Circular No. 163/TT-SHCN guiding the implementation of regulations on the approval and registration of license contracts

CIRCULAR

OF THE MINISTRY OF SCIENCE AND TECHNOLOGY AND ENVIRONMENT

GUIDELINES FOR IMPLEMENTING PROVISIONS ON APPROVAL AND REGISTRATION OF LICENSE CONTRACTS

Pursuant to Decree No. 201/HĐBT dated December 28, 1988, the Council of Ministers (now the Government) issued the Regulation on the Purchase and Sale of Patent Usage Rights, Utility Model Solutions, Industrial Designs, Trademarks, and Technical Secrets (referred to as the Regulation on the Purchase and Sale of Licenses).

The Ministry of Science and Technology and Environment issues this Circular to explain and guide the implementation of provisions regarding the approval and registration of license contracts as stipulated in the aforementioned Regulation.

I. GENERAL PROVISIONS, SUBJECT MATTER, AND LICENSE SUBJECTS

1. Standard Terminology

The standard terminology used in the Regulation on the Purchase and Sale of Licenses and in this Circular shall be understood as follows:

"Regulation" refers to the Regulation on the Purchase and Sale of Licenses.

"License" refers to the act where an organization or individual ("Grantor") permits another organization or individual ("Recipient") to use - within a specified territory ("license territory") and for a specified period ("license term") - patents, utility models, industrial designs, trademarks ("industrial property objects") that are under the ownership or usage rights of the Grantor.

"Exclusive License" refers to a license under which, within the license territory and during the license term, the Recipient has exclusive rights to use the industrial property object.

"Non-exclusive License" refers to a license under which, within the license territory and during the license term, the Recipient does not have exclusive rights to use the industrial property object, meaning the Grantor also retains the right to use or grant a third party the right to use the industrial property object.

"Dependent License" or "Secondary License" refers to a license where the Grantor of the secondary license is the Recipient of the exclusive license for the same industrial property object.

A secondary license is always a non-exclusive license.

The terms "patent," "utility model," "industrial design," and "trademark" are understood according to the Law on the Protection of Industrial Property Rights published on February 11, 1989, pursuant to Presidential Decree No. 13LCT-HĐNN8 of the Chairman of the State Council and the implementing regulations thereof.

The implementation of administrative sanctions according to the Decree shall apply in areas such as security, public order and safety; customs; taxation; trade; environmental protection; protection of aquatic resources; mineral resource protection; quarantine of animals and plants, health care, and other related fields within the exclusive economic zone and continental shelf of the Socialist Republic of Vietnam (excluding seaports).

2.1. The Regulation on the Purchase and Sale of Licenses governs relationships concerning the transfer of usage rights over industrial property objects (patents, utility models, industrial designs, trademarks) protected by the state through various forms (purchase, assignment, exchange). Such transfers are referred to as license transfers.

Such transfers may include the transfer of technical secrets.

2.2. The Regulation on the Purchase and Sale of Licenses does not govern relationships related to:

The transfer of ownership of industrial property objects;

Pure transfers of technical secrets without accompanying the transfer of usage rights over industrial property objects.

2.3. All license contracts signed between organizations or individuals in Vietnam and foreign organizations or individuals must go through the approval procedures as stipulated in Point 10 of this Circular.

All license contracts must go through the registration procedures as stipulated in Point 11 of this Circular.

3. Subject Matter of the License

3.1. According to Article 2 of the Regulation, the subject matter of the license is the usage rights over patents, utility models, industrial designs, trademarks that are within their protection periods, with or without accompanying technical secrets (confidential information, knowledge, data, documents...).

3.2. To ensure the interests of all parties involved, the subject matter of the license must meet the following criteria:

It must truly belong to the Grantor;

The corresponding industrial property rights must be recognized in Vietnam and the corresponding certificate of protection must still be valid.

Any accompanying technical secrets must truly belong to the Grantor, be genuinely necessary for the implementation of the transfer objectives, and comply with the requirements for such objects as stipulated in the laws on technology transfer.

