How to overcome refusal of protection of industrial design in Vietnam ?

As far as you may know, in order to acquire protection of industrial design in Vietnam, an application will be evaluated in two stages examination (formality and substance).

If any problem occurs during these processes, two respectively official notices will be issued, as:

– Notice of result of examination as to refusal;
– Decision of refusal.

Why an application of industrial design in Vietnam was refused?

The main reasons of refusals of protection of industrial design in Vietnam commonly are:

1.  The unclear sets of drawings

An industrial design application in Vietnam requires a set of 04 drawings of photos which must be shown a clear design in perspective view, front view, rear view, left view, right view, top view and bottom view.

Some cases would be listed as follows:

– Poor quality graphic in design: the most popular errors are unclear and not sharp enough as well as jagged or blurred, so that the drawings could not exactly display details of the design.

-> In order to avoid the mentioned refusal, it is advised that the applicant should use drawings in technical design and avoid taking photos of the applied products. Preferably, all the figures should be divided into separated files and saved in JPEG format.

– The ratio: the drawings which are directly photographed of the finished products are different in ratio.

-> It is required to check the ratio of the figures carefully before filing.

2. Lack of applicant’s address in priority design application (if any):

-> In order to claim priority rights of industrial design in Vietnam, the applicant is requested to submit a certified copy of the first application. In case the application has been granted protection in other countries but the documents does not include the applicant’s address, that industrial design application would be refused by the NOIP due to lack of evidence in proving the identity of the applicant.

-> The applicant should request the first receiver office to record the detailed information (including name, address of applicant, application number and application date) in the first certificate. Otherwise, submitting a letter of applicant’s address guarantee at the time of later filing (in Vietnam) could also be way to overcome the objection.

3. Lack of novelty in substance

Since there are currently no specific criteria to evaluate the novelty of the substance, the result is mainly based on personal view of the examiner.

Here are some general preference criteria:

– Industrial design is considered as a whole, not specific in details;
– Industrial design is evaluated on its formality, not the idea;
– Parts of the product which contain design will be mainly observed;
– Industrial design size’s change is generally not considered as a substantial design feature (except for significant change in size of two-dimensional design);
– The materials used to make industrial design are not considered as a substantial design feature.

-> The following solutions should be implemented to ensure the novelty of industrial design in Vietnam:

– Limit the number of people knowing about the design;
– Do not reveal the design in public, except the cases which are regulated in Point 4, Article 65, Vietnam IP law 2005;
– Emphasize the novelty through design description;
– Concentrate on designing the predominant part

4. Failure in claiming priority rights

-> In order to ensure the favorableness of the design application which are successfully granted in other countries, the applicant should also notes that:

– Your design application needs to be claimed for priority rights. The limited time for claiming priority rights is 06 months as from the first filing date under Paris convention;
– Design has been granted in other countries will be an advantage in substantive examination. In this period, the applicant should submit the certificate (if any) to NOIP in order to shorten the examination time and raise a higher chance of granting.
– Examination results in developed countries such as Europe, America are often highly valued.

5. Response Time Period

It is recommended that a temporary response should be submitted as soon as possible in case the applicant is not able to provide a thorough reply, followed by a fully response in 10-15 days later. At any time before the issuance of final Decision, the applicant has the right to supply evidences as well as any other relating documents. 

In case you require more information or assitance on protection of industrial design in Vietnam, Laos, Cambodia and Myanmar, please do not hesitate to contact us via email: info@apta.vn