Patent is an essential piece of the amended Law on Intellectual Property (“Amended IP Law”), which was passed by the National Assembly of Vietnam on June 16, 2022, and will take effect on January 1, 2023 (except for the regulation on protection of experimental data for agrochemical products, which will take delayed effect on January 14, 2024). Among the amended and supplemented contents of the Amended IP Law, there are notable patent-related amendments to Article 60 on assessing the novelty of inventions and Article 96 on grounds for invalidating patent protection titles. We discuss these changes below. Secret Prior Art Under Article 60.1 A significant amendment to Clause 1, Article 60 of the Amended IP Law on the novelty of inventions is to broaden the scope under which an invention can be considered to have lost its novelty. For the first time in Vietnam, “secret prior art” –a patent application with an earlier filing date or priority date but published on or after the filing date or priority date of an examined patent application – is introduced as a prior art document. In the diagram above, at the time of filing of the A2 application, secret prior art A1 has been filed but not yet published, making it inaccessible to the public. At this point, only the A1 applicant and the IP Office are aware of the A1 application. Under the current provisions of the 2005 IP Law, as amended in 2009 and 2019, the A1 patent application is not eligible to be a prior art document when assessing the novelty of A2. However, based on the “first-to-file principle” and the principle of priority, the IP Office has still had other approaches to bar the patentability of an A2 patent application if there is such an A1 application. By

The recently approved comprehensive revisions to Vietnam’s Law on Intellectual Property (“Amended IP Law”) mark the most significant changes to Vietnam’s intellectual property regime since the last time the IP Law was revised more than a decade ago, in 2009, affecting 80 out of 222 articles and introducing 12 new ones. The National Assembly of Vietnam approved the Amended IP Law on June 16, 2022, and, except for a few provisions, it will take effect on January 1, 2023. Some notable points of the revised law regarding trademark matters include: 1. Protection of Sound Marks To fulfill Vietnam’s commitments as part of the CPTPP, the Amended IP Law adds sound marks to the list of signs eligible for protection as trademarks. However, to more easily examine these non-traditional marks, the law provides that sound marks must be able to be presented in graphical representations. Article 73.7 was also supplemented to include a ground for refusal of sound marks that comprise “copies [in whole or part] of copyrighted works, unless with consent from the copyright holders”. This provision is wide-reaching and may be used in many cases apart from those involving sound marks, and it is expected to better secure copyright in broad terms. 2. Definition of Well-Known Mark Article 4.20 modifies the definition of a well-known mark to mean one that is “widely known by the relevant sectors of the public in the territory of Vietnam” instead of the old general definition of “widely known by consumers throughout the territory of Vietnam”. This new definition is in line with international standards, and with this positive step, and the chances of trademark owners having their marks recognized as well-known marks in Vietnam should increase. The Amended IP Law also clarifies that well-known status must be acquired before the filing date

With the growth of technology and internet use, consumers are increasingly shifting toward online shopping. E-commerce platforms have created useful and practical online transactions for products across borders. The number of sellers on e-commerce platforms has also increased significantly in recent years. Naturally, the larger the supply of online products, the greater the risk of possible IP infringement online. While this has made shopping more accessible and convenient for many, it has also created significant opportunities for fraudulent sellers. These fraudulent sellers are often anonymous, and it can be hard to identify them or hold them to account. As a result, some intellectual property (IP) owners have tried to hold e-commerce platforms responsible, raising questions as to what legal liability e-commerce platforms have for content posted by users. In March 2022, the Central Intellectual Property and International Trade Court (IP&IT Court) issued a landmark judgment finding a world-leading e-commerce platform not liable for a third party’s alleged IP infringement on its platforms. Contributory infringement IP can be infringed directly by the person who sells or manufactures the infringing product, or indirectly by a party that encourages or contributes to the infringing act. At present, Thai IP law does not contain any clear provisions on contributory infringement by e-commerce platforms and, until recently, there were no clear court judgments on this issue. One recent development in this area in Thailand has been the adoption of the Copyright Act (No. 5) B.E. 2565 (2022), which will come into effect on August 23, 2022. This act provides that internet service providers will not be liable for copyright-infringing materials posted by users, provided they comply with certain legal requirements. However, there are currently no equivalent provisions relating to patents, trademarks, or other types of IP rights. The closest applicable legislation is Section 432

Thailand’s Department of Special Investigation (DSI) has recently changed the criteria for accepting cases under their jurisdiction, which greatly benefits intellectual property (IP) owners who wish to bring legal action before the DSI. Issued on June 9, 2022, and taking effect the following day, the Notification of the Board of Special Cases (No. 8) B.E. 2565 (2022) lowered the minimum threshold for the market value of IP-infringing goods from THB 10 million (approx. USD 242,400) to THB 5 million (approx. USD 121,200). DSI Jurisdiction The Special Case Investigation Act B.E. 2547 (2004) (as amended) and subsequent regulations lay out the DSI’s jurisdiction over “special cases,” giving DSI officers the authority to handle certain trademark, copyright, and patent infringement cases (among others). In order for the DSI to get involved, the alleged offender must be involved in, or suspected of involvement in, the manufacturing or purchasing of the items in question, or in relevant distribution facilities, warehouses, or importing businesses. Another condition for the DSI having jurisdiction is that the total market value of the articles or products possessed for use in the offense, acquired from the offense, or the possession of which is an offense, must exceed the minimum threshold specified in regulations. This minimum market value has now been lowered from THB 10 million to THB 5 million. The damages that can be reasonably expected from the commission of an offense have also been lowered from THB 10 million to THB 5 million. Impact of the New Criteria on IP Owners The DSI has substantial experience handling complex IP-infringement cases, and they have been especially active in fighting online infringement over the past several years. The lowering of the minimum benchmark to file a case from THB 10 million to THB 5 million means that more IP owners