The implementation of international treaties on patent protection in vietnam

Thereíbre, Vietnam has soon adhered most intemational treaties on/ related to patent protection, such as: The Stockholm Convention for Establishing WIPO since 2 July, 1976; The Paris Con

FACƯLTY 0 F LAW University of Lund

Le Thi Anh Dao

The implementation of intemational treaties on patent protection in Vietnam

Master thesis

Supervisor:

Professor Hans Henrik Lidgard Professor Bui Dang Hieu

2.2.1 P rin ciples o f protection 10

2.2.1.1 Principles o f National Treatment (NT) and Most Favor

2.2.6.1 General provisions on eníòrcement o f patent rights 172.2.6.2 Civil and administrative procedures 182.2.6.3 Crimminal procedures 192.2.6.4 Border control measures 20

2.3.1 Im plem entation defìned 20

2.3.2 M ean ỉn gs o f im plem enting international treaty oit p a te n t

p ro tectio n in Vietnam 22

PROTECTION IN LIGHT OF IMPLEMENTING

3.1.1 The system o fle g a l docum ents 23 3.1.2 G eneral p ro vision s on p a te n tp ro tectio n o f Vietnamese p a te n t

3.1.2.1 Principle o f applying intemational treaty and NT 253.1.2.2 Patentable íĩelds and possible exclusion to patentability 253.1.2.3 Patent application and priority right 253.1.2.4 Rights confered and obligations 273.1.2.5 Tenn o f protection 283.1.2.6 Enfocement o f patent protection 28

3.1.3 E valuate the Vietnamese P aten t law in light o f im plem enting

In tern ation al Treaties 31

3.1.3.1 Evaluate the system o f patent law 313.1.3.2 Evaluate the content o f Vietnamese patent law 31

3.3.1 S ta te m anagem ent bodỉes 34 3.3.2 S ta te enforcem ent bodies 35 3.3.3 S u pportive organiiations 35 3.3.4 P a ten t inform ation centers 36

IMPLEM ENTATION OF INTERNATIONAL TREATIES ON

4.3.1 To p e rfe c t law on p a íe n tp ro tectio n 40

4.3.1.1 Short - term measures 404.3.1.2 Long - tenn measures 40

4.3.2 To en h an ce avvareness an d activity to self- p ro tect the rig/tís

4.3.3 To reneìv orguìiitation an d im prove capacity o f institutions

f o r p a te n í protection 43

4.3.3.1 For State management bodies 434.3.3.2 For State eníbrcement bodies 434.3.3.3 For the supportive organizations 444.3.3.4 For patent infonnation centers 44

I hold it as a great honour to participate in The Svvedish/Vietnamese Master Programme in International and Comparative Law It is a pleasure to express my gratitude to all the persons who helped me in pursuing my study and research First, I devote my very particular thanks to the Board o f Directors, Professor Hans Henrik Ligard o f Lund University, professor Bui Dang Hieu o f The Hanoi Law ưniversity and all professors o f the project who helped and gave me invaluable knowledge I would like to extend my words o f appreciation to Librarians o f Lund ưniversity, Human Right Librarians and all Swedish friends Finally, I am indebted to Lund University and The Ha Noi Law University for financing my study

To my parents whose love and comíbrt encouraged me to complete this academic pursuit

2

WTO World Trade Organization

WIPO World Intellectual Property OrganizationTRIPs Agreement on Trade-Related Aspect o f

Intellectual PropertyBTA Bilateral Trade Agreement between

Vietnam and us

R&D Research and Development

UPOV International Convention for the

Protection o fN ew Varieties o f Plants

MOCI M inistry O f Culture and InfonnationNIOP National Office o f Intellectual Property

1 Introduction

1.1 Ratỉonale

Invention is viewed as an important object of industrial property (IP) Most all nations recognize the need to protect it in some form due to its potential value and sought to provide clear guidelines for this protection However, there are still difference views o f patent protection, even among developed countries The present intemational context raises the quest for patent law harmonization and it is challenging many countries, including Vietnam

M oreover, the major target o f Vietnam now is industrialization One important method for the advancement o f Science and technology involves the transfer o f technology in the form o f patents from foreign countries to Vietnam Thereíbre, Vietnam has soon adhered most intemational treaties on/ related to patent protection, such as: The Stockholm Convention for Establishing WIPO (since 2 July, 1976); The Paris Convention for Protection o f Industrial Property (since 8 March, 1949 and hereinafter called the Paris Convention); The Patent Co-operation Treaty (Since 10 March, 1993 and hereinaữer called the PCT); The Bilateral Trade Agreement between The Socialist Republic o f Vietnam and The United State o f America (since 2001 and hereinaíier called The B TA ) Pursuaní to these treaties, the patent systcm o f Vietnam has under gone major changes, especially since 19811 Despite the optimism, an inadequate inírastructure and an arcane legal system have kept away some potential invcstors.2

It also should be noted that Vietnam is currently negotiating for joining World Trade Organization (WTO) 3 ư p o n joining WTO, Vietnam will have to respect the agreements o f WTO members, including the Agreement on Trade- Related Aspects o f Intellectual Property Rights (TREPs)- which is commonly viewed as the "most ambitious International intellectual property Convention ever attempt"4 The TRIPs contains a number o f provisions conceming patent rights The Standard for patent protection in TRIPs is considered ĩairly high for many developing countries including Vietnam At the negotiating conferences for WTO membership, Vietnam delegation had to (and will have to) answer hundred o f questions related to clariĩication o f patent protection and intellectual property protection as well in Vietnam The intemational community are much conceming about the effĩciency o f patent protection in Vietnam rather than the adequacy o f its It means, joining intemational treaties on/related to patent protection is only One side, the more important side is domestic implementation

o f patent protection as required by these treaties

For the above mentioned reasons, the implementation o f intemational treaty on patent protection is indispensable requests o f integration and development and needs to be thoroughly researched for gaining the best fruits.

1.2 Purpose of the thesis

From the perspective o f implementing the intemational treaty and bearing the fostering an effective mechanism for patent protection in mind, the paper tries to explore, analyze and evaluate the fact o f patent protection in Vietnam in the light o f implementing its intemational commitments, thereby give a comprehensive advice on Vietnamese current mechanism for patent protection Accordingly, this thesis aims at:

Firstly, researching invention as an object o f IP.

