Decree No. 119/2010/ND-CP amends and supplements certain articles of Decree No. 105/2006/ND-CP dated September 22, 2006, of the Government detailing and guiding the implementation of certain provisions of the Intellectual Property Law on protecting intellectual property rights and state management of intellectual property.

DECREE

Amending and supplementing certain Articles of Government Decree No. 105/2006/NĐ-CP dated September 22, 2006, detailing and guiding the implementation of certain provisions of the Intellectual Property Law on protecting intellectual property rights and state management of intellectual property.

This Decree details and guides the implementation of certain provisions of the Intellectual Property Law regarding the determination of acts of infringement, the nature and degree of infringement of intellectual property rights, the determination of damages, requests and resolution of requests to handle infringements, handling of intellectual property right infringements, supervision of goods for export and import related to intellectual property, intellectual property appraisal, and state management of intellectual property.

And state management of intellectual property.

 ____________________________

THE GOVERNMENT

Pursuant to the Law on Organization of the Government dated December 25, 2001;

Pursuant to the Intellectual Property Law dated November 29, 2005, amended and supplemented on June 19, 2009;

Considering the proposal of the Minister of Science and Technology,

DECREE:

Article 1. Amending and supplementing certain Articles of Government Decree No. 105/2006/NĐ-CP dated September 22, 2006, detailing and guiding the implementation of certain provisions of the Intellectual Property Law on protecting intellectual property rights and state management of intellectual property as follows:

1. Amend Article 1 as follows:

"Article 1. Scope of application

This Decree details and guides the implementation of certain provisions of the Intellectual Property Law concerning the determination of acts of infringement, the nature and degree of infringement of intellectual property rights, the determination of damages, requests and resolution of requests to handle infringements, handling of intellectual property right infringements, supervision of goods for export and import related to intellectual property, intellectual property appraisal, and state management of intellectual property.”

2. Amend Clause 1 of Article 14 as follows:

“ Article 14. Factors constituting infringement of rights over plant varieties

1. Factors constituting infringement of rights over plant varieties may belong to one of the following forms:

a) Using propagation material of a protected plant variety to carry out the acts prescribed in Clause 1 of Article 186 of the Intellectual Property Law without permission from the owner of the Plant Variety Protection Certificate;

b) Using propagation material of the plant varieties prescribed in Article 187 of the Intellectual Property Law;

c) Using the name of a plant variety of the same genus or closely related genus as that of the protected plant variety, if such name is identical or similar enough to cause confusion with the name of the protected plant variety;

d) The provisions at point a and point b of this clause also apply to harvested materials if the owner of the Plant Variety Protection Certificate has not had reasonable conditions to exercise their rights over the propagation material of the same variety.”

3. Amend Clause 1 of Article 23 as follows:

" Article 23. Documents and evidence attached to the request for handling infringement

1. The person requesting the handling of infringement must attach the following documents and evidence to the request for handling infringement to prove their claim:

a) Evidence proving that they are the subject of the right if the requester is the owner or the transferee, inheritor of intellectual property rights;

b) Evidence proving that the act of infringement has occurred; evidence suspecting that exported or imported goods infringe intellectual property rights for the application to temporarily suspend customs procedures;

c) Other documents and evidence to prove their claim.”

4. Amending and supplementing Clause 1 and Clause 2 of Article 24 as follows:

“ Article 24. Evidence proving the subject of the right

1. For inventions, industrial designs, layout-designs, trademarks, geographical indications, plant varieties, copyright, performers' rights, producers' rights of phonograms and videograms, broadcasting organizations' rights that have been registered, evidence proving the subject of the right is one of the following types of assets:

a) A copy of the Invention Patent Certificate, Utility Model Patent Certificate, Industrial Design Patent Certificate, Layout-Design Registration Certificate, Trademark Registration Certificate, Geographical Indication Registration Certificate, Plant Variety Protection Certificate, Copyright Registration Certificate, Related Rights Registration Certificate submitted along with the original for comparison, except where the copy has been certified according to regulations;

b) An extract from the National Register of Industrial Property; An extract from the National Register of Copyright and Related Rights; An extract from the National Register of Protected Plant Varieties issued by the competent authority registering those objects.

