CHAPTER X: Transfer of Industrial Property Rights (Law no. 50/2005/qh11 on intellectual property)

CHAPTER X
Transfer of Industrial Property Rights

SECTION 1
Assignment of Industrial Property Rights

Article 138 General provisions on assignment of industrial property rights

1. Assignment of an industrial property right means the transfer of ownership right by the owner of such industrial property right to another organization or individual.

2. An assignment of an industrial property right must be established in the form of a written contract (hereinafter referred to as an industrial property right assignment contract).

Article 139 Restrictions on assignment of industrial property rights

1. Industrial property right owners may only assign their rights within the scope of protection.

2. Rights to geographical indications shall not be assignable.

3. Rights to trade names may only be assigned together with the transfer of the entire business establishment and business activities under such trade name.

4. The assignment of the rights to marks must not cause confusion as to properties or origins of goods or services bearing such marks.

5. Rights to marks may only be assigned to organizations or individuals who satisfy conditions for persons having the right to register such marks.

Article 140 Contents of industrial property right assignment contracts

An industrial property right assignment contract must contain the following principal contents:

1. Full names and addresses of the assignor and of the assignee.

2. Grounds for the assignment.

3. Assignment price.

4. Rights and obligations of the assignor and the assignee.

SECTION 2
Licensing of Industrial Property Rights

Article 141 General provisions on licensing of industrial property rights

1. Licensing of an industrial property object means permission by the owner of such industrial property object for another organization or individual to use the industrial property object within the scope of the owner’s right.

2. Licensing of industrial property objects must be established in the form of a written contract (hereinafter referred to as industrial property object licence contract).

Article 142 Restrictions on licensing of industrial property objects

1. The right to use geographical indications or trade names shall not be licensable.

2. The right to use collective marks must not be licensed to organizations or individuals other than members of the owners of such collective marks.

3. The licensee must not enter into a sub-licence contract with a third party, unless it is so permitted by the licensor.

4. Mark licensees shall be obliged to indicate on goods and goods packages that such goods have been manufactured under mark licence contracts.

5. Invention licensees under exclusive contracts shall be obliged to use such inventions in the same manner as the invention owners according to the provisions of clause 1 of article 136 of this Law.

Article 143 Types of industrial property object licence contracts

Industrial property object licence contracts shall be of the following types:

1. Exclusive contract means a contract under which, within the licensing scope and term, the licensee shall have the exclusive right to use the licensed industrial property object while the licensor may neither enter into any industrial property object licence contract with any third party nor, without permission from the licensee, use such industrial property object.

2. Non-exclusive contract means a contract under which, within the licensing scope and term, the licensor shall still have the right to use the industrial property object and to enter into a non-exclusive industrial property object licence contract with others.

3. Industrial property object sub-licence contract means a contract under which the licensor is a licensee of the right to use such industrial property object pursuant to another contract.

Article 144 Contents of industrial property object licence contracts

1. An industrial property object licence contract must contain the following principal contents:

(a) Full names and addresses of the licensor and of the licensee;

(b) Grounds for licensing;

(c) Contract type;

(d) Licensing scope including limitations on use right and territorial limitations;

(đ) Contract term;

(e) Licensing price;

(g) Rights and obligations of the licensor and of the licensee.

2. An industrial property object licence contract must not have provisions which unreasonably restrict the right of the licensee, and in particular the following provisions which do not derive from the rights of the licensor:

(a) 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;

(b) Directly or indirectly restricting the licensee from exporting goods produced or services provided under the industrial property object licence contract to the territories where the licensor neither holds the respective industrial property right nor has the exclusive right to import such goods;

(c) 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;

(d) 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.

3. Any clauses in a contract falling into the cases stipulated in clause 2 of this article shall be automatically invalid.

SECTION 3
Compulsory Licensing of Inventions

Article 145 Grounds for compulsory licensing of inventions

1. In the following cases, the right to use an invention may be licensed to another organization or individual pursuant to a decision of the competent State body defined in clause 1 of article 147 of this Law without permission from the holder of the exclusive right to use such invention:

(a) Where the use of such invention is for public and non-commercial purposes or in service of national defence and security, disease prevention, and treatment and nutrition of people or other urgent needs of society;

(b) Where the holder of the exclusive right to use such invention fails to fulfil the obligations to use such invention stipulated in clause 1 of article 136 and clause 5 of article 142 of this Law upon the expiration of four years as from the date of filing the application for registration of the invention, or the expiration of three years as from the date of granting the invention patent;

(c) Where a person who wishes to use the invention fails to reach an agreement with the holder of the exclusive right to use such invention or on entry into an invention licence contract in spite of efforts made within a reasonable time for negotiating a satisfactory commercial price and conditions;

(d) Where the holder of the exclusive right to use such invention is deemed to have performed anti-competitive practices prohibited by the law on competition.