Secondly, analyzing the provisions on patent protection provided in some intemational

treaties that Vietnam has signed as well as the TRIPs and raising the meanings o f implementing intemational treaty on patent protection It also presents the understanding about what is domestic implementation o f intemational treaty as well as implementing mechanism

Thirclly, investigating, analyzing and evaluating the fact o f Vietnamese mechanism for

patent protection in light o f implementing its intemational commitments and the

TRIPs as well Fourthly, proposing some solutions to improve the efficiency o f the

mechanism for patent protection in Vietnam

1.3 Methods of study

Both comparative and analysis methods is considered the important ones for this thesis The coraparative method is used to investigate the fact o f patent protection in Vietnam in compare with its intemational commitments in order to íind out how far Vietnam has implemented and the compliant/non-compliant points as well The analysis method is also especially helpful in analyzing the provisions on patent protection o f both Vietnamese patent law and the binding intemational treaties It is also used in evaluating the strong/week points and in proposing solutions for more effective mechanism for patent protection in Vietnam

Descriptive and synthetic methods are also used to give main contents o f the provisions on patent protection provided in intemational treaties and Vietnamese patent law as well as the necessary statistics, systematic diagrams o f legal documents

on patent and institutions for patent protection in Vietnam

1.4 Thematic limitation

As the title indicates, this thesis mainly íbcuses on exploring the fact o f patent protection in Vietnam in view o f implementing the binding intemational treaties on patent protection The Paris Convention, the PCT and The BAT - those bind Vietnam

as a mem ber o f them- are chosen to research because they have provisions on or directly related patent protection and they reciprocally relate The Trips Agreement is also mentioned since joining TWO in the coming time, the patent system o f Vietnam will have to satisfy the standards o f patent protection o f this treaty

2 Overvievv of Patent and

implementation of International Treaty

countries on invention (1979) contained a definition which read as follows "inventỉon means an ìcỉea o f an inventor which permiís in prcictice the solution to a specìỹic problem in the fie ld o f technology".

But not all inventions are patentable and this definition does not refer to the criteria o f patentability In fact, the criteria deíĩning what a patentable invention is have involved in developed and developing countries along similar- although not identical - lines Most law in the world have been traditionally based on the requirement o f novelty and industrial applicability; the developed countries, and at a slower pace developing countries, gradually added by the law or jurisprudence the requirement o f "inventive step" or "non-obviousness" as referred to in European countries and the United States, respectively The TRIPs by establishing that invention

are only patentable if they are "new involve an inventive step and are capable o f industrial application"5, does not innovate much with regard to the present situation

and trends It does not contribute, either, to the harmonization o f different concepts A

íootnote to this Article allows countries to interprete, on the One hand, "inventive step

as synonymous with "non-obvious" without prejudice to the nuances that exist between the concepts, and on the other hand "capable o f industrial appỉicatiorì’ as synonymous with "useful" Here the differences are considerably greater, since the last concept may

allow, for instance, the patentability o f knovvledge in an experimental stage or which is not by its nature industrial applicable

The conditions o f novelty and inventive step must exist on a certain date That date, generally, is the date on which the application is filed However, in a certain case, it will not matter if the conditions no longer exist on that date That case is regulated in the Paris Convention6 and concems the situation where the application o f

a given applicant conceming a given invention is not the íĩrst application o f that applicant for that invention, but a later application bv the same applicant (or his successor in titled) for the same invention - For example, the íirst application was filed

in Japan and the second in France In such a case, it will be sufficient that the conditions o f novelty and inventive exist on the date on which the fírst (the Japanese) application was fíled In other word, the second (the French) application will have a

5 A g e e m e n t o n T r a d e - R e l a t e d A s p e t c s o f I n t e l le c t u a l P r o p e r t y R i g h t s , Art 2 7 ( 1 )

(' P a r i s C o n v e n t i o n f o r P r o t e c t i o n o f I n d u s t r i a l P r o p e r t y , Art 4 ( l ) ( c )

6

priority over any applications íìled by other applicants in France between the date o f the ĩirst (Japanese) and the second (French) application, provided the period between the two date does not exceed 12 months Because o f such priority, the advantage thus assured to the applicant is called "right o f priority"

The signing o f the BTA was completely based on the TRIPs, so all these criteria, even the íbotnote o f this article o f the TRIPs was transíbrmed7 without any difference However, the various tenns mentioned in this provision have not been deíined in the text o f the both agreements In fact, there is a considerable room for Vietnam as a Party o f the BTA to deĩine these terms in its domestic legislation so as to reflect its own objectives in this íĩeld For instance, if it whishes to give protection to the interest

o f the established innovators, it may deĩine “invention” in a wider way, so that, new innovations which approximate the earlier ones are not considered to meet the requirement o f novelty On the other hand, if it whishes to encourage new innovator, it may defme this term naưowly, thus permitting the patenting o f innovations which approximate the already patented invention The subject o f a patent should be an invention, and not mere a discovery o f its which has already existed in nature but was not known earlier For example, it is possible for Vietnam to reíuse patents for biological or generic material which has been in existence, though these were not known earlier Another method might be allow prior art form to defeat novelty This could be very useful in case in which Vietnam contend that a patent claim is based on pre- existing indigenous knovvledge All o f these instances vvould be justifiable, as there if no consensus on an intemational Standard o f absolute novelty

Base on the interpretation o f this ílexible provision, Vietnamese patent law

harmoniously defmes: "an invention is a technical solution which is new in comparison to the current technical leveỉ o f the world, which is o f a Creative character and is applicable in various social and economic fiĩelds"8.

