Industrial Designs

We provide clients of all sizes with a full range of industrial design services in Vietnam, including:

• General counseling;
• Conducting searches and opinions on the registrability of industrial design;
• Preparation, filling, prosecution of industrial design applications;
• Opposition, appeal, cancellation, invalidation proceedings;
• Providing advices on and proceeding with the recordal of changes concerning pending industrial design applications and industrial design patents;
• Opinions on industrial design licensing/assignment;
• Negotiation, drafting and registration of industrial design licensing/assignment agreements;
• Investigations and opinions on industrial design infringements and disputes;
• Resolution of industrial design infringements and disputes through arbitration and mediation;
• Dealing with industrial design infringements through administrative remedies at the state IP enforcement competent administrative authorities (inspectorate, police agencies, market management agencies, custom offices, people’s committees);
• Civil and criminal litigation at courts against industrial design infringements;
• Watching services;
• Renewal services;

Our design team includes registered patent attorneys, patent agents and practitioners, who have degrees and advanced degrees in science, technology, law, economic, etc. Some of them worked for the leading IP law firms in Vietnam and have more than 25 years experience and expertise in trademark prosecution, enforcement and litigation before joining the firm.

We are located in the heart of Hanoi capital, about 6km away from the NOIP. This enables us to work and interview directly with design examiners and timely meets our client’s request.

We also have a good relationship and effective cooperation with state IP enforcement competent authorities to protect and enforce client’s IP rights in Vietnam.

All of the above advantages, with our computerized IP management system, are enable us to work in a wide range of technical fields and provide professional services to clients ranging from largest multinational to start-up companies in an efficient, reliable, responsive, and cost-effective manner.

For more information concerning industrial design protection in Vietnam, please click to the desired section below or contact us.

Defination and conditions for protection of an Industrial Design

• Industrial design is defined as the shape of a product that is formed by lines, three-dimensional forms and colors, or a combination thereof, and that must be of worldwide novelty and serve as a pattern for manufacture of industrial or handicraft products.
• An industrial design shall be eligible for protection if it meets the following conditions: i) to be new; ii) to be creative and; iii) to be susceptible of industrial application.

Subject matters not protected as Industrial Designs

• Appearance of a product that is dictated by its technical features of the product;
• Appearance of a civil or an industrial construction work;
• Appearance of a product that is invisible during use of the product.

Filing principle

• The “first to file” principle is applied for design applications in Vietnam.
• If several design applications are filed by several applicants for the same design, on the same date or claim the same priority date, then all applicants shall be required to merge the applications into one application and only one patent for design will be granted to all the applicants as co-owners if they so agree. Otherwise, no patent will be granted.

Priority

• Priority under the Paris Convention is applied in Vietnam, based on an earlier application for the same subject matter filed in a foreign PC member country, or display of the same subject matter in an officially recognized international exhibition held in Vietnam or a foreign PC member country.
• Priority under a bilateral agreement or the principle of reciprocity as to priority can also be applied.

Application and filing

• Design applications must satisfy the unity requirement. Specifically, for industrial designs, this requirement will be satisfied if the application claims one design or a number of designs of different products in the following cases:
  i) Industrial designs of a set of products which contains several products expressing a single common inventive idea and that are used together or for a single purpose;
  ii) An industrial design accompanied by one or more other embodiments which is variant of the industrial design that express a single common inventive idea and that are not significantly different from the industrial design.
• Design applications will be filed with the National Office of Intellectual Property (NOIP) of Vietnam. Upon filing, the Receipt of Application will be issued in which the filing date and filing number are clearly determined.
• Design applications of Vietnamese citizens or entities can directly be filed with the NOIP. Design applications of foreign citizens permanently residing in Vietnam or foreign entities having legal presence in Vietnam or real and effective production and business establishments in the country may also be filed directly with the NOIP. Other than these specified cases, all applications of foreign applicants must be submitted through a licensed local IP agency like Tri Viet & Associates.

Protection term and renewal

• The patent for industrial design shall last 5 years from the filing date and can be renewed for two further terms, each of 5 years, subject to payment of renewal fee. 
• Patents for design shall be effective from the granting date.
• For patent for industrial design, the renewal fee must be paid within 6 months prior to the expiry of the earlier validity term. A six-month grace period is also available subject to the penalty of 10 percent of the renewal fee for each month late.

Formality Examination

• All design applications shall be subject to formality examination at NOIP.
• The formality examination will be conducted by the NOIP within 1 months from the filing date. 
• During the formality examination stage, amendments or supplements to the filed application can be made, provided that they must not expand the scope (volume) of protection or change the nature of the design.
• If the formality requirements are met, a Notification of Acceptance with respect to formality requirements will be issued to the applicant, in which official filing date, official filing number, and priority date are clearly determined and certified. To the contrary, the NOIP will reject the application with a Notification of Refusal of Acceptance or, where appropriate, notify and request the applicant to rectify the deficiencies.