4. License Subjects

4.1. Grantor

According to Articles 3 and 8 of the Regulation, the organization or individual named as the Grantor must meet the following requirements:

a. If the Grantor is an organization, it must have full legal personality; if the Grantor is an individual, the individual must not be restricted by law in civil rights affecting the relationship of licenses.

b. The Grantor must have a complete name (full name) and address (headquarters or place of residence).

c. The Grantor must truly have the right to transfer the license, meaning the Grantor must be the organization or individual named as the owner of the corresponding certificate of protection or the organization or individual named as the Recipient of the corresponding exclusive license.

d. The Grantor must have the capacity to assist the Recipient in successfully receiving any transferred technical secrets (if applicable).

đ. If the Grantor is one of the joint owners of the corresponding certificate of protection (for non-secondary licenses) or if the Grantor is one of the organizations or individuals jointly named as Recipients of the corresponding exclusive license (for secondary licenses), the Grantor must obtain the consent of the other joint owners or organizations or individuals named as Recipients for the transfer of the license.

4.2. Recipient

The Recipient must meet the requirements stipulated in points a and b of section 4.1 above, with the term "Grantor" replaced by "Recipient."

II. LICENSE CONTRACTS

5. According to Article 5 of the Regulation, the transfer of licenses can only be conducted in the form of a written contract. Oral agreements or other transaction documents (letters, telegrams, correspondence...) are not considered License Contracts and do not have legal value to resolve disputes in license relationships.

If the usage rights over an industrial property object are one of the objects being transferred under a Technology Transfer Contract (or another contract), the content regarding industrial property must be prepared as an independent License Contract or a separate part within the Technology Transfer Contract (or another contract). Unless otherwise provided, the following provisions apply to both cases mentioned above.

6. A License Contract should contain the following main contents:

Preamble

(Name or full name and complete address of the Licensor and Licensee; reasons why the Licensor can transfer and the Licensee can accept the licensed object. If the Licensor is the owner of the industrial property object, specify the name and date of issuance of the corresponding protection certificate;

If the Licensor is not the owner of the industrial property object but is the exclusive licensee of that object, specify the signing date and place of the corresponding exclusive license agreement, registration number of the Contract Registration Certificate at the National Office of Intellectual Property, and the issuance date of that certificate).

Definitions of terms and concepts

(Provide clear, strict, unambiguous definitions for all terms and concepts used in the License Agreement).

Type of license

(The license is either exclusive or non-exclusive, whether it is a secondary license or not).

Licensed Object

(Content and scope of rights to use the industrial property object, accompanied by documentation describing the object which is considered an integral part of the License Agreement).

Warranty and Liability

(Commitments and guarantees of each party to ensure the effective implementation of the Agreement, including:

The Licensor must guarantee that they genuinely hold the licensed object and have the right to transfer it, all accompanying documents and necessary information provided to the Licensee are truthful, valuable, and most suitable for the effectiveness desired by the Licensee; transferring the licensed object does not infringe on the industrial property rights of any third party, if there is a complaint from a third party regarding the Licensee's use of the industrial property object, the Licensor will be responsible for resolving it, conversely, if a third party infringes and affects the Licensee, the Licensor shall take all measures to counteract such infringement.

The Licensee must guarantee that they genuinely need to use the industrial property object and that their acceptance goal is not to eliminate the object or to infringe on the rights of any third party.

Both parties must ensure close cooperation to successfully transfer the object.

The Licensor may require the Licensee to fulfill certain conditions, for example, to allow the Licensor to inspect the quality of products produced under the license, the Licensee must mark the product with information indicating that it was produced under the Licensor's license...).

Price and Payment Method

(Items of work and objects that must be paid to the Licensor - including services or accompanying means - unit price for each item or object, if the unit price cannot be determined, the principle for determining the price; sequence, deadline, method, location... for payment).

Tax and Fees

(Which party is responsible for paying taxes according to Article 23 of the Regulations and necessary fees, including review fees or registration fees for the License Agreement).

