Patent transfer recordation practice for authorized patents in Vietnam

The Vietnam Intellectual Property Office (IPVN) has very strict regulations on the transfer record of authorized patents, which makes it time-consuming and laborious for many patent holders to transfer and record in practice. Common mistakes include:

Lack of transfer price clause in the transfer agreement

• According to Article 140 of the Vietnamese Intellectual Property Law, the transfer agreement must include the transfer price clause. A transfer agreement that does not include this clause will be deemed by IPVN as not having submitted a change request. In practice, even if the patent transfer price between the transferee and the transferor is zero, the payment clause must be included in the transfer agreement.
• For transfers involving multiple patents, the different prices should be clearly stated. If there is only a one-time payment clause and the transfer record only involves a portion of the patents, IPVN may also issue a deemed non-submission notice.
• Therefore, in the process of filing patent transfer records, the patent owner is advised to submit a transfer agreement that specifies the transfer price of each patent.

If the transfer agreement is multiple pages, not all pages are signed

• According to Decree No. 65 of the Vietnamese Patent Law, the assignment agreement is multi-page, and each page must be signed by both the assignee and the assignor, or each page of the agreement must be stamped. Foreign patent owners may not have a seal, and in practice, this condition can be met by completing notarization and certification in Vietnam.

One person represents both the transferor and the transferee

• According to Vietnam's patent application practice, if the same person represents the transferor and the transferee, it will not meet Article 141 of the Vietnam Civil Code. Therefore, the transferor and the transferee must have a separate representative to sign the transfer agreement. This is also a very unique place in Vietnam's intellectual property practice. Civil law will play a role in the implementation of intellectual property practices in certain areas.

Indirect signature or seal

• Patent transfer requires both parties to use wet signature. IPVN may require the transfer agreement to be notarized to verify the authenticity of the document, depending on whether the signature is wet or a seal is used instead of a signature. Since notarization and certification in Vietnam takes a long time, it is recommended that the transferor and the transferee use wet signature when signing the patent transfer agreement to avoid additional procedures and costs.

In addition, when filing patent transfer in Vietnam, the following matters should be noted:

• Original patent certificate
  • The patent transfer record after authorization must include the original patent certificate. If the original patent certificate is damaged, faded, etc., the patent owner can request IPVN to reissue a copy of the patent certificate to replace the original to complete the patent transfer record procedure.
  • Starting from August 23, 2023, patent applicants who file patent applications in Vietnam must indicate whether they want to obtain a paper patent certificate or an electronic certificate when submitting a patent application. However, IPVN has not issued an electronic certificate so far, and patent applicants must consider the possibility of future transfers and require paper patent certificates when submitting new applications.
• The assigned patent remains valid
  • If the transferred patent is in an invalid state, the patent transfer record cannot be made. Usually, IPVN will issue a request to oppose the patent transfer record due to the expiration of the patent or the invalidation of the patent due to non-payment of annual fees.
  • Patent owners need to ensure that the annuity has been paid on time and the patent remains valid before submitting a request for patent transfer recordation. If multiple patent transfers are involved, the validity of each patent needs to be verified. Any invalid patents in the patent may delay the recordation process until the annuity is paid or the invalid patent is excluded from the transfer recordation request.
• Patent owner's information
  • The patent owner's information will be strictly reviewed during the patent transfer recordation process. Slight differences in the transferor's name or address in the power of attorney or transfer letter previously submitted by IPVN may result in IPVN issuing a notice of non-compliance. The patent owner must ensure the consistency and accuracy of all documents.
• Validity of successive transfers
  • In practice, there are often cases where patent rights are transferred successively. For example, if Company A transfers a licensed patent to Company B, and Company B subsequently transfers it to Company C, if Company B ceases to exist after the patent transfer, complications may arise. In this case, it may not be possible to complete the process of directly signing the transfer agreement from Company A to Company C.

In addition, if the entity requesting the competent authority to enforce the patent right is not officially registered as the patent owner in the IPVN, the patent right may not be enforceable. According to the relevant provisions of the Vietnamese Intellectual Property Law, the transfer of patents will only take effect after the successful filing of the IPVN. Even if the patent license has been effective between the two parties after the consent of both parties, it still needs to be successfully filed in the IPVN before it can be officially effective for third parties. Therefore, in Vietnam, if a real transfer of rights occurs, the patent owner should promptly file the transfer in the IPVN and ensure that unnecessary delays are avoided when submitting the filing.