Pursuant to Article 131, Law on Intellectual Property of Vietnam, provisional rights to inventions, industrial designs and layout designs are provided as follows:
- Where an applicant for registration of an invention or industrial design knows that such invention or industrial design is being used by another person for commercial purposes without prior use right, the applicant may notify in writing the user of the filing of the latter’s application, clearly specifying the filing date and the date of publication of the application in the Official Gazette of Industrial Property so that the user may either terminate or continue such use.
- For a layout design which has, before the grant date of the certificate of registered design of semi-conducting closed circuits, been commercially exploited by the person with the registration right or his or her licensee, if such person knows that such layout design is being used by another person for commercial purposes, then he or she may notify in writing the user of his or her registration right so that the user may either terminate or continue such use.
- Where the person notified of contents stipulated in clauses 1 and 2 of this article continues using such invention, industrial design or layout design, then as soon as an invention patent, utility solution patent, industrial design patent or certificate of registered design of semi-conducting closed circuits is granted, the owner of the object shall have the right to request the user to pay compensation equivalent to the price for licensing of such invention, industrial design or layout design within the corresponding scope and duration of use.
Based on the above regulation, the pre-patent issuance damages are allowed from the date of patent application publication provided the followings:
(i) The infringer has no prior use right.
(ii) The infringer has received a Notice of publication from Owner(s) of patent application(s) but still using the invention. This Notice should indicate filing date and date of publication. There are no guides, however, concerning determination of receiving such Notices (if any) from the infringer so far. Therefore, the best way of infringer’s notification is to send these Notices via registered mails and via media.
(iii) Claims of publication are similar to infringed claims. There is just a newly established IP Assessment Office in Ministry of Science and Technology having rights for assessment and give conclusion on similarity between sets of claims.
(iv) Claimed patent application(s) be granted later on.
In particular, if the infringer received a Notice of the publication from Owner(s)but still using the invention then upon granting Patent(s) for invention/design the Patent Owner(s) has/have the rights to request to pay compensation equivalent to the royalties for licensing such invention, industrial design or layout-design within the relevant extent and period of use.