Confidentiality

(Objects considered confidential; principles for contact, receipt of information or documents; confidentiality protection principles; conditions for disclosing related information...).

Improvement and Enhancement

(Principles for informing each other about improvements or enhancements made by either party; benefits of the parties related to such improvements or enhancements...).

Effectiveness of the Agreement

(Territorial scope of effectiveness - i.e., the licensing territory, duration of effectiveness - i.e., the licensing period, factors that could lead to narrowing, limiting, terminating, or revoking partial or full effectiveness, conditions for considering the Agreement partially or fully void, methods for handling consequences).

Complaints and Disputes

(Acts or factors considered violations of the Agreement; liability of the parties violating the Agreement; laws applied to resolve violations, dispute resolution bodies, complaints).

The License Agreement is concluded with the signatures of the authorized representatives of each party. Accompanying the signature, full names, positions of the signatories, and the signing date must be recorded. Signatures must be confirmed (by stamping of the organization or notarization, if notarization is unavailable then confirmation by the People's Committee from commune level upwards is required).

7. The License Agreement shall not contain unreasonable restrictions on the rights of the Licensee as stipulated in Article 6 of the Regulations. If there is a clause that appears to be an unreasonable restriction, the Agreement must specify the reason to prove that the corresponding restriction is necessary and reasonable.

8. In cases where the clauses on industrial property are part of a technology transfer agreement (or another agreement), that part must be clearly distinguished from the rest of the agreement and, except for contents already specified in other parts of the agreement, the industrial property section must include all remaining contents of the License Agreement as stated in point 6 above.

III. APPROVAL OF LICENSE AGREEMENT REGISTRATION

9. To ensure successful transfer of the license, before negotiating and agreeing on the transfer, each party must carefully check the legal status and capacity of the other party as specified in point 4 above.

For state organizations or state organizations as joint venture parties, the transfer of licenses to foreign organizations or individuals must be approved by the Ministry (if the organization belongs to the Ministry) or provincial-level city (if the organization belongs to the locality). To be considered for approval, the said organization must report the reasons, feasibility, and effectiveness of the license transfer to the Ministry, Province, City.

The science and technology management agency of the Ministry, province, or city has the responsibility to review the aforementioned report and advise the Minister, Chairman of the Provincial People's Committee, or City People's Committee on approving or not approving the organization under its jurisdiction to proceed with the transfer of the license to the foreign party.

Opinion Approval by the Ministry, Province, or City must be in writing.

10. The License Agreement signed between the Vietnamese party and the foreign party must be approved by the Ministry of Science and Technology and Environment according to the procedures and formalities prescribed in Articles 12 and 13 of the Regulations and shall be detailed as follows:

10.1. The application for approval includes the following documents:

- Application for approval of the License Agreement (Annex 1).

The application for approval of the License Contract must be in Vietnamese, stating clearly the full name and complete address of both Parties, and summarizing the contents of the Contract to be approved.

The applicant for approval must be the Vietnamese Party and may be either the Grantor or the Grantee.

The signature of the applicant for approval must be verified according to the principle applicable to the License Contract (as stipulated in the last paragraph of Point 6 of this Circular).

The original License Contract; if the License Contract is in a language other than Vietnamese, it must be accompanied by a Vietnamese translation of the Contract, which must be Notarized or confirmed by both Parties to the Contract as an accurate translation of the original.

The written approval document of the Ministry, Province, City managing the Vietnamese Party as a State organization prescribed in Clause 1 of Article 10 of the Charter and further detailed in the second paragraph of Point 9 above.

A copy of the relevant intellectual property certificate if the Grantor is the owner thereof, or

A copy of the corresponding Exclusive License Contract and a copy of the Registration Certificate of that Contract if the Contract to be approved is a Secondary License Contract.

Proof of payment of the approval fee for the License Contract.

10.2. The application for approval of the License Contract shall be submitted to the National Office of Intellectual Property - Ministry of Science and Technology and Environment.

10.3. The deadline for submitting the application for approval is thirty days after signing the Contract.

10.4. The National Office of Intellectual Property has the responsibility to review, or if the Contract to be approved contains technological content, to coordinate with the Department of Technological Development to review the application for approval of the License Contract in accordance with the provisions of the Charter and this Circular.