Publication and Substantive Examination

• Design applications which have been accepted as to formality will be published in Official IP Gazette, Volume A in the second month from the signing date of Notification of Acceptance of legitimate application, except for cases where a request for early publication is filed. In case of request for early publication, the application shall be published within one month from receipt of the request or at a later date as specified in the request.
• Design applications which have been accepted as to form shall be examined as to substance within 6 (six) months counted from the date of publication of application, without subject to request for substantive examination.
• During the substantive examination stage, amendments or additions can be made to the filed application, provided that they must not change the nature of the design, or extend the scope (volume) of protection.

Grant of Patent

• Upon expiry of the substantive examination period, if the design is considered as fails to satisfy the protection criteria for granting of patent, the NOIP will issue a Notification of Examination Result of Application to the applicant notifying its intended refusal with reasons therefore or deficiencies which need to be corrected. The applicant must respond to the NOIP within 2 months, and if the applicant fails to respond or the response is unsatisfactory, the NOIP will officially reject the application with a Notification of Refusal of Granting Patent.
• If the design is determined to satisfy the protection criteria for granting a patent, the NOIP will issue a Notice to invite the applicant to pay the prescribed fees for granting, register and publication. Upon payment of the fees, the NOIP will grant a Patent for the industrial design.
• Granted patent for design will be published in the IP Gazette, Volume B and enter into the National Register of Industrial Property.

For registration of an Industrial Design

+ Information

• Full name, address and nationality of the applicant(s);
• Full name, address and nationality of the creator(s);
• Title of the design and field to which the design relates;
• International Classification for the design under Locarno Agreement; field of application; similar and known/used design(s); 
• Paris Convention Priority data (if any): country, application number and filing date of the original foreign application from which priority is claimed;
• Exhibition Priority data (if any): place where the design was exhibited, the name of the exhibition and the date on which the design was first exhibited.

+ Documents

• A Power of Attorney from the applicant (required at filing, a fax copy is acceptable provided that the original is submitted within 01 month from the filing date). Notarization and/or Legalization are/is required. This document must be signed by the Applicant if the Applicant is an individual or by the officer entitled to represent the Applicant if the Applicant is a legal entity and affixed by the corporate seal of such an entity (if any). General Power of Attorney is acceptable for filing various applications in the name of the same applicant;
• A Deed of Assignment of priority right where the applicant is different from the applicant having filed the priority application (required within 01 month from the filing date). Notarization and/or Legalization are/is required. This document must be signed by each party and affixed by a corporate seal (if any);
• A brief description of the Industrial Design and claims in English showing new, distinctive features of the design to be protected comparing to known similar designs (if any);
• Six (6) sets of photographs or Six (6) sets of drawings of the Industrial Design comprising perspective, front, back, left, right, top and bottom views. They must be in the same scale with a size not smaller than 90mm x 120 mm and not larger than 210 mm x 297 mm. Please note that if a design is applied to a part of an article, perspective photos/drawings of the article showing this part are required. In the case where the design is of a high level of difficulty, a cross-sectional drawing(s) in necessary places may be required. If an article to which the design is applied has a lid or is foldable (for example: refrigerator, wardrobe or suitcase), drawings or photos of it in the open position are required. (fax copies of photographs/ drawings are acceptable at filing, provided that the originals are submitted within 01 month from the filing date);
• A certified copy of the first filed application or Certificate issued by the competent authorities of the exhibition and the sworn English translation (in case  that the priority document is not in English), if the Paris Convention Priority is claimed  (required within 01 month from the filing date); 
• If a design bears a sign that is inherently registrable as a trademark, the applicant shall provide with the documents (e.g. copy of Trademark Registration Certificate granted by the NOIP or Trademark License Contract that has been registered with the NOIP), stating that the trademark placed on the design belongs to the applicant (if any).

+ Note

• A Deed of Assignment from the Designer(s) to the Applicant (if the Designer(s) and the Applicant are not the same), or document justifying the right to apply (inheritance, employment contract, service contract), under the current Law, is no longer required at the time of filing. However, the Vietnamese National Office of Intellectual Property (NOIP) reserves the right to request the applicant to submit this document in the case the NOIP has reasonable grounds to doubt the Applicant’s eligibility.

For renewal of a Design Patent

• A Power of Attorney from the Patent Owner (required at filing). Notarization and/or Legalization are/is required;
• The original Patent for Industrial Design (required at filing).

