Circular No. 18/2011/TT-BKHCN amending and supplementing certain provisions of Circular No. 01/2007/TT-BKHCN dated February 14, 2007, amended and supplemented by Circular No. 13/2010/TT-BKHCN dated July 31, 2010, and Circular No. 01/2008/TT-BKHCN dated February 25, 2008, amended and supplemented by Circular No. 04/2009/TT-BKHCN dated March 27, 2009.

CIRCULAR

Amending and supplementing certain provisions of Circular No. 01/2007/TT-BKHCN dated February 14, 2007, amended and supplemented

pursuant to Circular No. 13/2010/TT-BKHCN dated July 31, 2010 and Circular No. 01/2008/TT-BKHCN dated February 25, 2008,

amended and supplemented pursuant to Circular No. 04/2009/TT-BKHCN dated March 27, 2009

_______________________________

Pursuant to Decree No. 28/2008/NĐ-CP dated March 14, 2008 of the Government stipulating the functions, tasks, powers, and organizational structure of the Ministry of Science and Technology;

Pursuant to the Intellectual Property Law dated November 29, 2005, amended and supplemented by Law No. 36/2009/QH12 dated June 19, 2009 (hereinafter referred to as the Intellectual Property Law);

Pursuant to Resolution No. 67/NQ-CP dated December 24, 2010 of the Government on simplifying administrative procedures within the scope of functions of the Ministry of Science and Technology;

The Minister of Science and Technology amends and supplements certain provisions of Circular No. 01/2007/TT-BKHCN dated February 14, 2007 guiding the implementation of Decree No. 103/2006/NĐ-CP dated September 22, 2006, amended and supplemented by Circular No. 13/2010/TT-BKHCN (hereinafter referred to as "Circular No. 01/2007/TT-BKHCN amended in 2010") and Circular No. 01/2008/TT-BKHCN dated February 25, 2008 guiding the issuance and revocation of Industrial Property Appraiser Cards and Certificates of Organizations Meeting Conditions for Industrial Property Appraisal Activities, amended and supplemented by Circular No. 04/2009/TT-BKHCN dated March 27, 2009 (hereinafter referred to as "Circular No. 01/2008/TT-BKHCN amended in 2009") as follows:

Article 1. Amending and supplementing certain points of Circular No. 01/2007/TT-BKHCN amended in 2010 as follows:

1. Amending and supplementing point 7.2.e as follows:

“e. The objects mentioned in the application must be accurately classified and grouped according to the regulations. If the applicant does not classify or group themselves or classifies or groups inaccurately, the National Office of Intellectual Property will perform this task and the applicant must pay the service fee for classification and grouping according to the prescribed regulations.”

2. Amending and supplementing point 7.3.c as follows:

“c) Documents proving the basis for priority rights (copies of the first applications (or applications), certified by the receiving office, except for PCT applications); list of goods and services covered by the first trademark application; transfer agreement of priority rights if such rights are derived from another person.”

3. Amending and supplementing point 20.3 as follows:

“20.3. Maintaining the validity of patent protection certificates

a) To maintain the validity of a patent protection certificate, the holder of the certificate must pay the maintenance fee within six months before the end of the term of validity. The maintenance fee may be paid later than the prescribed period, but not more than six months after the end of the term of validity, and the holder of the certificate must pay an additional 10% of the fee for each month of delay.

b) The National Office of Intellectual Property shall examine the request for maintaining validity within ten working days from the date of receipt of the request and the maintenance fee. In case the request is valid, the National Office of Intellectual Property shall record it in the National Register of Patents.

In case the request for maintaining validity is incomplete or invalid, the National Office of Intellectual Property shall issue a notification and set a deadline of one month from the date of the notification for the applicant to correct the deficiencies or provide objections. If the applicant fails to correct the deficiencies or the corrections are unsatisfactory, or if there are no objections or the objections are not reasonable within the prescribed period, the National Office of Intellectual Property shall issue a notification rejecting the request for maintaining validity.”

4. Amending and supplementing point 20.4.a as follows:

“a) Exclusive right certificates for patents, utility models, and design registration certificates cannot be extended.

Exclusive right certificates for industrial designs can be extended up to two consecutive times, each time for five years. In cases where an industrial design protected has multiple embodiments, the exclusive right certificate may be extended for all or some of the embodiments, provided that the basic embodiment is included.