In cases where the License Contract does not violate the provisions regarding the Grantor and the Grantee, does not contain clauses causing damage to the Parties to the Contract or to third parties, and does not violate other regulations, the National Office of Intellectual Property will submit to the Minister for consideration and issue a Decision to approve the Contract as provided for in Clause 1 of Article 13 of the Charter.

In cases where the application for approval has deficiencies that can be corrected, the National Office of Intellectual Property will request the applicant to correct these deficiencies within a suitable period.

If any of the following situations occur, the National Office of Intellectual Property will propose to the Minister of Science and Technology and Environment to refuse to approve the License Contract:

(I) The applicant does not correct the deficiencies in the application as stipulated in the preceding paragraph;

(II) The applicant is neither the Grantor nor the Grantee and is not the authorized representative of the intellectual property by the Grantor or the Grantee;

(III) The Grantor does not meet all the conditions prescribed in Point 4.1;

(IV) The Grantee does not meet all the conditions prescribed in Point 4.2;

(V) The licensed object does not meet all the conditions prescribed in Point 3 above;

(VI) The License Contract does not have a clause on price and payment method or tax clause as provided for in Article 23 of the Charter;

(VII) The License Contract concerning trademarks does not have a clause on the Grantor's inspection of the quality of products bearing the trademark to be used under the license produced by the Grantee;

(VIII) The License Contract contains unreasonable restrictive clauses as specified in Point 7 of this Circular;

(IX) The License Contract contains clauses causing damage to any party, including third parties;

(X) The License Contract contains clauses violating Vietnamese law;

(XI) The License Contract lacks signatures or the signatures are not verified as stipulated in the last paragraph of Point 6 of this Circular;

(XII) The person signing the License Contract exceeds their authority;

(XIII) There is a fraudulent purpose in entering into the License Contract;

(XIV) The application for approval is submitted later than thirty days from the date of signing the License Contract without a valid reason.

Before submitting to the Minister of Science and Technology and Environment to propose refusal to approve the License Contract, the National Office of Intellectual Property will notify the applicant of the result of reviewing the application for approval, specifying the reasons for refusing to approve and setting a suitable time limit for the applicant to provide comments. If the applicant does not provide comments or provides invalid comments within the set time limit, the National Office of Intellectual Property will formally propose refusal to approve.

11. The registration procedure for the License Contract as prescribed in Article 14 of the Charter and detailed as follows:

11.1. The application for registration of the License Contract includes the following documents:

An application for registration of the License Contract (following the model in Appendix 2 of this Circular). The applicant for registration may be either the Grantor or the Grantee. If the applicant for registration is a foreign organization or individual without a registered office or permanent residence in Vietnam, the submission of the registration application must be made through an authorized representative of intellectual property;

The original License Contract, accompanied by any Appendices (if any); if the License Contract is in a language other than Vietnamese, it must be accompanied by a Vietnamese translation of the Contract, which must be Notarized or confirmed by both Parties to the Contract as an accurate translation of the original;

The Decision approving the License Contract issued by the Minister of Science and Technology and Environment (for License Contracts where one of the two Parties is a foreign Party and the other is a Vietnamese Party);

A copy of the relevant intellectual property certificate if the Grantor is the owner thereof, and if the Contract to be registered is a Secondary License Contract, a Certificate of Registration of the corresponding Exclusive License Contract must also be attached;

Proof of payment of the registration fee (the fee for recording the transfer of protected rights);

Power of attorney if the application is submitted through an authorized representative of intellectual property.