For recordal of an Assignment Agreement

+ Minimum-required contents of an Assignment Agreement

• The identity of the Assignor and Assignee (full name and address);
• Details of the IP objects to be assigned (information on granted Design Patent);
• Price of the assignment and term of payment;
• Rights and obligations of each party;
• Conditions for amendment, termination and invalidation of the Agreement;
• Method for settlement of disputes;
• Date and place of signing;
• Signatures of the parties or of their authorized representatives with the full names and position of the signatories. These signatures must be duly notarized.

+ Documents required for recordal of an Assignment Agreement

• A Power of Attorney from the Assignee and Assignor (required at filing, a fax copy is acceptable provided that the original is submitted shortly thereafter). Notarization and/or Legalization are/is required;
• The original Patent for Industrial Design;
• A notarized copy of Business Licence/Investment Licence (if the Assignee is a Vietnamese entity);
• Two original or certified copies of Assignment Agreement duly executed by both parties with the signatures verified by Notary Public, including appendix or appendices (if any) and their Vietnamese translations;

+ Notes

• The Assignment Agreement must be recorded with the National Office of Industrial Property of Vietnam (NOIP) to be legally effective and enforceable in Vietnam. 
• The request for recordal of the Assignment Agreement should be submitted within 60 days from the signing date.
• For those agreements to which one party is a Vietnamese entity which is State-owned or State-funded, the agreements shall be subject to approval by the Ministry of Science and Technology (MoST) before being recorded by the NOIP. 
• If the Agreement is executed in English only, the Vietnamese translation of the Agreement is required. The Vietnamese translation must be certified by a Notary Public in Vietnam. Tri Viet & Associates can provide translation service.
• The Assignment Agreement must be affixed with Corporate Seals or certified by Notary Public.
• A standard form of Assignment Agreement containing minimum-required provisions will be provided upon request.

For recordal of a License Agreement

+ Minimum-required contents of a License Agreement

• The identity of the Licensor and Licensee (full name and address);
• Details of the IP objects to be assigned (information on granted Design Patent);
• Scope of the License including: type of license (exclusive or non-exclusive); object(s) of license (Design Patent); territory of license (Vietnamese territory or part thereof); term of license (within the term of validity of the corresponding design patent). In case of a sub-license, the scope of the sub-license must fall within the scope of the corresponding exclusive license.
• Price of the License and term of payment;
• Rights and obligations of each party;
• Conditions for amendment, termination and invalidation of the Agreement;
• Method for settlement of disputes;
• Date and place of signing;
• Signatures of the parties or of their authorized representatives with the full names and position of the signatories. These signatures must be duly notarized.

+ Documents required for recordal of an License Agreement

• A Power of Attorney from the Licensor and Licensee (required at filing, a fax copy is acceptable provided that the original is submitted shortly thereafter). Notarization and/or Legalization are/is required;
• A certified copy of the Patent for Industrial Design;
• A copy of the Certificate of Recordal of the corresponding exclusive Agreement (if the Agreement to be approved is a sub-agreement);
• A notarized copy of Business Licence/Investment Licence of the Licensee (if the Licensee is a Vietnamese entity);
• Two original or certified copies of License Agreement duly executed by both parties with the signatures verified by Notary Public, including appendix or appendices (if any) and their Vietnamese translations;

+ Notes

• The License Agreement must be recorded with the National Office of Industrial Property of Vietnam (NOIP) to be legally effective and enforceable in Vietnam. 
• The request for recordal of the License Agreement should be submitted within 60 days from the signing date.
• For those agreements to which one party is a Vietnamese entity which is State-owned or State-funded, the agreements shall be subject to approval by the Ministry of Science and Technology (MoST) before being recorded by the NOIP. 
• If the Agreement is executed in English only, the Vietnamese translation of the Agreement is required. The Vietnamese translation must be certified by a Notary Public in Vietnam. Tri Viet & Associates can provide translation service.
• The License Agreement must be affixed with Corporate Seals or certified by Notary Public.
• A standard form of License Agreement containing minimum-required provisions will be provided upon request.

For recordal of chage of name and/or address

• A Power of Attorney from the Owner (required at filing). Notarization and/or Legalization are/is required;
• A notarized Declaration on Change of Name and/or Address by the Owner, or a certified copy of Official Record on Change of Name and/or Address (required at filing);
• Original Patent for Industrial Design (required at filing).

• Design database of World Intellectual Property Organazation (WIPO)
• Design database of UK Intellectual Property Office (UKIPO)
• Design database of Japan Patent Office (JPO)
• Design database of Russian Patent & Trademark Office (RPTO)
• Design database of National Office of Intellectual Property of Vietnam (NOIP)