2. The holder of the exclusive right to use an invention may request termination of the use right when the grounds for licensing stipulated in clause 1 of this article no longer exist and are unlikely to recur, provided that such termination shall not be prejudicial to the licensee of the invention.

Article 146 Conditions limiting the right to use inventions compulsorily licensed pursuant to a decision

1. The right to use an invention licensed pursuant to a decision of a competent State body must comply with the following conditions:

(a) Such licensed use right is non-exclusive;

(b) Such licensed use right is only limited to a scope and duration sufficient to achieve the licensing objectives, and largely for the domestic market, except for the case stipulated in clause 1(d) of article 145 of this Law. For an invention in semi-conducting technology, licensing shall be only for public and non-commercial purposes or for dealing with anti-competitive practices prohibited by the law on competition;

(c) The licensee must neither assign nor sub-license such right to others, except where the assignment is effected together with the transfer of the licensee’s establishment;

(d) The licensee must pay the holder of the exclusive right to use the invention satisfactory compensation depending on the economic value of such use right in each specific case, and compliant with the compensation framework stipulated by the Government.

2. Apart from the conditions stipulated in clause 1 of this article, the right to use an invention licensed in any of the cases stipulated in clause 2 of article 137 of this Law must also satisfy the following conditions:

(a) The holder of the exclusive right to use the principal invention shall also be licensed to use dependent inventions on reasonable terms;

(b) The licensee of the right to use the principal invention must not assign such right, except where the assignment is effected together with all rights to the dependent inventions.

Article 147 Authority and procedures for compulsorily licensing of an invention pursuant to a decision

1. The Ministry of Science and Technology shall issue decisions on licensing of inventions based on a consideration of requests for licensing in the cases stipulated in sub-clauses (b), (c) and (d) of article 145.1 of this Law.

Ministries and ministerial equivalent bodies shall, after consulting the opinion of the Ministry of Science and Technology, issue decisions on licensing of inventions in domains under their respective management in the case stipulated in sub-clause (a) of article 145.1 of this Law.

2. Decisions on licensing of inventions must set out appropriate use scope and conditions according to the provisions of article 146 of this Law.

3. The State body competent to decide on licensing of an invention must promptly notify its decision to the holder of the exclusive right to use such invention.

4. A decision on licensing of an invention or on refusal to license an invention may be subject to a complaint or lawsuit in accordance with law.

5. The Government shall provide specific regulations on licensing of inventions pursuant to this article.

SECTION 4
Registration of Contracts for Transfer of Industrial Property Rights

Article 148 Validity of contracts for transfer of industrial property rights

1. For the industrial property rights established on the basis of registration according to the provisions of clause 3(a) of article 6 of this Law, an industrial property right assignment contract shall be valid upon its registration with the State administrative body for industrial property rights.

2. For the industrial property rights established on the basis of registration according to the provisions of clause 3(a) of article 6 of this Law, an industrial property object licence contract shall be valid as agreed upon by the parties involved but shall be legally effective as against a third party upon registration with the State administrative body for industrial property rights.

3. Validity of an industrial property object licence contract shall be automatically terminated upon the termination of the licensor’s industrial property rights.

Article 149 Application file for registration of a contract for transfer of industrial property rights

An application file for registration of an industrial property object licence contract or of an industrial property right assignment contract shall contain:

1. A declaration for registration, made according to the sample form.

2. The original or a valid copy of the contract.

3. The original of the protection title in the case of an industrial property right assignment.

4. The co-owners’ written consent, or a written explanation of the reason for disagreement of any co-owner with the right assignment where the industrial property right is under joint ownership.

5. Receipt for payment of fees and charges.

6. A power of attorney, if the application file is filed by a representative.

Article 150 Processing application files for registration of contracts for transfer of industrial property rights

The Government shall provide regulations on the order and procedures for receiving and processing application files for registration of industrial property object licence contracts and of industrial property right assignment contracts.

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