The characteristics o f an invention, according to Vietnamese patent law, are also the criteria for patentability It is obvious that these criteria are similar to those required by the TRIPs and the BTA Moreover, these criteria are explained9 in a similar line with these agreements as follow:

Firstly, a technical solution shall be considered to meet the worldwide novelty if,

beíòre priority date o f the protection application claiming solution, it is not in identical with any solution described in earlier protection applications and it has not been disclosed in Vietnam and abroad in any form o f use or description to the extent that base on such description any person o f ordinary skill in the art can effect the solution Iníòrm ation on a technical solution will not be considered publicly disclosed unless it

is accessible to the general public

However, if an invention is disclosed by another person without the consent o f the inventor or his assignee and such disclosure takes place v/ithin six months beíbre the íĩlling date o f the conceraed patent application, then the invention shall not be deemed to loss the novelty

Secondly, the inventive step is essentially a non-obviousness requirement A technical

solution will be deemed to involve an inventive step if it is a result o f Creative work and based on the State o f the art at home and abroad up to the priority date, is not obvious to a person with ordinary skill in the art

7 T h e B i l a t e r a l T r a d e A g r e e m e n t b e t w e c n T h e S o c i a l i s t R e p u b l i c o f V i e t n a m a n d T h e U n i t e d S t a t e o f A m e r i c a ,

C h a p t e r II, A rt 7 ( 1 )

8 T h e C i v i l C o d e ( 1 9 9 5 ) o f t h e so c i a l is t R e p u b l i c o f V i e t n a m , A r t 7 8 2

5 T h e D c c r e e 6 3 / C P d a t e d 2 4 O c t o b e r ] 9 9 6 g u i d i n g t h e i m p l e m e n t a t i o n o f t h e p r o v i s i o n s o f t h e C i v i l C o d e 199 5 o n IPR , A r t 4 ( l -3 )

Thirdly, an invention shall be deemed industrially applicable if it can be executed in

the present or future technical conditions with the results as described in the application for patent

Inventions are characteristically protected by patents, also called "patents for

invention"10 A patent is an exclusive right granted fo r an invention, which is a product

or a process thai provides a new way o f doing something or offers a new technical solution to a problem Every country which gives legal protection to inventions- and

there are more than 160 such countries - gives such protection through patents although there are a few countries in which protection may also be given by means other than patents11 The TREPs is perhaps the most far- reaching intemational instrument ever subscribed on intellectual property rights (APRs) It covers all types o f APRs, the sole exception o f breeders’ rights (only incidentally referred to) and utility models (or “petty patents”) There are no rules in the TRIPs text, and also in the BTA,

on utility models or "petty patents"12 However, the law o f some countries (about 20)

in the world also provide for utility models, even some others provides for titles o f protection which may considered similar to utility models13 They are called “petty patents” or “utility innovations” The expression “utility models” is merely a name given to certain inventions, namely- according to the laws o f most countries which contain provisions on utility models- inventions in the mechanical ĩield The PCT does not refer to patent for industrial designs but give an extensive understanding about

patent “Patent shall be construed as references to patents fo r inventions, inventors' certìỹicates, utility certựìcates, utility models, patent or certificates o f addition, inventor "certựìcates o f addition, and utility certificates o f addition"14 The Paris

Convention refers to industrial design but in another form o f protection other than patent In Vietnam, there are also patent for utility solutions and patent for industrialdesigns In this thesis, patent is construed as patent for invention that meets these three mentioned criteria as required by the TRIPs, the BTA and Vietnamese patent law

2.1.2 Patent protection deíined

The Civil Code (1995) o f Vietnam does not give the deíinition about patent

protection but the Article 804 gives the deíinition about IP protection as follow: "1 Any person who uses the industrial property obịects o f other persons during the protection duration withouí permission o f the owner shall be considered as having inýringed upon the industrial property rights, except in cases specifìed in Article 801 and Article 803 o f this Code.

2 when the industrial property rights are infringed upon, its owner shall be entitled to the rights speci/ìed in point c, clause 1, Article 796 o f this Code"]ĩ

The Civil Code, upon these provisions, gives a narrow deĩmition about IP protection in which coníirms and protects the exclusive rights o f the owner through the duration o f protection Furthermore, the Article 804 only provides the civil compensation vvhile in fact it includes administrative and criminal sanctions So, by

the meaning o f Article 804, patent protection can be deíined: Any One who whishes to exploit the invention must obtain the authorization o f the person who received the patent - called "thepatentee" or "the owner o f the patent" - to exploit the invention I f any one who exploits the patented invention without such authorization, he commits an illegal act One speaks about "protection" since what is involved that the patentee is

protected against exploitation o f the invention vvhich he has not authorized

The TRIPs when explains deĩinition about "protection" in Article 3 and 4

delìnes: "protection ” shall include matters affecting the avaiỉabỉlity, acquisition, scope, maintenance and enforcement o f intellectual property rights as well as those matters affecting the use o f intellectual property rights specially adclressed in this Agreement" So, the TRIPs give the broadest deíĩnition about protection Accordingly,

the protection includes not only acquisition and scope o f the rights o f the owners but also the eníbrcement o f the rights In the pre- TRIPs conventions, including the Paris Convention and the PCT, this deíĩnition was given in a narrower way (only providing

on acquisition, the rights conferred to owners, the term o f protection except or eníbrcement o f the rights) Eníbrcement provisions were considered essential to realize the intent o f the BTA and also the TRIPs Although both o f them do not give the deĩinition about enforcement o f APRs but they give detail provisions that require

each mem ber "shall ensure that enforcement procedures are available under (domestic) ỉaw so as to perm it effective" and expeditious remedies against any act of

patent infringement Further more, many procedural safeguards are presented in these Agreements W ith such provisions, enforcement o f intellectual property rìghts (APRs), from our point o f view, is applying in practice the measures provided by law that aims

at protecting the rights o f the APRs owners and preventing the iníringing activity The deĩinition o f enĩorcement o f APRs thus is understood in the sense that the owners are ensured to carry out the acts involving objects o f APRs and to prevent and against the iníringing acts o f the third person With this understanding, the definition about APRs

"protection" consists o f eníorcement o f the rights In this thesis, we will research

“patent protection” following this defmition

2.2 General provisỉons on patent protection of

international treaties binding Vietnam

So far, Vietnam has been a Member o f many treaties on/related to APRs but the Paris Convention, the PCT and the BTA have provisions that directly relate to patent protection To some extent, these treaties closely provide one another and thus,

as said in the thematic limitation, in this part we only íòcus on analyzing the

13 T h e A r t i c l e 801 a n d A r t i c l e 803 p r o v i d e r e s t r i c t e d u s e o f t h e 1P rig h ts P o i n t c, c l a u s e 1, A r t i c l e 79Ố p r o v i d e s the

r i g h ts o f t h e o w n e r s o f IP o b j e c t s : t o d e m a n d t h e c o m p e t e n t S t a t e a u t h o r i t y c o m p e l t h e p e r s o n w h o h a s i n ữ i n g e d

u p o n h i s / h e r p r o p c r t y r i g h ts t o c e a s e s u c h i n ữ i n g i n g a c ts a n d c o m p e n s a t e for d a m a g e s

provisions on patent protection o f these three treaties (and the TRIPs but not much) to lay the ground for the next research.

