Assignment of a patent application is essentially the change of the application owner on the application already filed at the IP Vietnam.  Transferring patent or petty patent rights can be a strategic move for patent owners in Vietnam. Whether through agreements, inheritance, or gifting, the ability to assign these rights opens up opportunities for collaboration, monetization, or estate planning. This article provides an overview of patent assignment in Vietnam, highlighting the key steps and considerations involved. With the support of KENFOX, a leading intellectual property firm, patent owners can navigate the assignment process smoothly and ensure the legal and effective transfer of patent rights.

Understanding patent assignment in Vietnam

Patent owners in Vietnam have the option to transfer their rights, either partially or wholly, to individuals, legal entities, or organizations. This transfer can occur through formal agreements, inheritance, or gifting arrangements. When a patent or petty patent right is assigned, both the assignor (original owner) and the assignee (new owner) must file a request for recordal of the patent/petty patent assignment with the Intellectual Property Office of Vietnam (IP Vietnam). If the assignee is the party notifying the assignment, they must provide the necessary documents to the assignor.

Publication of information

As part of the recordal process, certain information related to the right transfer must be published in the Official Gazette for the registration of industrial property. This information typically includes the name and address of the assignee, the certificate of transfer number, the application number for the patent or petty patent, and the date of the assignment. This publication ensures transparency and establishes a clear record of the assignment for future reference.

Transfer of ownership for legal entities or organizations

If there is a transfer of ownership of a patent or petty patent associated with a legal entity or organization, specific requirements outlined in the transfer document must be followed. In the absence of explicit provisions, the transfer is considered a total transfer of the rights associated with the patent or petty patent for that legal entity or organization. It is important to ensure compliance with the transfer document's requirements to facilitate a smooth and legally valid transfer of ownership.

Additional information and document requests

The IP VIETNAM may request additional information or documents if there is a need for clarification or doubt regarding the assignment. Patent owners or assignees should be prepared to provide any requested information promptly to facilitate the recordal process and ensure the assignment's legal validity.

Notification and registration for legal effect

An assignment will only take effect against the parties involved once the assignment is duly notified, and the transfer of rights is registered with the IP VIETNAM. It is crucial to notify the transfer and complete the registration process to establish the legal validity and enforceability of the assignment.

Procedure for recordal of the assignment

For recordal of the assignment for a patent application, you are required to provide us with the following documents:

• One original signed Power of Attorney (notarization or legalization is not required);
• One original signed Deed of Assignment (notarization or legalization is not required);

It takes about 3-5 months for completing the assignment for a patent application.

For recordal of the assignment for a patent, you are required to provide us with the following documents:

• One original signed Power of Attorney (PoA, notarization or legalization is not required) in the name of the owner/applicant (Assignor or Assignee).
• Two original Assignment Agreements (notarization or legalization is not required);
• Original Vietnamese Patent Registration Certificates to be assigned under the Assignment Agreement.

Please note that if the Assignor is required to proceed with the assignment as stipulated in the Assignment Agreement, then the Assignor must sign the PoA. Otherwise, the Assignee will sign the PoA. The Assignor and assignee are required to sign each page of the Assignment Agreement.

It would normally take 04-05 months for completing recordal of a Patent Assignment Agreement.

Assigning patent rights in Vietnam requires careful attention to legal procedures and compliance with the IP VIETNAM's requirements. KENFOX, a trusted intellectual property firm, offers comprehensive support throughout the patent assignment process. Our team of experienced patent attorneys ensures that all necessary steps are followed, from preparing the assignment documents to facilitating the recordal process with the IP VIETNAM. With our expertise and guidance, patent owners can navigate the complexities of patent assignment and achieve a successful and legally recognized transfer of patent rights in Vietnam.

Consult with KENFOX today to unlock the value of patent assignment and leverage your intellectual property assets to their fullest potential in the dynamic market of Vietnam.