Under the current rules, the assignment or license of an IP object shall be subject to certain conditions. As a pre-requisite, to assign or license an IP object in Vietnam, such object must be already protected in Vietnam. It has been granted patents or certificates of registration. Those IP objects not yet registered in Vietnam cannot be assigned or licensed.
The scope of assignment/license can not be broader than that of protection granted under the respective patent or certificate. For example, for trademarks, the assignor can only assign the rights conferred by the certificate of registration, i.e. assignment is only possible for the trademark, exact goods and/or services claimed under the registration valid at the time of assignment.
The assignor or licensor must guarantee that he or she is the registered owner of the assigned/licensed object and that the assignment/license must not result in dispute with a third party. If dispute arises from the assignment/license of an IP object, the assignor/licensor shall be responsible for settlement.
Particularly, for appellations of origin, it should be noted that the rights to appellations of origin may not be assigned or licensed. In addition, the assignment/license of a trademark must not cause confusion in terms of properties or origin of goods and/or services bearing the trademark.
2. ASSIGNMENT AND LICENSE AGREEMENTS
Assignment or license agreements of IP objects must be made in writing, and contain prescribed statutory provisions applicable to each kind. Oral agreements, letters or telegrams shall not be accepted and have no legal effect. If the assignment or license of an IP objects is included in another agreement (such as technology transfer contract, service contract, etc.), it should be made in a part separate from the other parts.
The assignment or license agreement must include the followings:
- The identity of the parties (assignor and assignee, or licensor and licensee)
- The basis of the assignment/license (i.e. patent or certificate of registration granted and, in case of license, the exclusive license already granted to the licensor);
- The IP object(s) to be assigned, or in case of license, the scope of license granted including: kind of license (exclusive or non-exclusive), the IP object(s) to be licensed, license territory, license term (within the balance of protection term granted by the respective patent or certificate of registration);
- Assignment price or license royalty (it must be stated if the assignment/license is granted free of charge);
- The rights and obligations of the parties as stipulated;
- Conditions for amendment, termination or invalidation of the agreement;
- Dispute settlement;
- Signatory date and place;
- The signatures of the parties.
The current licensing rules mandate that the license agreement must not contain the following provisions which are considered as unreasonably restricting the rights of the licensee:
- Provisions prohibiting the licensee from improving the industrial property object other than marks; compelling the licensee to transfer free of charge to the licensor improvements of the industrial property object made by the licensee or the right of industrial property registration or industrial property rights to such improvements;
- Provisions directly or indirectly restricting the licensee from exporting goods produced or services provided under the industrial property object license contract to the territories where the licensor neither holds the respective industrial property right nor has the exclusive right to import such goods;
- Provisions compelling the licensee to buy all or a certain percentage of raw materials, components or equipment from the licensor or a third party designated by the licensor not for the purpose of ensuring the quality of goods produced or services provided by the licensee;
- Provisions prohibiting the licensee from complaining about or initiating lawsuits with regard to the validity of the industrial property rights or the licensor's right to license.
Intellectual property - picture illustration
3. RECORD OF ASSIGNMENT/LICENSE AGREEMENTS
The registration with the NOIP is compulsory for all assignment agreements to make them legally effective and enforceable in Vietnam. The agreements take legal effect upon their recordable with the NOIP. For recordable of license, the current rules provides that a licensing agreements shall be valid as agreed upon by the parties involved but shall be legally effective as against a third party upon recordable only.
Any amendment of, extension or early termination of validity of a registered agreement shall be recorded at the NOIP. Validity of a licensing agreements shall be terminated ex-officio upon the termination of the licensor’s respective IPRs.
For both records of assignment and license agreements, the NOIP is the receiving office which in fact will consider the agreement for registration, As regards documents required to be submitted to the NOIP for recordable of assignment/license agreements, please see Filing Requirements in Vietnam.
The NOIP will examine the application as filed and issue a decision on recordable of the agreement or refuse registration, within 2 months from the date of receipt.
4. ROYALTIES AND TAXATION
The royalties or price for assignment of IP objects will be agreed upon between the parties. However, where one of the parties to the assignment/license is a State organization or has part of its capital contributed by the State, the price shall not be lower than the minimum level if that party is the assignor/licensor, or not exceed the maximum level if that party is the assignee/licensee. The levels are determined by the Ministry of Finance and the MOST.
Under Circular No. 134/2008/TT-BTC dated 31 December 2008 guiding the tax regime applicable to foreign organizations without Vietnamese legal person status and foreign individuals doing business or earning incomes in Vietnam, the assignment/license of IP objects in Vietnam shall be subject to the royalty or withholding tax of 10 percent of the royalties paid.