It also should be noted that the PCT just desires to simplify and render more economical the obtaining o f protection for inventions where protection is sought in several countries So, the PCT does not intended to limit the íreedom o f its Members

in prescribing sustentative conditions o f patentability and đetermining prior art for protection as it desires16.Therefore, besides the application and its procedures provided

in the PCT, the paper mainly focus on the contents o f patent protection provided in the remain treaties

Hovvever, both the Paris Convention and the BTA give the exception for N T 18 Accordingly, in relation to judicial and administrative procedures, including the designation o f an address for Service or the appointment o f an agent within the jurisdiction o f the other party, Vietnam may give no NT if only such exceptions are necessary to secure compliance with laws and regulations which are not inconsistent with the provisions o f the BTA and Paris Convention and such practices are not applied in a manner which would constitute a disguised restriction on trade Moreover, the Paris Convention also provides that patents applied for in the various countries o f the Union by the nationals o f countries o f the Union shall be independent o f patent obtained for the same invention in other countries, vvhether members o f the Union or not This provision is to be understood in an unrestricted sense, in particular, in the sense that patent applied for during the period o f priority are independent, both as regard the grounds for nullity and forfeiture and as regards their normal duration19.The M FN principle provided in the TRIPs and the Patis Convention requires non- discrimination among nationals o f the other members This later type o f discrimination has occasionally risen in intellectual property as a result o f unilateral actions that led to concessions only beneíiting the nationals o f the countries that pressed for the reíbrms

2.2.1.2 Principle of minimum protection

According to this principle, in respect o f patent protection, Vietnam has to meet the standards for patent protection (including patent subject matters, patentability, term o f protection, rights to confeưed, enforcement m easures ) as required by the BTA and the Paris Convention.20 The patent protection must not be narrower and/or lower than the requirements o f the binding treaties and does not contravene the provisions o f them Though they are minimum standards but for many country including Vietnam, these standards are fairly high, especially the enforcement requirements

2.2.1.3 Principle of objectives of patent protection

Patent protection does not itself become barrier to legitimate trade and recognizing the underlying public policy objectives o f national systems for the protection o f IPRs and patent as well, including developmental and technological objectives21 The purpose o f this principle is to balance the interests o f innovators and that o f public and State as well as to ensure the principle o f free trade required by WTO is practically implemented

2.2.2 Patentable fields and possible exclution to

patentability

Article 7.1, chapter II o f the BTA stipulates that "patent shall be available fo r any inventions, whether Products or processes, in all fields o f technology” Furthermore, the TRIPs states: "patent shall be available and patent rights enjoyable without discrimỉnation as to the place o f invention, the field o f technologỵ and whe(her proclucts are imported or locally produced" 22 These provisions may be deemeđ as

one o f the major success o f the u s in negotiating the TRIPs23 as well as the BTA They will put an end to one o f the most conílicting issues in the patent íield

M oreover, this clause has an important implication as to the extension o f patentability

to all types o f inventions, independently from the industrial sector or íĩeld o f technology to which they belong It also bans any differential treatment based on the place where the invention was made and depending on the interpretation accorded to this provision, the compulsory licensing system may also be affected by the prohibition to discriminate on the basis o f the origin o f the product

About the possible exclusions to patentability, the BTA specified that the one party

may (but not obliged to) " exclude from patentability inventions, the prevention within their territory o f the commercial exploitation o f which is necessary to protect public order or morality, including to protect human, animal or plant life or health or to civoici serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by domestic /avv”24.

Since there is no deíínition on the order public and morality, the explanation o f this Article is reserved to Vietnam and shall be made in accordance with its development

situation and national economy Whether or not the national interpretation and implementation is inconsistent with the BTA shall be examined in the light o f the purposes and objectives o f the BTA Though the last possible exclusion to avoid

"serious prejudice to the environment" is restrictive (non-patentability may not be base

on any prejudice to the environment, but on one which is qualiíĩed as serious) but it represents a step forward that may iníluence future legislation on the matter

Notwithstanding the apparent broadness o f this provision, its application is subject to two restrictions: on the One hand, non - patentability may only be established if the commercial exploitation o f the banned inventions is prevented in the respective country and such prevention is necessary to protect the interests refeưed to above In other words, it would not be possible to declare the non-patentability o f certain subject

- matter while at the same time permitting its distribution or sale On the other hand, the general provision ("provided that such exclusion is not made merely because the exploitation is prohibited by domestic law") will outlaw exclusion which is not actually based on the speciĩic grounds set forth in Article 7, BTA, even if they are prescríbed by national law The existence o f a legal prohibition, if based on other reasons, will not be sufficient to sustain the unpatentability o f an individual invention

or o f a category o f them

In addition, according to Article 7, the party may also exclude from patentability:

(i) Diagnostic, therapeutic and surgical methods fo r treatment o f humans or animaỉs\

The exclusion correctly interpreted, would not apply to any apparatus used for diagnostic treatment or to Products such as "diagnostic kits", one o f the main biotechnological based Products in the market today

(ii) Plants and anỉmals other than microorganỉsms, and essentially biological processes fo r the production o f planís or animal other than non-biological and nùcrobiological processes However, party shall provide fo r the protection o f plant varieties either by patents or by an effective sui generis system or by any combination thereof Various elements o f this provision need to be considered First, unlike