Registration certificates for trademarks can be extended consecutively multiple times, each time for ten years for the entire or part of the list of goods and services.”

5. Amending and supplementing point 33.5.e as follows:

“e. The description of the industrial design must comply with the provisions of Clause 2, Article 103 of the Intellectual Property Law, and should be detailed as follows:

(i) Fully disclose the essence of the industrial design being protected, including all distinctive features that embody the essence of the industrial design, while pointing out the new and different distinctive features compared to the closest similar industrial design mentioned in point 33.5.c above, consistent with the distinctive features shown in the photographs or drawings;

(ii) The distinctive features of the industrial design being protected should be presented sequentially in the following order: shape characteristics, line characteristics, relationships between shape and line characteristics, color characteristics (if applicable);

(iii) For products with different usage states (for example: products with lids or foldable products...), the industrial design of the product in different states should be described;

(iv) If the industrial design includes multiple embodiments, clearly indicate the differences of the remaining embodiments compared to the basic embodiment (the first embodiment mentioned in the application);

(v) If the industrial design is a design of a set of products, describe the design of each product in the set.”

6. Amending and supplementing point 33.6 as follows:

“33.6. Requirements for photographs or drawings of industrial designs

The applicant must submit four sets of photographs or four sets of drawings of the industrial design. The photographs or drawings must fully illustrate the distinctive features of the industrial design being protected to the extent that anyone with average knowledge in the relevant field can identify the industrial design based on them, and in accordance with the following guidelines:”

7. Amending and supplementing point 37.4.e as follows:

“e) The section titled “List of Goods and Services Bearing the Trademark” in the Application Form must be appropriately classified according to the International Classification of Goods and Services under the Nice Agreement published by the National Office of Intellectual Property. If the applicant does not classify themselves or classifies inaccurately, the National Office of Intellectual Property will classify and the applicant must pay the service fee for classification according to the prescribed regulations.”

8. Amending and supplementing point 37.5 as follows:

“37.5. Requirements for trademark samples:

In addition to the trademark sample affixed on the Declaration Form, the application must be accompanied by five identical trademark samples and must meet the following requirements:

9. Amend and supplement Point 47.1 as follows:

“47.1. The registration dossier for the contract transferring intellectual property rights shall include the following one set of documents:

a) Two copies of the Declaration Form for registering the contract transferring intellectual property rights, made according to Model 01-HĐCN stipulated in Appendix D of this Circular;

b) One copy of the contract (original or certified copy in accordance with regulations); if the contract is in a language other than Vietnamese, it must be accompanied by a Vietnamese translation of the contract; each page of the contract, if there are multiple pages, must have the signature of confirmation from all parties or a stamp across the seam;

c) Original certificate of protection;

d) Written consent of co-owners regarding the transfer of intellectual property rights, if the corresponding intellectual property rights belong to joint ownership;

e) Power of attorney (if submitting the dossier through a representative);

g) Certified copy of payment receipt (in case of payment via postal service or direct deposit into the Intellectual Property Office's account).

10. Amend and supplement Clause 53.2 as follows:

“53.2. Application dossier for requesting a Professional Practice Certificate

The application dossier for requesting a Professional Practice Certificate for representing intellectual property rights includes the following one set of documents:

a) Two copies of the Declaration Form for requesting a Professional Practice Certificate for representing intellectual property rights (Professional Practice Certificate), made according to Model 01-CCHN stipulated in Appendix E of this Circular;

b) Certified copy of the notification of passing the professional examination organized by the Intellectual Property Office;

c) Two 3x4 cm photos;

d) Certified copy of Identity Card;

đ) Certified copy of payment receipt (in case of payment via postal service or direct deposit into the Intellectual Property Office's account).