2. For trademarks registered internationally, evidence proving the subject of the right is a copy of the International Trademark Registration Certificate protected in Vietnam issued by the competent state management agency for industrial property submitted along with the original for comparison, except where the copy has been certified according to regulations.

5. Amending the name of Chapter IV as follows:

“ Chapter IV. Handling Infringement of Intellectual Property Rights”

6. Amend Clause 1 and Clause 2 of Article 28 as follows:

“ Article 28. Determination of the Value of Infringing Goods

1. Infringing goods are defined as follows:

a) Infringing goods are parts or components (hereinafter referred to as "parts") of a product containing infringing elements and capable of being circulated independently as a separate product;

b) In cases where it is not possible to separate the infringing element into a part of the product that can be circulated independently as provided for in Point a of this Clause, the infringing goods shall be the entire product containing the infringing element.

2. The value of the infringing goods shall be determined by the infringement handling agency at the time of the infringement act based on the following priority grounds:

a) The listed price of the infringing goods;

b) The actual selling price of the infringing goods;

c) The production cost of the infringing goods, if they have not yet been circulated;

d) The import price of the infringing goods.”

7. Repeal Article 33.

8. Amend Clause 1 of Article 36 as follows:

“ Article 36. Handling Procedures for Applications

1. Within twenty days from the date of receipt of the application requesting inspection and supervision of exported or imported goods, or within twenty-four working hours from the time of receipt of the application requesting suspension of customs procedures, the customs authority shall be responsible for examining and issuing a notice accepting the application if the applicant has fulfilled the obligations as stipulated in Points a, b, c of Clause 1 and Clause 2 of Article 217 of the Law on Intellectual Property. In case of rejection, the customs authority must respond in writing to the applicant and specify the reasons.”

9. Amend Clause 1, supplement Clause 3 of Article 39 as follows:

“ Article 39. Content and Scope of Intellectual Property Appraisal

1. Intellectual property appraisal includes the following contents:

a) Determining the scope of protection of the subject matter of intellectual property rights as prescribed in Article 6 of this Decree;

b) Determining whether the object under consideration meets the conditions to be considered an infringing element of intellectual property rights as prescribed in Clause 2 of Article 5 and Articles 7 to 14 of this Decree;

c) Determining whether there is duplication, equivalence, similarity, confusion, difficulty in distinguishing, or copying between the object under consideration and the protected object;

d) Determining the value of intellectual property rights, determining the amount of damage.

3. The Ministry of Culture, Sports and Tourism, the Ministry of Science and Technology, and the Ministry of Agriculture and Rural Development shall be responsible for providing specific guidance on intellectual property appraisal activities in the fields specified in Clause 2 of this Article within their respective areas of management.”

10. Amend and supplement Article 42 as follows:

“ Article 42. Intellectual Property Appraisal Organizations

1. The organizations prescribed in Clause 2 of Article 201 of the Law on Intellectual Property that are allowed to conduct appraisals include:

a) Enterprises established and operating according to the laws on enterprises;

b) Cooperatives and cooperative unions established and operating according to the laws on cooperatives;

c) Public Service Units;

d) Organizations practicing law established and operating according to the laws on lawyers, except branches of foreign lawyer organizations, limited liability law firms with one hundred percent foreign capital, and limited liability joint ventures between Vietnamese lawyer organizations and foreign lawyer organizations.

2. Intellectual property appraisal organizations must meet the following conditions:

a) Having at least one intellectual property appraiser;

b) Having a headquarters, equipment, and work tools;

c) Having necessary information databases to carry out appraisal activities.

3. Intellectual property appraisal organizations may only conduct appraisal activities in the fields registered for operation.”

11. Amend and supplement Article 43 as follows:

“ Article 43. Rights and Obligations of Intellectual Property Appraisal Organizations

1. Intellectual property appraisal organizations have the following rights:

a) To hire intellectual property appraisers to conduct appraisals for individual cases;

b) To request agencies, organizations, and individuals to provide relevant information and documents related to the objects under appraisal to carry out the appraisal, except where otherwise provided by law;

c) Other rights as prescribed by law;

2. Intellectual property appraisal organizations have the following obligations:

a) To operate within the field of appraisal recorded in the Business Registration Certificate or the Registration Certificate for Operation;

b) To preserve and store documents and files related to the appraisal cases;

c) To keep confidential information and documents as required by the agencies, organizations, and individuals requesting or requesting the appraisal and must compensate for damages in case of causing damage to the relevant agencies, organizations, and individuals;

d) Other obligations as prescribed by law.”