11.2. Within one month from the date of receipt of all necessary and valid documents, the National Office of Intellectual Property must review the registration application according to the following procedures:

a. If the application is valid and there is no reason to refuse registration (as stated in sub-item c below), the National Office of Intellectual Property will record the Contract in the Register of License Contracts, issue a Registration Certificate for the License Contract, and hand over the stamped copies of the Contract to the Parties after retaining one copy at the Office, and publish the registration in the Industrial Property Gazette.

b. If the license contract registration dossier is incomplete and requires supplementation or amendment, the National Office of Intellectual Property shall request the applicant to supplement and amend within a suitable period, and the examination period will be extended accordingly.

c. The National Office of Intellectual Property shall refuse to issue a registration certificate for a license contract if any of the following circumstances occur:

(I) The person submitting the application for registration of the license contract is not a party to the contract and is not the authorized representative of the intellectual property owner of a party to the contract;

(II) The dossier is missing necessary documents and the applicant does not supplement them according to the requirements of the National Office of Intellectual Property;

(III) The license contract has not been approved by the Ministry of Science and Technology (if one of the parties is a foreign organization or individual and the other party is a Vietnamese organization or individual);

(IV) The licensed object does not meet all the requirements set forth in Point 3.2 of this Circular;

(V) The licensor does not meet all the requirements set forth in Point 4.1 of this Circular;

(VI) The licensee does not meet all the requirements set forth in Point 4.2 of this Circular;

(VII) The license contract includes unreasonable restrictive clauses as specified in Point 7 of this Circular;

(VIII) The license contract lacks provisions on price and payment methods or/and tax provisions as stipulated in Article 23 of the Regulations;

(IX) A license contract concerning a trademark does not include a provision on the licensor's inspection of the quality of products bearing the trademark that will be produced by the licensee;

(X) The license contract does not have signatures or the signatures are not certified as required in the last paragraph of Point 6 of this Circular;

(XI) The signatories of the license contract do not have the appropriate authority;

(XII) There is a fraudulent purpose in entering into the license contract.

d. Before officially refusing to issue a registration certificate for a license contract, the National Office of Intellectual Property shall notify the applicant of the results of the examination of the registration dossier, the intention to refuse, the reasons for refusal, and a suitable time limit for the applicant to provide comments. If the applicant does not object or if the objection is not valid within the prescribed time limit, the National Office of Intellectual Property shall issue a notice of refusal to issue a registration certificate for the license contract, specifying the reasons.

e. The National Office of Intellectual Property shall not refuse to issue a registration certificate for a license contract that has already been approved by the Ministry of Science and Technology. If factors indicating that the license contract should not have been approved are discovered, the National Office of Intellectual Property shall propose that the Minister review the approval decision. After fifteen days from the date of notification, if there is no contrary opinion from the Minister, the National Office of Intellectual Property shall continue with the registration procedures for the license contract.

12. Any amendments or supplements to a license contract that has already been issued a registration certificate must be processed as if it were a new license contract.

IX. DISPUTE RESOLUTION

13. If disagreeing with the reasons for refusing to approve a license contract, within one month from the date of issuance of the decision to refuse approval, the applicant may appeal to the Minister of Science and Technology. The appeal must be in Vietnamese and clearly state the grounds for appeal.

This appeal shall be resolved according to the procedure for appeals regarding decisions on granting protection certificates as stipulated in the last paragraph of Point 71 and the second paragraph of Point 72 of Circular No. 1134/SC dated October 17, 1991, issued by the State Scientific Council.

1. If disagreeing with the reasons for refusing to issue a registration certificate for a license contract, within one month from the date of issuance of the refusal notice, the applicant may appeal to the Director of the National Office of Intellectual Property. Opinion The appeal must be in writing in Vietnamese and clearly state the grounds for appeal. The appellant must pay an appeal fee as provided for in Circular No. 1134-CS dated October 17, 1991, issued by the State Scientific Council, and in Part III of Circular No. 99-TC-KHCNMT dated December 2, 1993, issued jointly by the Ministry of Finance and the Ministry of Science and Technology. This fee will be refunded to the appellant if the resolution proves the appellant correct.

15. Within one month from the date of receipt of the complete appeal dossier, the Director of the National Office of Intellectual Property must resolve the appeal and notify the result to the appellant. If the appellant is correct, the National Office of Intellectual Property shall refund the appeal fee to the appellant.