11. Amend and supplement Clause 59.2 as follows:

“59.2. Registration for examination:

a) Only those who meet the conditions specified in Points a to đ of Clause 2 Article 155 of the Intellectual Property Law may register for the examination as provided in this point.

b) The registration dossier for the examination submitted to the Intellectual Property Office shall include the following one set of documents:

(i) Two copies of the Declaration Form for registering for the examination, made according to Model 05-KTNV stipulated in Appendix E of this Circular;

(ii) Certified copy of the Bachelor’s Degree diploma (present the original for verification, except when the certified copy has already been authenticated);

(iii) Documentation proving that the person registering for the examination has been trained in intellectual property law or has experience in such activities:

- Certified copy of the graduation certificate from a training course in intellectual property law recognized by the Ministry of Science and Technology (present the original for verification, except when the certified copy has already been authenticated); or

- Graduation thesis on intellectual property topics and confirmation letter from the educational institution where the thesis was completed; or

- Certified copy of the employment decision or labor contract and other documents (with confirmation from the working organization) proving at least five consecutive years of directly working in the examination of intellectual property registration applications at national or international intellectual property offices or in intellectual property law activities as stipulated in Point đ of Clause 2 Article 155 of the Intellectual Property Law, including inspection, supervision, prosecution, adjudication, legal affairs, legal consultation on intellectual property; scientific research with the title of researcher or lecturer in intellectual property (present the original for verification, except when the certified copy has already been authenticated);

(iv) Two 3x4 cm photos;

(v) Certified copy of payment receipt (in case of payment via postal service or direct deposit into the Intellectual Property Office's account).

12. Amend and supplement Clause 59.5 as follows:

“59.5. Examination Organization

a) The examination is organized regularly every two years.

b) The examination questions are graded by the Examination Committee based on the approved answers and grading scale.

c) The examination results will be notified to the examinees by the Intellectual Property Office. Examinees have the right to request the Intellectual Property Office to review the results, and the Examination Committee is responsible for conducting the review in accordance with the regulations of the Intellectual Property Office Director.

The examination results are valid for five years for the purpose of requesting a Professional Practice Certificate for representing intellectual property rights.

13. Amend the "Classification Group" and "Classification" sections of the Declaration Forms 01-SC, 03-KDCN, 04-NH in Appendix A as follows:

Add Note: "If the applicant does not classify or incorrectly classifies, the Intellectual Property Office will perform the classification and the applicant must pay the classification service fee as prescribed."

14. Amend the "Documents included in the application" section of the Declaration Forms 01-SC, 02-TKBT, 03-KDCN, 04-NH, 05-CDĐL in Appendix A, 01-SĐĐ, 02-CGĐ, 03-YCTĐ in Appendix B, 01-SĐVB, 02-GHVB, 03-PBVB, 04-CDHB, 05-KN, 06-ĐKQT, 07-ĐKCĐ, 08-SĐQT in Appendix C, 01-HĐCN, 02-HĐSD, 03-SĐHĐ, 04-CGBB in Appendix D, 01-CCHN, 02-CLCC, 05-KTNV in Appendix E and 01-YCTCSC, 02-YCTCKD and 03-YCTCNH in Appendix F as follows:

Replace "Payment and fee receipts" with "Certified copy of payment receipt (in case of payment via postal service or direct deposit into the Intellectual Property Office's account)."

15. - Remove the "Extension period" section and amend and supplement the "Objectives for extension" section of Declaration Form number 02-GHVB in Appendix C as follows:

"- Design Patent - Extension options needed: ....

- Trademark Registration Certificate - Groups or products/services needing extension: ...."

16. Remove the "Confirmation by the People's Committee of the commune, ward, town regarding the permanent residence address of the applicant" section of Declaration Forms number 01-CCHN and 05-KTNV in Appendix E.

Article 2. Amend and supplement some points of Circular No. 01/2008/TT-BKHCN amended in 2009 as follows:

1. Amend the provisions at point b and point c Clause 1 Section II as follows:

“b) The subject matter of industrial property law is a mandatory examination requirement for all appraisal specialties.

A person who has continuously worked for at least 15 years in drafting and guiding the implementation of normative legal documents on industrial property, industrial property appraisal, dispute resolution, complaints, denunciations, inspection of industrial property at state management agencies on industrial property, researching and teaching industrial property law at research and training organizations established and operating legally, or advising on industrial property law under the capacity of an industrial property representative shall be exempted from the examination of the subject matter of industrial property law.

c) The specialized subjects of appraisal include the subject matter of patent appraisal (including utility solutions), integrated circuit layout design appraisal, industrial design appraisal, trademark and geographical indication appraisal (including goods origin names), and other industrial property rights appraisal, which are examination contents corresponding to the respective appraisal specialty.