12. Amend and supplement Article 44 as follows:

“ Article 44. Intellectual Property Appraiser

1. An intellectual property appraiser is a person who possesses sufficient knowledge and specialized expertise to evaluate and conclude on issues related to the content to be appraised, recognized and issued an Intellectual Property Appraiser Card by the competent state agency.

2. A person meeting the conditions stipulated in Clause 3, Article 201 of the Intellectual Property Law shall be recognized and issued an Intellectual Property Appraiser Card by the competent state agency.

3. The intellectual property appraiser has the following rights:

a) May operate within one intellectual property appraisal organization under the name of that organization or operate independently;

b) Refuse to appraise if the relevant documents are insufficient or lack value for making an appraisal conclusion;

c) Use the results of examination or expert conclusions to serve the appraisal process;

d) An independent intellectual property appraiser has the right to request agencies, organizations, or individuals to provide information and documents related to the object being appraised to carry out the appraisal, except where otherwise provided by law;

đ) Other rights as prescribed by law.

4. The intellectual property appraiser has the following obligations:

a) Prepare the appraisal file, attend according to the summons from the requesting agency; explain the appraisal conclusion when requested;

b) Safeguard objects and materials related to the appraisal case;

c) Independently draw conclusions and bear responsibility for their own appraisal conclusions; if intentionally providing false conclusions causing damage to related individuals or organizations, they must compensate for the damage;

d) Refuse to appraise if the appraiser has rights or interests related to the object being appraised, the case requiring appraisal, or other reasons affecting the impartiality of the appraisal conclusion;

e) Maintain confidentiality of information and documents as required by the requesting agency, organization, or individual and must compensate for damages caused to related agencies, organizations, or individuals;

f) Comply with regulations on the procedures and formalities of appraisal;

g) Other obligations as prescribed by law.”

13. Amend Clause 3 of Article 50 as follows:

“ Article 50. Supplementary Appraisal, Reappraisal

3. In cases where there are differences between appraisal conclusions or between an appraisal conclusion and the expert opinion of the state management agency on intellectual property regarding the same issue to be appraised, the requesting party may continue to request another appraisal organization or appraiser to conduct a reappraisal.

In necessary cases, the requesting agency may establish an Advisory Board to seek expert opinions on the issue to be appraised, including experts and representatives of related agencies and organizations.”

14. Amend Clause 1 of Article 51 as follows:

" Article 51. Appraisal Conclusion Document

1. The appraisal conclusion document is one of the sources of evidence for the competent authority to resolve the case. The appraisal conclusion document does not make a determination on acts of infringing intellectual property rights or on disputes.”

15. Add Point e to Clause 1 of Article 55 as follows:

“ Article 55. Responsibilities of the Ministry of Science and Technology

e) Establishing a database system and setting up a national information network for state management of intellectual property rights and protection of intellectual property rights.

16. Replace the phrase "Ministry of Culture, Sports and Tourism" for the phrase "Ministry of Culture, Information" in Clause 1 of Article 55, Article 56, Article 58, Clause 1 of Article 60 and Clause 1 of Article 63 of Decree No. 105/2006/NĐ-CP dated September 22, 2006 of the Government detailing and guiding the implementation of certain provisions of the Intellectual Property Law on the protection of intellectual property rights and state management of intellectual property.

Article 2. Effective Date

This Decree takes effect from February 20, 2011.

Article 3. Responsibilities for guiding implementation

1. The Minister of Science and Technology, the Minister of Culture, Sports and Tourism, and the Minister of Agriculture and Rural Development shall be responsible for implementing this Decree.

2. Ministers, Heads of ministerial-level agencies, Heads of government-affiliated agencies, Chairpersons of provincial and centrally governed city People's Committees are responsible for implementing this Decree./.