16. If disagreeing with the result of the appeal resolution by the Director of the National Office of Intellectual Property, within one month from the date of notification of the result, the appellant may appeal in writing to the Minister of Science and Technology regarding that result.

The time limit for resolution at the Ministry of Science and Technology is one month from the date the Ministry receives the complete appeal dossier.

The decision of the Minister of Science and Technology is the final decision on this matter.

V. EFFECTIVE DATE

17. This Circular takes effect from the date of signature.

ANNEX 1

APPLICATION FOR APPROVAL OF LICENSE CONTRACT

(Attached to Circular No. 163/TT-SHCN dated April 15, 1994,

guiding the implementation of regulations on the approval and registration of

license contracts issued by the Ministry of Science and Technology)

SOCIALIST REPUBLIC OF VIETNAM

Independence - Freedom - Happiness

APPLICATION FOR APPROVAL OF LICENSE CONTRACT

Date...month...year...

Respectfully submitted to: Ministry of Science, Technology, and Environment

(Approval Department for License Contracts)

1. Applicant for approval:

(Name, full name - nationality - full address - telephone number, Telex, Fax)

Industrial Property Representative:

Request to approve the following license contract.

2. Summary of the license contract:

Licensor:

(Name, full name - nationality - full address - telephone number, Telex, Fax)

Licensee:

(Name, full name - nationality - full address - telephone number, Telex, Fax)

Licensed Object:

Type of License: (exclusive, non-exclusive, sublicense)

Duration of Effectiveness: years from the date

Territory of License:

License Fee: Payment Method:

Signatory: Licensor (Full Name, Position)

Licensee (Full Name, Position)

Date of Signature: Place of Signature:

3. Enclosed Documents:

Original of the License Contract, consisting of ... copies and ... pages, with ... Appendices;

Vietnamese translation of the License Contract, consisting of ... copies and ... pages;

Opinion Approval of the relevant management agency for the transfer of the license to the ... party with a foreign country;

A copy of the corresponding intellectual property certificate;

A copy of the Exclusive License Contract and a copy of the Registration Certificate for the Exclusive License Contract serving as the basis for issuing this secondary license;

Proof of payment of the approval fee;

Power of attorney for representation of the industrial property organization;

Applicant's signature;

Stamp of confirmation;

ANNEX 2

APPLICATION FOR REGISTRATION OF LICENSE CONTRACT;

(Annexed to Circular No. 163/TT-SHCN dated April 15, 1994

of the Ministry of Science, Technology and Environment guiding the implementation of

license contracts issued by the Ministry of Science and Technology)

SOCIALIST REPUBLIC OF VIETNAM

Independence - Freedom - Happiness

APPLICATION FOR REGISTRATION OF LICENSE CONTRACT;

Date... Month... Year...

Respectfully submitted to: National Office of Intellectual Property

96-98 Nguyen Trai Street, Dong Da, Hanoi

1. The applicant for registration of the License Contract:

(Name, full name - nationality - full address - telephone number, Telex, Fax)

Industrial Property Representative:

Requests registration of the following License Contract.

2. Summary of the license contract:

Licensor:

(Name, full name - nationality - full address - telephone number, Telex, Fax)

Licensee:

(Name, full name - nationality - full address - telephone number, Telex, Fax)

Licensed Object:

Type of license (exclusive, non-exclusive, secondary)

Term of validity: years from the date of

Territory of License:

License fee: ... Payment method:

Signatory: Licensor (Full Name, Position)

Licensee (Full Name, Position)

Date of Signature: Place of Signature:

3. Enclosed Documents:

Original License Contract consisting of ... copies and ... pages with Appendices;

Vietnamese translation of the License Contract, consisting of ... copies and ... pages;

Decision on approval of the Ministry of Science, Technology and Environment (if necessary);

A copy of the corresponding intellectual property certificate;

A copy of the Registration Certificate for the Exclusive License Contract serving as the basis for issuing this secondary license;

Proof of payment of the registration fee;

Power of attorney for representation of the industrial property organization;

Applicant's signature;

Stamp of confirmation;