A person who has continuously worked for at least 15 years in explaining and guiding the implementation of legal regulations, establishing rules, directly implementing or reviewing results regarding the examination (testing) of the content of patent application (including utility solutions), or industrial design application, or trademark application, geographical indication application (including goods origin names) at national or international industrial property agencies shall be exempted from the examination of the corresponding specialized appraisal subject.

A person who has continuously worked for at least 15 years in directly conducting procedures to establish and enforce industrial property rights under the capacity of an industrial property representative shall be exempted from one corresponding specialized appraisal subject in the field where they have handled the most cases.”

2. Amend and supplement the provision at Clause 4 Section II as follows:

“4. Application registration dossier for examination

The application registration dossier for examination includes the following 01 set of documents:

a) 02 Application forms for examination registration, made according to the model prescribed in Appendix I of this Circular;

b) A copy of the Bachelor's or Postgraduate Degree Certificate (present the original for verification, except when the copy has been certified);

c) A copy of the Recruitment Decision or Labor Contract and other documents proving actual professional activities (present the original for verification, except when the copy has been certified), if the applicant requests exemption from the examination mentioned in point b and point c Clause 1 Section II of this Circular;

d) 02 photographs measuring 3x4 cm;

đ) Certified copy of payment receipt (in case of payment via postal service or direct deposit into the Intellectual Property Office's account).

3. Amend and supplement the provision at point c Clause 6 Section II as follows:

“Within two months from the date of examination organization, the Chairman of the Examination Board will notify the examination results to the participants and issue the Certificate of Qualification for Industrial Property Appraiser according to the model prescribed in Appendix V of this Circular to those who meet the requirements for all examination subjects, specifying the corresponding appraisal specialty and determining the validity period of the Certificate (to be submitted with the application for the Appraiser Card) as five years from the date of issuance.”

4. Amend and supplement the provision at Clause 2 Section III as follows:

“2. Dossier for requesting issuance of the Appraiser Card

The dossier for requesting issuance of the Appraiser Card includes the following 01 set of documents:

a) 02 Application forms for requesting issuance of the Appraiser Card, made according to the model prescribed in Appendix II of this Circular;

b) A copy of the Certificate of Qualification for Industrial Property Appraiser issued by the Chairman of the Examination Board according to the provision at point c Clause 6 Section II of this Circular;

c) A copy of the Identity Card;

d) 02 photographs measuring 3x4 cm;

đ) Certified copy of payment receipt (in case of payment via postal service or direct deposit into the Intellectual Property Office's account).

5. Amend and supplement the provision at point c Clause 4 Section III as follows:

“c) The provisions at Clause 2 and Clause 3 Section III of this Circular also apply to the procedure for reissuing the Appraiser Card, except for the documents specified at point b Clause 2 and the deadline for the National Office of Intellectual Property to examine the dossier is 15 days from the date of receipt of the dossier.”

6. Amend and supplement the provision at Clause 2 Section IV as follows:

“2. Dossier for requesting issuance of the Organization Appraisal Certificate

The dossier for requesting issuance of the Organization Appraisal Certificate includes the following 01 set of documents:

a) 02 Application forms for requesting issuance of the Organization Appraisal Certificate, made according to the model prescribed in Appendix III of this Circular;

b) A copy of the Business Registration Certificate, Scientific and Technological Activities Registration Certificate, or Legal Profession Practice Registration Certificate (present the original for verification, except when the copy has been certified);

c) A copy of the Recruitment Decision or Labor Contract between the organization and the industrial property appraiser working for the organization (present the original for verification, except when the copy has been certified);

d) A copy of the payment receipt (in case of payment through postal service or direct deposit into the account of the National Office of Intellectual Property).”

7. Amend and supplement the provision at point c Clause 4 Section IV as follows:

“c) The provisions at Clause 2 and Clause 3 Section IV of this Circular also apply to the procedure for reissuing the Organization Appraisal Certificate, except for the documents decided at point b and point c Clause 2 and the deadline for the National Office of Intellectual Property and Provincial Department of Science and Technology to examine the dossier is 15 days from the date of receipt of the dossier.”

8. Replace the application forms in Appendix I, II, and III with the application forms prescribed in Appendix I, II, and III of this Circular.

Article 3. Effectiveness

This Circular takes effect 45 days from the date of issuance./.