European law25 and other legislation that followed the same approach, this provision refers to "plants and animal's and not to a certain classiíication thereof ("varieties, races" or "species") In the absence o f any distinction - and in the ỉight also o f the exclusion is to be interpreted in broad terms inclusive o f animal and plants as such, animal races and animal and plant species

Second, the exclusion o f "essentially biological processes" is limited by the reference to processes "other than non-biological and microbiological" The concept of microbiological processes as an exception to the exception is present in the European legislation and in the law o f various other countries Its aim in the BTA context is to limit the exclusion o f patentability to traditional breed in methods, whiỉe preserving the possibility to obtain protection, for instance, on development based on cell manipulation or, with the advances in biotechnology, the transfer o f genes According

to the BTA, processes employing micro-organisms (such as fermentation) are also patentable, in accordance with current practice in Vietnarn

M ore complex and new is the concept o f "non-biological process" How can a plant or an animal be produced by a process which is not totally or in part biological? The source and grounds o f this text are untraceable It will probably create more problems than it may solve

Third, and as an exception to the general authorized exclusion, party must

provide for "plant varierties" either by patents or by "an effective sui generis system or

25 E u r o p e a n P a t c n t s C o n v e n t i o n ( E P C ) - 1 9 7 3 , A r t 24.

12

by any combination thereof" This obligation is another important basis for the expansion o f the scope o f intellectual property in a field that Vietnam (and most developing countries) has neglected until now Although there is ílexibility as regards the form o f protection, the fact is that Vietnam would be bound to protect plant varieties26 The making o f verierties refers to bringing about improvement by breeding techniques to create stable and uniíbrm objects with different characteristics This obligation does not extend to the protection for animal verierties The reference to a

"sui generis system" naturally suggests the breeders" rights regime, as developed

within UPOV and in the domestic law o f many countries Hovvever, the possibility is open to combine the patent system with the breeders' rights regime, or to develop other

"sui generis" form o f protection It is unclear, indeed, why in an instrument aimed at

establishing straight forward way, as in other matters o f equal or similar importance Whatever the reason may be, countries which presently do not protect plant varieties have considerable room to develop their own systems in a way that may have - paradoxically - a deharmonizing effect The criteria to be applied in determing whether protection is effective are not defmed Accordingly, Vietnam is free to determine the scope and contents o f the rights to be granted For instance, it could grant exclusive rights to breeders with respect to the propagading materials (that is, seeds and other materials for the reproduction of plant) o f new varierties, subject to clearly stated exceptions for the re- use and eventual sale o f seeds by the farmers and exceptions for

the use o f protected verierties by a third party in order to develop a new vrierties Sui generis regimes can also include compulsory licences for reasons o f public interests,

as well as provide recognition,eg Via a royalty or other type o f rem unerationoí the rights o f traitional farmers that have provided breeding materials?

2.2.3 PCT application and priority right

PCT with the desire to simplify and render more economical the obtaining o f protection for inventions where protection is sought in several countries by ííling International application for "International patent", provides in detail the official requirements that any International application is obliged to

The PCT provides that conditions for priority27 are those provided in Paris Convention Subịect to Article 4, Paris Convention: Base on the first regular application has ííled to any country o f the Union, in the time o f no later than twelve months from that date the applicant may íĩle application for protection to any country and the subsequent application conceming the same subject as a previous íírst application filed in the same country o f the Union, shall be considered as the íirst application, o f which the ííling date shall be starting point o f the period o f priority Consequently, any subsequent ĩiling in any o f other countries o f the Union beíòre the expiration o f the periods referred to above shall not be invalidated by reason o f any acts accomplished in the interval, in particular, another íĩling, the publication or exploitation o f the invention The renouncement or withdraw o f the fưst application does not take away the priority rights The applicant can ask priority o f several applications and o f a part o f the prior filed application as well

2(1 In t h e U n i t e d S t a t e s a n d in J a p a n a p l a n t v a r i e t y m a y b e p a t e n t a b l e , th i s is n o t t h e c a s e in E u r o p c S ee S u p r a n o te

23 ; P a t e n t A c t , 35 u s c 1 - 3 7 6 , S e c 1 0 5 1 0 S ;

2 1 A r t i c l e 8, P C T

2.2.4 Rights coníered

The United States President A Lincol has said: “protection for intellectual property is fílling oil to the ílame o f genuis” It means that, a person who has invention must be granted beneíits and that the íirst is the right to mention the name in the patent"28 and especially, the exclusive right to use invention The rights, the protection, are not described in the document called "patent" Those rights, that protection, are discribed

in the patent law o f the country in which the patent for invention was granted

The Article 7(3), BTA sets forth the rights that a patent should confer to its title - holder by refeưing to the two traditional catergories o f inventions: Products and process

Patent relating to Products confers the right to prevent third parties not having the patentee's consent from "making, using, offering for sale or importing for those purposes the product29 One signiíicant aspect o f this detailed provision is that it expressly reíers to importation as one o f the exclusive rights o f the patent-holder30 Finally the BTA conĩirms what most laws in the world allow with regard to the right

to assign the patent or transfer it by succession or to grant licenses for its use

Hovvever, these above said rights are also excepted in some cases by general

wording o f Article 7(4), BTA Three conditions need to be met by exceptions First, they must be "limited", but it is unclear whether the in scope, duration or othenvise Second, they should not "unreasonably conílict with a normal exploitation o f the patent" And third, the exceptions should not "unreasonablely" prejudice the legitimate interests o f the patent owner' All these three conditions are to be applied, however,

"taking account o f the legitimate interests o f third parties"

This provision necessarily leads to a case by case assessment o f the exceptions thai can be granted Based on the present stalus o f comparative patent law and on other proposals31 the following exceptions may be deemed legitimate vvithin the scope o f Artilce 7(4), BTA: (1) Importation o f a product that has been put in the market elsewhere by the patentee or with his consent; (2) Acts done privately and on a non- commercial scale or for a non-commercial purpose; (3) Using the invention for research and experimentation and for teaching purposes; (4) Preparation o f medicines for individual cases according to a prescription; (5) Compulsory licensing (we will analyze it later); (6) ư s e o f the invention by the third party who started-or undertook serious preparatory acts-before the application for the patent (or its publication)

