decision does not agree with the decision to resolve the complaint by the Minister of Science and Technology, the complainant or person with rights or interests directly related to that decision has the right to file a lawsuit in court.

1.4. Complaints file

The content of the complaint must be expressed in a complaint form, which must clearly state the full name and address of the complainant; number, date of signing, content of the notice or decision being complained about; content of the complaint, arguments, evidence to support the complaint; specific requests for correction or cancellation of the relevant notice or decision.

2. File a complaint

2.1. Implementation

- Submit application through an industrial property representative or directly at the headquarters of the Department of Intellectual Property and its offices in Ho Chi Minh City or Da Nang.

- By mail.

2.2. Components and number of documents

- Profile components, including:

Declaration form (02 copies according to the form);

+ Written explanation of the complaint and evidence to prove the complaint;

+ Copy of the decision or notice of complaint from the Intellectual Property Office;

+ Copy of the first complaint settlement decision (for second complaints);

+ Power of attorney (if applying through a representative);

+ Documents for payment of fees and charges.

- Number of documents: 02 (sets).

[Article 119a of the Law on Intellectual Property; Articles 7,8,9,33 of the Law on Complaints; Article 36 of Circular 23/2023/TT-BKHCN] 

3. Complaint resolution

3.1. Complaint handling

a) Within 10 days from the date of receipt of the complaint, the person competent to resolve the complaint must examine the complaint according to the formal requirements and issue a written notice to the complainant on whether the complaint is accepted or not, stating the date of acceptance of the complaint or stating the reason for not accepting the complaint.

b) A complaint will not be accepted if it falls into one of the following cases:

(i) The subject of the complaint is not the official decisions or notices specified in Clause 2, Article 35 of this Circular;

(ii) The decision, notice or action being complained about is not directly related to the legitimate rights and interests of the complainant;

(iii) The complaint is not submitted in accordance with the provisions of Clause 2, Article 36 of this Circular;

(iv) The complaint is filed outside the prescribed statute of limitations, except for the cases specified in Clauses 3 and 4, Article 15 of Decree No. 65/2023/ND-CP;

(v) The complaint has a second decision to resolve the complaint;

(vi) The complaint has been accepted by the Court or has been resolved by a judgment or decision of the Court, except in cases where there is a decision by the Court to suspend the settlement of the administrative case;

(vii) The complainant continues to complain after the 30-day period from the date of the decision to suspend the complaint settlement as prescribed in Article 10 and Clause 8, Article 11 of the Law on Complaints has expired;

(viii) The complaint does not indicate the illegal elements of the decision, notice, or act being complained about and only requests amendments and supplements to the application that are the subject of that decision or notice.

(ix) Complaints against notices, administrative decisions, and acts related to industrial property objects within the scope of state secrets.

c) If the complainant does not pay the appraisal fee for cases that require re-appraisal to serve the complaint settlement according to the notice of acceptance of complaint settlement specified in section (ii) point a of this clause, the complaint shall be settled on the basis of documents in the file.

3.2. Related parties

a) For accepted complaints, the competent authority to resolve complaints shall notify in writing the content of the complaint to the person with directly related rights and interests ("related party") and set a deadline of 01 month from the date of notification for that person to provide comments.

b) The relevant party has the right to provide information and evidence to prove his/her argument within the time limit specified in Point a above. The person with authority to resolve the complaint is responsible for considering such information and evidence when resolving the complaint.

c) The complaint handler shall notify in writing the content of the relevant party's opinion and set a deadline of 02 months from the date of notification for the complainant to respond to the relevant party's opinion;

d) If at the end of the specified period one party has not commented, the complaint will be resolved on the basis of the documents contained in the complaint, including documents expressing the opinions of the other party.

3.3. Decision to resolve complaints

a) Based on the arguments and evidence of the complainant and related parties, the person with authority to resolve the complaint must issue a decision to resolve the complaint within the time limit for resolving the complaint as prescribed by law on complaints.

b) Before making a decision to resolve a complaint, the person with authority to resolve the complaint shall notify the complainant and the relevant party of the arguments and evidence of the other party used to resolve the complaint as well as the conclusion of the complaint resolution.

c) The decision to resolve a complaint must have the contents prescribed by law on complaints.

3.4. Announcement

The decision to resolve the complaint shall be published on the Electronic Information Portal of the complaint resolution agency within 15 days and in the Industrial Property Gazette within 02 months from the date of signing the decision.

3.5. Validity of complaint settlement decision

a) The decision to resolve the first complaint by the Director of the Intellectual Property Office shall take legal effect after 30 days from the date of signing if the complainant does not file a second complaint; for remote areas with difficult travel, the time limit may be extended but not more than 45 days;

b) The second decision to resolve the complaint by the Minister of Science and Technology shall take legal effect after 30 days from the date of signing; for remote areas with difficult travel, the time limit may be extended but not more than 45 days.

[Article 27 of the Law on Complaints; Article 119a.1 of the Law on Intellectual Property; Article 38, Article 39, Article 40 of Circular 23/2023/TT-BKHCN]

4. Procedures for requesting cancellation of protection certificates and termination of validity

4.1. 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.

4.2. 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.”

4.3. 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).

4.4. Complaint resolution

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.

4.5. 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.

4.6. Disclosure

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]