JAPAN INTELLECTUAL PROPERTY ASSOCIATIONASAHI SEIMEI OTEMACHI BLDG.18F
6-1 Otemachi 2-chome
Chiyoda-ku Tokyo, 100-0004, JAPANTEL: 81 3 5205 3321
FAX: 81 3 5205 3391
URL: http://www.jipa.or.jp/February 12, 2021
Mr. Dinh Huu Phi
Director GeneralIntellectual Property Office of Viet Nam (IP Viet Nam)
386 Nguyen Trai St., Thanh Xuan Dist.,
Ha Noi, Viet Nam

Dear Mr. Phi,
Re: JIPA Comments on the amendment to Vietnam Intellectual Property Law
We, the Japan Intellectual Property Association “JIPA”, are a private user organization withabout 970 major Japanese companies as members. When appropriate opportunities arise,
we offer our opinions on the intellectual property system of other countries and makerecommendations for more effective implementation of the systems.
Having learned the amendment to Vietnam Intellectual Property Law on your website, wewould like to offer our opinions as follows.
Your consideration on our opinions would be greatly appreciated.
Sincerely yours,

Hiroya OKUMURA

Makoto FUKUOKA

Vice PresidentManaging Director

Koji SAITO

Tatsuya MORIManaging Director

Managing Director

Japan Intellectual Property AssociationOpinion on Vietnam Intellectual Property Law Amendment (1)1. Article 128 (drugs) and Article 128a (medicine and pesticides)
It can be read as the handling of data protection relating to regulatory approvalrather than IP, but the difference between Article 128 (2) 5 years and Article 128a(2) 10 years is unclear. Is Article 128a subject to pharmaceuticals and pesticides,and Article 128 other than that? We would like to request clear guidance.
Also, does the use of confidential information specified in these two paragraphs
correspond to so-called data protection in other countries? If the application is notmade as confidential information and there is no patent protection, does it meanthat the generic manufacturer can immediately apply for regulatory affairs withoutclinical trials? We hope that you will provide clear guidance and operate in global
harmonization.
Further, these provisions should be retroactive, and a system should beestablished so that data can be protected even for drugs that have been approved
and applied for approval.
2. Article 131aWe think it is a provision regarding the extension of patent protection in the eventof a delay in regulatory examination, but this is stipulated within 12 months fromthe date when the drug was approved. When is the deadline for filing a patent if it
is registered later than the drug approval? Also, are there any restrictions on theapplicable patents, such as substance patents only or not? Please give clear
guidance on this as well.
It is desirable to adopt Plan 2, and the patent term extension should be up to five
years rather than up to two years.
3. Articles 145 and 146
The compulsory license should be operated under strict rules, and consideration
should be given to avoid disadvantages to the patentee.

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Opinion on Vietnam Intellectual Property Law Amendment (2)1. Article 4 (13)The amendment bill defines that a design is the appearance of a finished productor a "part" incorporated into a finished product.
This indication could be interpreted that only "spare parts and components" thatcan be completely separated from the finished product are protected by design law.
We are afraid that there is a risk that the imitation of characteristic parts whichcannot be completely separated from the finished product could be out of scope ofthe design protection.
Therefore, we would like to request that it should be clarified that the "part"should include both separable parts and inseparable parts from the finished product.
We welcome the inclusion of shapes, patterns, colors, or combinations thereof in
the definition of the outer shape. There are many imitation products that are uniqueonly in patterns and colors, and many users wanted to revise this clause to takemeasures against these imitation products.
The explanation of the appearance indicates that it should be “visually observed
while the finished product is used”
However, there is the case that spare parts/ components which do not comply
with the above situation can be traded independently. Therefore, we would like torequest such spare parts/ components should be treated and protected in the same
way as the finished product.
2. Article 103
We agree to option 1.
We would like to request that the indication of "the shape features of the design"in the specifications should be optional, as the other countries currently request to
the applicants when needed.
If the submission of both "the shape features of the design" and “the scope ofdesign protection” is mandatory, as it is suggested in option 2, we suppose that it
would be the unique procedure, compared with that of other countries and thiswould add the further burden to applicants. From international harmonization pointof view, we do not agree to option 2.
3. Article 110
Thank you very much for your suggestions for option 1.
We would highly appreciate if you could give the applicant a preparation period fromthe time of application to the time when the product is announced to the market.
2Regarding the extension period, your country is one of the contracting parties ofthe Hague system, and please consider introducing a system similar to theextension period of the Hague system.
For reference, the deferment of publication for a period of up to 30 months has
been stipulated, and standard publication period has been changed from 6 months
to 12 months.
Also, please consider introducing an immediate publication after filing at themoment.
In major countries, design applications are open to the public after registration.
We also hope that it will be released after registration in Vietnam.

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Opinion on Vietnam Intellectual Property Law Amendment (3)1. Article 96
Thank you very much for adding Article 96 a) as an item for invalidation.
However, we are concerned that the term “bad faith” in the Article 96 a) isunclear. So, we would like to specify the terms and conditions in Article 96 a) thatthe trademark shall be invalid if the trademark is identical with, or similar to, a
trademark which is well known among consumers in Vietnam or other countries forthe goods or services pertaining to a business of another person, if such trademark
is registered for unfair purposes referring to the purpose of gaining unfair profits,
the purpose of causing damage to the other person, or any other unfair purposes.
2. Article 74(2)We propose to add the following exception that 96 h) is not applied:
If the trademark was invalidated due to Article 96 a), a trademark filed by a fairowner or an authorized user shall be registered without any terms and conditions.

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Opinion on Vietnam Intellectual Property Law Amendment (4)1. Article 211(1)1st option
In this amendment, Article 211, Paragraph 1 (a) and Paragraph 3 will be deleted.
This means that all IP rights infringements are not subject to administrative
sanctions. This results in a flood of counterfeit products. Most counterfeit products
are inferior and are very likely to jeopardize consumer safety. Therefore, from theviewpoint of protecting your people, we request that you maintain the current law
without amending this clause.
(2)2nd optiona) First option
In Article 211, Paragraph 1 (a) of this amendment, the design is not subject toadministrative sanctions. However, there are many counterfeit products in Vietnam
that infringe on design rights. Many counterfeit products that only infringe on design
rights are defective and are very likely to jeopardize consumer safety. In Vietnam,
VIPRI has established a system to judge the similarity of designs, and it is not so
difficult to take administrative sanctions for infringement of design rights. Therefore,
from the viewpoint of protecting your people, we request that you maintain thecurrent law without amending this clause.
b) Second option
In Article 211, Paragraph 1 (a) of this amendment, not only designs but also
trademarks are not subject to administrative sanctions. The most common
counterfeit products are trademark infringing products. Excluding a trademark fromadministrative sanctions strongly encourages the flood of counterfeit goods. This istotally unacceptable from the point of view of consumer protection. Therefore, fromthe viewpoint of protecting your people, we request that you maintain the current
law without amending this clause.
2. Article 216, Paragraph 1 (a)(1)1st option
In this amendment, only trademark infringement and forgery of geographicalindications are subject to suspension of customs clearance procedures. However,many counterfeit products that infringe design rights already exist in Vietnam,
threatening the safety of consumers. Therefore, from the viewpoint of protecting
your people, we request that you maintain the current law without amending thisclause.
(EOD)
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