As said above, compulsory licensing is one of the exceptions to the patent rights but both the TRIPs and the BTA do not refer to the widely accepted notion o f "non-

voluntary" or "compulsory" licensing Ninety-six countries - or 71 per cent o f all the countries in the world - allow for One form or another o f compulsory licenses.32 Nevertheless, Article 7(8) BTA on "other use without the authorization o f the right holder" contains a detailed set o f conditions and limitations for the granting o f such licenses Different aspects also need to be considered here

Firstly, Article 7(8), BTA allow s the p arty 's legislation to determine the grounds for granting compulsory licensing Although it refers to some specific grounds (national emergency, anti competitive practices, public non-commercial use, dependent patent),

it does not limit, in principle, the party's right to establish such a remedy for different situations The text only sets out the conditions to be met "where the law o f a Party allows for other use" without the authorization o f the right-holder The only exception relates to "semi- conductor technology" which can only be subject to compulsory license for public non-commercial use and to remedy anti- competitive practices

Compulsory licenses may, thereíbre, be contemplated for the founds other than those explicitly referred such as: (1) Public health and nutrition or other reasons o f public interest33; (2) Lack or in suffĩciency o f v/orking; (3) Environmental protection; (4) Dependent patent; (5) Other grounds

Secondly, the BTA have paid particular attention to the conditions under which a

com pulsory license may be granted They include the following:

(1) Such license should be granted taking into consideration "its individual merits"34 This means that decisions need to be taken for each individual application and that they can not involve a certain type o f patents defmed by its subject - matter, title- holder or othenvise

(2) Prior to the granting o f the license, the proposed license should have made "efforts

to obtain authorization from the right holder on reasonable terms and conditions” and

if "such effort have not been successful within a reasonable period o f time", he may then apply for a compulsory license This provision makes compulsory the existence

o f prior commercial negotiations with the title-holder, a requiremení that many legislation have omitted, particularly in cases o f licenses granted on grounds o f public interest Article 7(8), BTA allows, nevertheless, for exceptions in cases o f national emergency or other cireumstances o f extreme urgeney as well as in cases o f "public non-commercial use".35 and where a license is granted to remedy anti-competitive practices

(3) The scope and duration o f the authorization "shall be limited to the purpose for which it was authorized"36 This clause may imply the limitation o f the license, both in terms o f scope (for example, to certain claims or kind o f Products) and o f duration In exchange, nothing will a potential license from asking for comprehensive license extending until the expiration o f the patent This has been, in fact, the generally accepted practice under the Paris Convention till now For a license that has to undertake investment in production or marketing it will ofìen be essential to obtain a license for the lifetime o f the patent

Another important point is that the BTA does not limit the purpose for which a com pulsory license can be granted In other words, it can be coníerred to import or to locally produce a patented product.37 In some cases, license to remedy abuses o f dominant positions or to protect public health-importation may, in fact, be the sole or main way to comply with the purposes for which the authorization is given

(4) Any authorization shall be, as is established in most legislation, non-exclusive and non-assignable, except with that part o f the enterprise or good will that uses it The

non-exclusive character o f the license means that the title-holder could import or industrially excecute the invention, in parallel with the compulsory license, by means that more than one compulsory license can be granted for a given patent.

(5) The licenses should be granted "predominantly for the supply of the domestic market"38 This provision, which may not be applied in connection with licenses to remedy anti-competitive practices-will conílict with national law allowing for compulsory licenses to satisfy solely export markets

(6) One important change is introduced into the system o f compulsory licensing as generally applied today with regard to the term o f the license The BTA sets forth the principle that a compulsory license is liable to be tenninated when "the circumstances, which led to it cease to exist and are unlikely to recur" Competent authorities shall have, therefore, the authority to review, on motivated request, the continued existence

o f such circumstances The eventual termination is subject, however, to "adequate protection o f the legitimate interests o f the person" authorized to use the invention Without this provision, this provision would have completely diluted the potential o f any system o f compulsory licensing The protection o f the legitimate interests o f the license m eans that he could not be deprived o f his right to the license once he has made serious preparations for putting the invention into use, or established productive

or marketing capabilities If a reasonable degree o f certainty are not assured, nobody would be interested in applying for a license that could be terminated at any time Paradoxically, the most and more immediately affected license could be precisely the one who more efficiently contributed to remedy the situation that gave rise to the granting o f a license

(7) The title-holder shall be paid "adequate renumeration in the circumstances o f each case, taking into account the economic value o f the authorization"39 This provision vvould apply, in principle, to any kind o f compulsory licen se40

The considerable room is left for interpretation at the national level on the criteria to determine when a remuneration is to be deemed "adequate" The same provision provides two elements for the interpretations: On the One hand, the adequateness is to be judged in the circumstances o f each case and, on the other, it is necessary to take into account - as One but not the sole or determining factor "the economic value o f the authorization" Thus, the circumstances o f the license and o f the country where it operates, as well as the purpose o f the license should be considered to establish the remuneration due A license conferred to satisfy public health or other social needs may be subject to parameters different from those applicable when purely commercial and industrial interests are involved The "economic value' will differ

depending, inter alia, on the size o f the market to be supplied (generally the domestic

one), the age o f the technology, the rate o f obsolescence in the respective sector, the degree o f competition o f substitute and the coverage o f the patent

The word "adequate" also needs to be clariĩied in order to give more precise guidance to national judicial and administrative authorities One possible understanding is that it simply means the remuneration that the title-holder should be able to obtain in an arm's length transaction This would not be, however, the natural meaning o f the word in English.41 An altemative interpretation would take into

account factors such as the subsidies or other contnbutions that the title-holder eventually received to develop the invention, the degree to which development costs have been amortized and the R&D commitment o f the patent -owner.

