IPR protection changes upon TPP

Tran Nam Long, attorney at law and partner at Elite Law Firm, offers his insight into some of the expected changes relating to the protection of intellectual property rights.

A quick comparison of Vietnam’s intellectual property laws and those of the Trans0-Pacific Partnership (TPP) would suggest that the existing local mechanism for protecting intellectual property rights (IPR) will change most dramatically in the three following aspects: expanding the scope of protection for subjects, adding new subjects to be protected, and increasing penalties for IPR infringements.

First for all, under current law, patent protection is available for a technical solution in the form of a product or process. Under the TPP, signatories have to make patents available for inventions claimed for news use of a known product, new methods of using a known product, or new processes of using a known product, hereby collectively referred to as ‘use claim patent’.

A new point worth pointing out is the protection term which compensates for an unreasonable delay in the issuance of patents.

Also, the TPP includes regulations facilitating patent registration such as allowing patent holders a 12-month grace period to use the invention in market before deciding whether to register harmonizing patent application procedures between signatories which provide patent holders with more options to protect their rights and to reduce registration costs.

There are more notable changes in the industrial design (ID) protection measures under the TPP. Namely, Vietnam shall adopt a partial design system to provide protection for the prominent aspects of the product, in addition to the current protection mechanism for the entire product which is still in force.

The new system will help to protect IDs more effectively and will repair the weaknesses within the current mechanism. For instance, in the case of protected ID for a cylindrical piece of glass with a creative pattern on its body, the current regulations state that glass of a different shape but with the same creative pattern would be considered a different item than the cylinder that holds the protected ID.

Conversely, under the partial design system, protection is provided for the unique pattern of the product itself.

Generally, there are no significant changes on trademarks and geographical indications under the TPP and those of current Vietnamese laws, except for the fact that protection must be made available to sound and possibly smell trademarks in the future. The term of protection for copyright and related rights under the TPP will be extended by 20 years compared to that under current regulations.

Secondly, some new subjects will be protected.

In the past, ‘undisclosed test or other data’ were protected as trade secrets which did not benefit from strong protection mechanisms. To date, trade secret infringements have rarely been handled by competent authorities.

As per the TPP’s regulations, signatories would be requested to make undisclosed test or other data relating to the safety and/or efficacy of new agricultural chemical products eligible for exclusive protection at least five years.

Right Management Information (RMI)

RMI is information which defines the authors, performers, producers, and requirements for using a given work. This information usually appears in the final phase of the work.

Currently, the scope of protection for copyright is defined mostly according to its content, while the information on authors and producers is usually neglected. Since RMI is protected as an independent subject, the copyright shall be protected more effectively, more adequately, especially in the aspect of moral rights protection of works.

Enhancing the effectiveness of IPR enforcement is central to the TPP

Criminal penalties arising from IPR infringement under the TPP would be far more severe than that of current regulations. If the trade pact is ratified, Vietnam shall criminalise all types of IPR infringements, and precursors of IPR infringement such as receiving, decoding, distributing encrypted programme- carrying satellite signals, as well as instigators and assistants thereof.

Severe criminal penalties will apply to the willful manufacture/importation of counterfeit and/or pirated copyright goods on a commercial scale. Also, facilities and materials found in contravention of intellectual property rights would either be confiscated, destroyed, or distributed for non-profit purposes. Properties originating from the trade of such goods shall also be confiscated.

TPP signatories are required to build transparent regulations on the civil, administrative, and criminal repercussions of IPR infringements, including infringements in the digital domain.

In summary, in the months ahead, Vietnam’s protection of IP rights may be dramatically influenced by the TTP agreement, especially in terms of IPR enforcement. Although there will be a grace period of between three to 12 years, it is clear that IPR protection is set to become stronger and more practical in Vietnam.

Enterprises operating businesses in Vietnam should take advantage of the precious grace period to adapt to the new rules likely to be applied.