The protection of industrial property objects and the “first to file” approach in Vietnam

Businesses must often upgrade and implement new techniques of manufacturing, sales, and product marketing in the global business environment and more crowded marketplaces to preserve and strengthen their competitiveness in the worldwide market. Concurrent to corporate entities’ innovation and creativity, the legal system of intellectual property rights (IP) has developed a set of mechanisms to give owners with management options for protecting their invention, knowledge, and creativity. IP rights encourage businesses to differentiate their goods from those of rivals and to maintain equitable exclusivity, lowering the risks and uncertainties associated with bringing new or better items to market.

However, we still often see scenarios when ideas are mistakenly copied or confused and both are sent to the registrant. The legislation, however, only protects intellectual property rights for a single owner who is the first to file a registration application under the “first to file” (filing priority) provision.

The rule “first to file” in Vietnam

The “priority principle” of the 1883 Paris Convention on the Protection of Industrial Property Rights, of which Vietnam is a signatory, influenced the “first to file” principle in Vietnamese intellectual property law. This is one of the two filing concepts utilized by practically every country in the globe when registering for intellectual property object protection: “first to file” and “first to use.” 

When multiple application owners file identical or indistinguishable patents, industrial designs, or trademarks for the same group of identical or similar products or services, the approved application for protection is the application with the priority date or the first filing date, according to the first to file principle underlined in Article 90 of the Intellectual Property Law. When many applications from different applicants are filed with the same topic and priority date or first filing date, the protective title is only granted to one of the applicants. If the applicants are unable to come to an agreement, all of the subject’s petitions will be rejected protection.

In addition to the first to file, the industrial design and trademark applicant wants to extend the scope of protection to other jurisdictions. They might use the priority principle to enhance the protection of their IP assets. When at least two applications to protect the same invention, industrial design, or trademark are filed jointly and the applicant has claimed the priority right and paid the fee to receive the priority right, this principle will be applied.

Article 4 of the Paris Convention on Industrial Property preserves the priority principle, which is also established in Article 91 of Vietnam’s Law on Intellectual Property (particularly regulated in Article 10 of Decree 103/2006 / ND-CP). Nevertheless, the right to claim priority for the object of the first application in Vietnam or in countries that are members of the Paris Convention on industrial property, PCT Convention on invention protection only applies for a limited period of time, specifically for an invention, the priority period is 12 months from the date of the first application, and or an industrial design and mark, the priority period is 6 months from the first filing date.

When it comes to the link between the first-to-file principle and the priority rule, many people believe the priority rule is an exception to the first-to-file principle. The first to file and the priority principle, in the author’s perspective, are two distinct but complimentary concepts that aid the applicant in preserving their intellectual property rights in another jurisdiction. Priority rule refers to an applicant’s entitlement to have the first legitimate application submitted in a jurisdiction that is a signatory to a treaty that includes a priority rule agreement.

An application filed in another Member State to protect an invention, industrial design, or trademark, and the second application is presumed filed on the same day as the initial application within a certain time frame. The priority date is the date on which the first application is filed, whereas the first filing rule specifies the date on which the first application is filed. As a result, the priority rule does not apply to the first-to-file rule.

We can see from the foregoing analysis that the first – to – file concept is the most fundamental and crucial legal principle for protecting the country’s industrial property. If the applicant seeks to be awarded a protective title, this regulation prohibits them from delaying their application. As a result, “first to file” is seen as an effective tool for promoting the protection of IP assets. The idea of first to file also aids in raising awareness among industrial property object owners in order to better protect their rights.