(8) Finally, the title-holder should be given the possibility o f review, by any decision relating to the granting o f a license as well as o f the determined remuneration42 Such a right will not prevent a party, however, from giving immediate effect to a decision

conferring a license, subject to a later review This will be particularly important for cases involving public interests or the correction o f anti-competitive practices

2.2.5 Term of protection

The BTA in respect o f the duration o f patent rights is in line with the TRIPs Agreement The BTA establishes, as a minimum, 20 year's protection counting from the fíling date o f the patent This provision will outlaw any special duration period determined on the basis o f the fíeld o f technology, the extent o f explaination o f the invention or on any other grounds

Both the TRIPs and the BTA do not dealt with the grounds for revocation or forfeiture

o f a patent, but Paris Convention and PCT do43 A patent may, thus, be revoked due to the lack o f payment o f annual maintenance fees o f for other substantive reasons, such

as abuse o f dominant position The only provision in the BTA on this matter ensures the availability o f a judicial review o f any decision to revoke/forfeit a patent So that,

it allows member countries to privide legislative remedies for patent abuses by the patentee, such as failure to work44or insuffícient working o f pateníed inventions compulsory licenses; forfeiture or revocation45 It prohibits revocation o f patent rights for failure to work or insufficient working unless compulsory licenses were already granted and proved insufficient to prevent such abuscs In the cvent that compulsory licenses are granted and prove insufficient, forfeiture proceedings may not institute beíòre the expiration o f two years from the grant o f the íírst compulsory licenses Therefore, a patentee does not forfeit his or her patent rights unless the invention was not worked for the innitail 3 or 4 year period, a compulsory license was then granted

2.2.6 Enforcement of patent rỉght

As said above, the Paris Convention only sets forth general provisions on patent protection rather than in detail, for instance, the Article 27, TRIPs and Article 7, BTA are the provisions that the Paris Convention does not have The eníòrcement provisions thereíòre are provided in the TRIPs and inherited by BTA with two main

parĩs: Firstly provisions on general requirements to Parties' law on enforcement o f patent rights Secondly, the provisions on detail requirements to civil procedure,

administrative procedure, criminal procedure and border control lt should be noted thai these provisions are also eníbrcement ones o f IPRs

2.2.6.1 General provisions on enforcement of patent rights

Article 11 o f BTA stimulates: "Parties shall ensure that enforcement proceclures as specified in this part are avaiỉabỉe under its law so as to perm it effective action

4‘ S u p r a n o t e 7, Art 7 8 ( i)(g ); n o t e 5, A rt 3 1 ( i ) ( g ) I THƯ VỊ EN

- S i p r a n o t e 6 , A r t 5 bis; n o t e l 4 , A r t 2 4 ■ 1 R Ư Ờ N G ĐAI hOC LÚÃĩ h à NÕ' ; See A c t i v i t i e s o f t h e In t e rn a t i o n a l B u r e a u , 2 2 I n d u s P r o 88 ( M a r 1 9 8 3 ) 1 A ' •

45 1(1 Art 5(A) ! PHONG Đ O C - Ị

against any cict o f infringements o f intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to ỷurther infringements These procedures shall be cipplied in such a manner as to avoid the creatìon o f barriers to legitimate trade and to provide fo r safeguards agaỉnst their abuse".

Furthermore, it requires that the eníbrcement procedures shall be fair and equitable They shall not be unnecessarily complicated or costly, or entail unreasonable time - limits or unvvaưanted delays Decisions on the merits o f a case shall preferably be in writing and reasoned; based only on evidence in respect o f which parties were offered the opportunity to be heard Parties to a proceeding, moreover, shall have opportunity for review by a judicial authority o f final administrative decisions, and, subject to jurisdictional provision in a Party's law conceming the importance o f a case, o f at least the legal aspects o f initial judicial decisions on the merits o f a case46 The Agreement, however, does not require the party to establish a judicial system for the enforcement

o f patent rights distinct from that for the eníòrcement o f law in general So, it is difficult to determine the scope o f these above requirements since they seem to be directive For instance, the investigating oíìen takes two or three years, in fact and the pre-trial investigating procedures under the US's law oblige defendants to supply plaintiffs not only iníbrmation that they have but also the translated writings o f this information M any trials, in fact, involved foreign companies in which these companies themselves wasted much money to translate thousands o f documents to English This requirement puts not only small enterprises with Capital difficulty into

disadvantage position but also increases their duty This is similarly in Vietnam, ầ à civil

trial related inữingements o f patent rights can take several years So, whether this fact contravence the requirement o f "not complicated or costly” o f the BTA or not? It is still outlavv

2.2.6.2 Civil and administrative procedures

Article 12 o f the BTA requires each party make available to right-holders civil judicial procedures conceming the enforcement o f patent right Defendants shall have the riglìt

to written notice which is timely and contains sufficient detail, including the basis o f the claims Parties shall be allowed to be represented by independent legal counsel, and procedures shall not impose overly burdensome requirements conceming

m andatory personal appearances The party to such procedures shall be duly entitled to substantiate their claims and to present all relevant evidence The procedures shall provide a means to identify and protect coníĩdential iníbrmation, unless this would be contrary to existing constitutional requirements

One o f the basic principles o f civil procedure is the responsible for supplying evidence resides in plaintiff However, in many cases, plaintiffs cope with diffículties in submiting evidence to prove for their claims, especially when the evidences are under the defendant's control From this fact, the BTA provides that: the judicial authorities shall have the authority, where a party has presented reasonably available evidence sufficient to support its claims and has speciíĩed evidence relevant to substantion o f its clairns w hich lies in the control o f the opposing party, to order that evidence be produced by the opposing party, subject in approriate cases to conditions which ensure the protection o f conĩidential infonnation In cases, in which a party to a proceeding voluntarily and without good reason refuses access to, or othenvise does not provide necessary iníom iation within a reasonable period, or signiĩicantly impedes a procedure

46 S u p ra note 7, Art 1 1(2)(2)(3)

18

relating to an enforcement action, a party may accord judicial authorities the authority

to make preliminary and final determinations, affirmative or negative, on the basis o f the iníòrmation presented to them, including the complaint or the allegation presented

by the party adversely affected by the denial o f access to information, subject to providing the parties an opportunity to be heard on the allegations or evidence

