7.1 General
Under the current rules, the license of an IP object shall be subject to certain conditions. As a pre-requisite, to license an IP object in Vietnam, such object must be already protected in Vietnam, i.e. it has been granted patents or certificates of registration. Those IP objects not yet registered in Vietnam can not be licensed.
The scope of assignment/license can not be broader than that of protection granted under the respective patent or certificate. For example, for trademarks, the assignor can only assign the rights conferred by the certificate of registration, i.e. assignment is only possible for the trademark, exact goods and/or services claimed under the registration valid at the time of assignment.
The assignor or licensor must guarantee that he or she is the registered owner of the assigned/licensed object and that the assignment/license must not result in dispute with a third party. If dispute arises from the assignment/license of an IP object, the assignor/licensor shall be responsible for settlement.
Particularly, for geographical indication, it should be noted that the rights to geographical indication may not be assigned or licensed. In addition, the assignment/license of a trademark must not cause confusion in terms of properties or origin of goods and/or services bearing the trademark.
7.2 Assignment and License Agreements
Assignment or license agreements of IP objects must be made in writing, and contain minimum statutory provisions applicable to each kind. Oral agreements, letters or telegrams shall not be accepted and have no legal effect. If the assignment or license of an IP objects is included in another agreement (such as technology transfer contract, service contract, etc.), it must be made in a part separate from the other parts.
The assignment or license agreement must include the followings:
(i) The identity of the parties (assignor and assignee, or licensor and licensee)
(ii) The basis of the assignment/license (i.e. patent or certificate of registration granted and, in case of license, the exclusive license already granted to the licensor);
(iii) The IP object(s) to be assigned, or in case of license, the scope of license granted including: kind of license (exclusive or non-exclusive), the IP object(s) to be licensed, license territory, license term (within the balance of protection term granted by the respective patent or certificate of registration);
(iv) Assignment price or license royalty (it must be stated if the assignment/license is granted free of charge);
(v) The rights and obligations of the parties as stipulated;
(vi) Conditions for amendment, termination or invalidation of the agreement;
(vii) Dispute settlement;
(viii)Signatory date and place;
(ix) The signatures of the parties.
The current licensing rules mandate that the license agreement must not contain the following provisions which are considered as unreasonably restricting the rights of the licensee:
(i) Provisions directly or indirectly restricting the export of products manufactured under the license to other markets/territories except those where the licensor is the owner of the corresponding IP rights or holds the exclusive right over the importation of the corresponding IP object;
(ii) Provisions compelling the licensee to purchase the whole or part of materials, components or equipment from the licensor or from sources appointed by the licensor, without aiming to ensure the quality of the licensed products;
(iii) Provisions forbidding the licensee to improve the IP objects (except for trademarks), or compelling the licensee to transfer free of charge to the licensor the improvements made by the licensee or the right to apply for IP protection over such improvements; and
(iv) Provisions forbidding the licensee to appeal against the validity of the licensed IP object or the right to grant license of the licensor.
(i) The identity of the parties (assignor and assignee, or licensor and licensee)
(ii) The basis of the assignment/license (i.e. patent or certificate of registration granted and, in case of license, the exclusive license already granted to the licensor);
(iii) The IP object(s) to be assigned, or in case of license, the scope of license granted including: kind of license (exclusive or non-exclusive), the IP object(s) to be licensed, license territory, license term (within the balance of protection term granted by the respective patent or certificate of registration);
(iv) Assignment price or license royalty (it must be stated if the assignment/license is granted free of charge);
(v) The rights and obligations of the parties as stipulated;
(vi) Conditions for amendment, termination or invalidation of the agreement;
(vii) Dispute settlement;
(viii)Signatory date and place;
(ix) The signatures of the parties.
The current licensing rules mandate that the license agreement must not contain the following provisions which are considered as unreasonably restricting the rights of the licensee:
(i) Provisions directly or indirectly restricting the export of products manufactured under the license to other markets/territories except those where the licensor is the owner of the corresponding IP rights or holds the exclusive right over the importation of the corresponding IP object;
(ii) Provisions compelling the licensee to purchase the whole or part of materials, components or equipment from the licensor or from sources appointed by the licensor, without aiming to ensure the quality of the licensed products;
(iii) Provisions forbidding the licensee to improve the IP objects (except for trademarks), or compelling the licensee to transfer free of charge to the licensor the improvements made by the licensee or the right to apply for IP protection over such improvements; and
(iv) Provisions forbidding the licensee to appeal against the validity of the licensed IP object or the right to grant license of the licensor.
7.3 Registration of Assignment/License Agreements
The registration with the NOIP is compulsory for all assignment agreements to make them legally effective and enforceable in Vietnam. The agreements take legal effect upon their registration with the NOIP.
Regarding the registration of license agreements, Vietnamese laws currently provide quite controversial provision. Accordingly, license agreeements take effects as so agreed by the parties, however, to be effective against any third parties, such license agreements should be registered with the NOIP. Since there is no explanation from the authorities regarding the term “third parties” to date, the registration of license agreements is strongly recommended to ensure the smooth implementation and enforcement of license agreements.
For registration of the assignment/licenseagreement, the NOIP is the receiving office which in fact will consider the agreement for registration .
Regarding documents required to be to the NOIP for registration of assignment/license agreements, please see Filing Requirements in Vietnam.
The NOIP will examine the application file and issue a decision on registration of the agreement or refuse registration, within 2 months from the date of receipt.
7.4 Royalties and Taxation
The royalties or price for assignment of IP objects will be agreed upon between the parties.
The assignment/license of IP objects in Vietnam shall be subject to the enterprise income tax of 10 percent of the royalties paid, according to Circular No. 05/2005/TT-BTC guiding the tax regime applicable to foreign organizations without Vietnamese legal person status and foreign individuals doing business or earning incomes in Vietnam