Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
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Results: 4 Answers
Patents
6.
Patent infringement
6.1
What Constitutes Patent Infringement?
 
Vietnam
Under Section 126 of the Law on Intellectual Property, two types of act constitute patent infringement:

  • unauthorised use of a patented invention; and
  • use of an invention while a patent is pending at the National Office of Intellectual Property (NOIP) without paying compensation to the applicant, which is entitled to the provisional rights in its published patent application.

However, the law does not set out any specific rules, tests or standards for determining the existence of either act, or the constituent elements of infringement of a patented invention. The principle for determining patent infringement is to be found in subordinate legislation, particularly Decree 119/2010/ND-CP of 30 December 30 2010, amending Decree 105/2006/ND-CP providing for implementation of the Law on Intellectual Property with respect to protection of IP rights (Decree 105, as revised).

According to Decree 105 as revised, to constitute infringement, an act must satisfy the following criteria:

  • The allegedly infringing act involves patented subject matter;
  • There is an infringing element to the allegedly infringing subject under consideration;
  • The alleged infringer is neither the patent owner nor any person or entity that is authorised to use the patent, except where one of the defences set out in question 5.1 is available; and
  • The allegedly infringing act was committed in Vietnam (an act shall also be deemed to have been committed in Vietnam if it was committed online and was aimed at consumers or internet users based in Vietnam).

The second factor above is the most important, and may take any of the following forms:

  • A product or part of a product is identical or equivalent to a product or part thereof within the scope of protection of an issued patent;
  • A process is identical or equivalent to a patented process; or
  • A product or part of the product is manufactured using a process which is identical or equivalent to a patented process.
For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.2
Does your jurisdiction apply the doctrine of equivalents?
 
Vietnam
Yes.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.3
Can a party be liable if the patent infringement takes place outside the jurisdiction?
 
Vietnam
Theoretically, yes: an infringement will be deemed to have been committed in Vietnam if it was committed online and aimed at consumers or internet users in Vietnam (see question 6.1). However, thus far, no provisions or guidance has been issued on how to determine when and under what conditions a party can be liable where infringement occurs outside the territory of Vietnam.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.4
What are the standards for wilful infringement?
 
Vietnam
The Law on Intellectual Property and its subordinate legislation are generally silent with regard to wilful infringement. However, Section 199 provides that any organisation or individual that commits an act of infringement shall, depending on the nature and severity of such infringement, be dealt with through the application of civil, administrative or criminal remedies.

Depending on the nature and severity of the infringement, an infringer may be issued with a caution or a fine ranging from VND500,000 to VND500 million, together with supplemental sanctions such as confiscation of goods or materials, suspension of production/business practices, and forcible removal or forcible destruction of infringing articles.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.5
Which parties can bring an infringement action?
 
Vietnam
Generally speaking, in almost cases the patent owner is required to bring an infringement action. However, a licensee is also entitled to take legal action against an alleged infringer if the relevant licence agreement allows it to take legal measures against infringement.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.6
How soon after learning of infringing activity must an infringement action be brought?
 
Vietnam
Where a patent owner avails of the administrative route, bringing patent infringement proceedings before one of the authorities with competence for IP rights enforcement (ie, specialised inspectorates, the Market Surveillance Agency or people’s committees at all levels), the limitation period is:

  • two years from learning of the infringement, if the infringement is ongoing; or
  • two years from termination of the infringement, if the infringement has ceased.

If a civil lawsuit is initiated, this limitation does not apply, unless a litigant requests the court to apply it in advance of a first-instance decision.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.7
What are the pleading standards to initiate a suit?
 
Vietnam
Not applicable.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.8
In which venues may a patent infringement action be brought?
 
Vietnam
Generally speaking, the court with jurisdiction to hear a patent infringement suit is the court at the place where the defendant has his or her residence or business, if the defendant is an individual; or where its head office is based, if the defendant is an organisation or entity. If a patent infringement is determined to be profit purpose for both plaintiff and defendant, the provincial-level people’s court will have jurisdiction; otherwise, the case will be heard by the district-level people’s court.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.9
What are the jurisdictional requirements for each venue?
 
Vietnam
Not applicable.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.10
Who is the fact finder in an infringement action?
 
Vietnam
Any litigant that requests the court to protect its lawful rights and interests has the burden of proving that its claim is legal and grounded.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.11
Does the fact finder change based on venue?
 
Vietnam
Not applicable.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.12
What are the steps leading up to a trial?
 
Vietnam
For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.13
What remedies are available for patent infringement?
 
Vietnam
The remedies for patent infringement in civil or administrative proceedings are basically the same, and in particular include compulsory destruction, distribution or use for non-commercial purposes of goods, raw materials and materials, and facilities used principally for the production or trading of infringing goods, provided that this will not affect the exploitation of IP rights.

Where a patent infringement case is heard by a court.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners
6.14
Is an appeal available and what are the grounds to appeal?
 
Vietnam
Yes. A first-instance judgment may be appealed within 15 days of the date of issue. If the decision being appealed relates to the temporary suspension or suspension of first-instance proceedings, the appeal must be lodged within seven days of receipt of the decision. The normal legal grounds for appeal apply, including incorrect assessment of, or mistakes in, matters of fact and matters of law.

For more information about this answer please contact: Le Quang Vinh from Bross and Partners