Furthermore, the BTA also provides the minimum rights that party have to confer it judicial authority That is the right to order the opposing party to desist from an

inữingements, inter alia to prevent entry into the channels o f commerce in their

jurisdiction o f imported goods that involve the iníringements o f an intellectual property right, immediately after customs clearance o f such goods and to order the iníringer to pay the right holder damages and expenses, which may include approriate attomey adequate to compensate for the injury the right holder has suffered because of

an infringements o f that person's right by an iníringer who knowingly, or with reasonable grounds to know, engaged in iníringing activity

Another issue that the BTA especially focus by providing in Article 13 is the provisional measures These measures basically aim at 2 purposes:

(1) To prevent an iníringement o f any patent right from occuring, and in particular to prevent the entry into the channel o f commerce in their jurisdiction o f goods including imported goods immediately after customs clearance;

(2) To preserve relevant evidence in regard to the allegeđ infringements

The provisional measures, in principle, are ordered as asked by applicant aữer hearing the defendant expressed their ideas However the BTA requires the judicial authorities

shall also have authority to adopt provision measures inaudita altera parte where

approriate, in particular where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk o f evidence being destroyed In this case, the party affected shall be given notice, without delay aữer the execution o f the measure at the latest in order to require for reviewing o f this measure

However, the basic issue, in fact, is not how to transform for providing these provisional measures to the party's law but how to apply o f them in practice Othenvise the unsuitable or illegal provisional measures will cause damages to defendant and affect the normal commerce activities So, the Article 13, BTA provides

a set o f conditions for applying these provisional measures such as: The applicant have

to provide any reasonably available evidence in order to satisfy themselves with a sufficient degree o f certainty that the applicant is the right holder and that the applicant right is being inữinged or that such iníringements is imminent; the applicant also have

to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse; to supply other iníòrmation necessary for the identifícation o f the goods conceraed by the authority

About administrative procedures, the BTA only provides the general principle that is:

to the extent that any civil remedy can be ordered as a result o f administrative procedures on the merits o f a case, such procedure shall conĩirm to principles equivalent in substance to these set íòrth civil remedy

2.2.6.3 Crimminal procedures

In compare with civil procedures, criminal ones are shortly and principly provided in the BTA47 Accordingly, party can provide for criminal procedures and penalties to be applied for infringements o f patent rights Remedies available shall include imprisonment and/or monetary fmes sufficient to provide a deterent,

47 Id, Art 14

consistently with the level o f penalties applied for crimes o f a corresponding gravity as well as seizure, forfeiture or destruction o f the inửinging goods.

2.2.6.4 Border control measures

These measures are provided in the TRIPs and the BTA and deemed as ideal for eníbrcem ent o f patent right and o f IPRs as well

Hovvever, application o f border control measures to goods related to patent right is the right of party, not its obligation48 The measures include suspension o f the release in to free circulation o f suspected infringing goods or iníringing goods destined for exportation The BTA require the party's law have to detail it in national law

2.3 Defỉnition and meanings of implementing

international treaty on Patent protection

2.3.1 Implementation deíined

The obligation o f voluntaric implemention o f intemational law and intemational treaty

in particular, is provided in many intemational legal đocuments, such as United Nation Charter 1945, 1969 The Ordinance on Signing and Implementing International Treaty

o f Vietnam states: "The Socialist Republic o f Vietnam strictly implements the international conventions/treaties that it has been committed to and also requires reciprocity o f otherparties".49

However, base on the principle o f respecting a country's sovereignty, intemational law does not regulate the way to domestically implernent intemational treaty in a country50 The country has duty to voluntarily implement its intemational commitments following the principle o f Pacta Sunt Servanda.51 The TRIPs also provides that: “Members shall bee free to determine the approriate method o f implementing the provions o f this Agreement within their own legal system and practice”52 So how and what measures to implement intemational treaty are defíned

by the country itself based on its sovereignty Each country bases on its interests, situation and condition o f its own provides necessary provisions on relationship between its national law and intemational law Some countries allow direct effect o f intemational treaties on territory 5 , some countries othenvise require to transíbrm it

by an act that promulgated by nation's legislative authority 54, some countries accept both o f these views

For the above mentioned, distinction has just been made between “enforcement” and

“implem entation” There is something peremptory in the íirst concept implying an

element o f coercion or compulsion which is lacking in the second: law is enforced by the application o f sanction The term “implementation” has a wider, more generic meaning There is no mention o f the noun in the Oxíbrd Dictionary although the verb

“to implement” is said to mean “to complete, perírom, to carry in to effect” 55 However, when we look at the French equivalent, ‘mise en oeuvre”, which can be roughly translated as “put to work” or better “to make something work” Implementation, thereíore, while including enforcement also includes certain procedures and oganized social pressures like the íbrce o f public opinion which a lawyer might not recognize as legal institutions So, it can be understood that: "The implementation o f intemational law is a process in which the subjects apply suitable legal mechanism in order to ensure the provisions o f intemational law are respected and implemented in intemational life".56 This view allows nations and other subịects

o f intemational law to self-determine a mechanism to implement intemational law in its territory Hovvever, both intemational law and Vietnamese law have not officially deĩined about the “mechanism” for implementing intemational law as well as intemational treaties

Vietnamese law only provides some issues relating to procedure o f signing treaties and the prior effect o f them to national legal documents Some treaties on commerce, investment, intellectual property rights have effect immediately in Vietnam's territory after the President ratiíied or Government adhered Beside that, some o f them (including treaties on environment, diplom acy ) only take effect in Vietnam's teưitory after having been transíòrmed to Vietnam's national law That fact causes difficulties in implementing treaties in Vietnam's territory

The word "mechanism" is terminology in English with two senses Firstly, in the field

o f Science - technology, this word implicates components o f a machine; Secondly, in the field o f sociology, this word implicates a system or a structure by vvhich a process

In this thesis, this understanding is used as structure to research the mechanism for patent protection in Vietnam in light o f implementing its intemational commitments

55 T h e O x f o r d E n g l i s h D i c t i o n a r y ( 1 9 9 3 )

56 I n t e r n a t i o n a l l a w b o o k , H a n o i la w U n i v e r s i t y , t h e N a t i o n a l p o l i c t i c p u b l i s h e r , 2 0 0 4 , p 3 4