Industrial Design Filing and Prosecution

Industrial Design Registration

Under Article 4.13 of the IP Law of Vietnam, industrial design means the outward appearance of a product embodied in three dimensional configurations, lines, colours or a combination of such elements. It is focused on protecting the visual features of an article, namely its design, shape, pattern or ornament. For example, an industrial design could protect an original design or shape of shoes. In contrast, a change in the functionality of an article or in the materials used to manufacture an article are not aspects which are eligible for industrial design protection. An industrial design registration may be one of the most valuable asset for business owners. The success of a product is usually influenced by its appearance. A product with nice designs attracts more consumers nowadays, not only in Vietnam, but also other in other countries worldwide.

Under Section 64 of the 2005 IP Law as revised 2009, the following subject matters are excluded from protection as industrial designs:

  1. Outward appearance of a product which is necessarily due to the technical features of the product.
  2. Outward appearance of civil or industrial construction works.
  3. Shape of a product which is invisible during the use of the product.

A Design Patent may be granted if that applied-for Industrial Design fully satisfies with such criteria as (1) it is novel, (2) creative nature, and (3) capable of industrial application.

An industrial design registration in Vietnam provide the owner exclusive rights to the commercial production, marketing and sale of your product for a maximum period of 15 years (A registered industrial design is given an initial protection period of 5 years from the date of filing and is extended for two further consecutive terms of 5 years each. The maximum protection period is 15 years). Under Article 93.4 of the IP Law of Vietnam, an industrial design patent shall be valid from the grant date until the end of five (5) years after the filing date and may be renewed for two consecutive terms, each of five (5) years.

For industrial design filing, the following documents must be provided:

  1. Full name, address and nationality of the Applicant;
  2. Full name, address and nationality of the Inventor;
  3. Title of the claimed design;
  4. Class of the claimed design according to the Locarno International Classification (if available);
  5. Priority data, including filing number, date and country (if applicable).
  6. Photos/drawings illustrating the design in different views (front, rear, left, right, top, bottom and perspective) and other supporting views such as cross-sectional or partly enlarged views (if available);
  7. English description of the claimed design;
  8. Power of Attorney (no notarization is required).
  9. Certified copy of priority documents (as to applications claiming priority under the Paris Convention).

Please note that (i) Original document (Certified priority document) is required within 03 months from filing date, and (ii) Original document (Signed Power of Attorney) is required within 01 month from filing date.

As Vietnam is a signatory to the Paris Convention, Vietnamese applicants are entitled to a six-month convention priority period to file a corresponding industrial design application in other jurisdictions. What that means in practice is that, when you file in other countries within six months of your original filing date, the filing date of that application will be deemed to be the same as your filing date in Vietnam, putting you ahead of similar applications from others in that jurisdiction who may have filed in the intervening period.

Industrial Design Examination Procedure 

In smooth cases, it would normally take about 10 months computed from the filing date for an industrial design to be granted a Design Patent.

  • Formality Examination: to examine the formality of the application (international classification of design, description, requirements for sets of photos or drawing, etc.) within one (1) month from filing date of the application;
  • Application Publication: to publish, for the purpose of possible opposition by a third party, the details of the application on the IP Gazette of Vietnam within two (2) months computed from the date of decision on acceptance of the application;
  • Substantive Examination: to examine novelty, inventive step and industrial applicability of the design within seven (7) months computed from the publication date of the application.
  • Granting Design Patent: to pay the granting fees within three (3) months from the date of notice on intention to grant Design Patent issued by the IP Vietnam.

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