All material subject to strictly enforced copyright laws. © 2022 Managing IP is part of the Euromoney Institutional Investor PLC group.

Vietnam: Patent infringers cannot use cancellation requests as a delay tactic

Sponsored by tillekegibbins.png
CANCEL

While Vietnam, like the rest of the world, has been focusing on fighting the COVID-19 pandemic, the Vietnamese courts have quietly recorded new milestones in the judgment of patent cases. One of those milestones came on March 12 2020, in a decision on appeal settlement issued by the Superior People's Court of Ho Chi Minh City against a provincial court's decision on suspension of a patent case.

A simple case

The circumstances of the case resulting in the Superior Court's decision were relatively simple. The plaintiff, a US-based multinational drug company, holds a compound patent in the pharmaceutical field. The defendant manufactured medicinal products containing such compound. After sending a warning letter and receiving no cooperation, the plaintiff initiated a lawsuit against the defendant at the People's Court of Ben Tre Province in the Mekong Delta, where the defendant is headquartered. The defendant immediately filed a request at the Intellectual Property Office of Vietnam (the country's patent-issuing agency) for cancellation of the patent in question, and requested the court to suspend the trial of the case until the IP Office issued a decision on the cancellation.

The defendant's filing of a cancellation request, and using it as grounds to ask the court to suspend the infringement case, is a tactic that has been widely used in patent disputes in Vietnam in recent years. It is not difficult to see that the practical purpose of this tactic is simply to extend the trial period of the case, making the case "clinically dead" when the proceedings are frozen indefinitely. This is because the process for resolving a request for cancellation depends entirely on the IP Office, which is not subject to any time constraints in correlation with the case accepted by the court. Meanwhile, the defendant can continue to manufacture and profit from patent-infringing products. In a number of cases, the process of resolving the cancellation request ends right at the time the patent expires, so when the judgment is announced, it is greatly reduced in meaning.

Dissatisfied with this situation, the plaintiff, as soon as the People's Court of Ben Tre Province decided to suspend the case on November 4 2019, appealed the decision to the higher court in Ho Chi Minh City, requesting the Ben Tre Court to continue hearing the case, independent of the resolution process at the IP Office. It should be noted that only the issuing agency (the IP Office) is authorised to consider canceling a patent in Vietnam, not the court.

The important legal question

Does the lower court have the right (or obligation) to decide to suspend a case until the matter of the patent's validity has been resolved? The legal consequences relating to the answer to this question are clear.

If the answer is yes, it will create a situation where every time the validity of a patent is considered in a lawsuit, the trial process will no longer be in the hands of the court, but in the hands of the IP Office instead. As a result, the patent infringement lawsuit will be divided into two cases – the case relating to the patent's validity, to be resolved first, and the case of patent infringement, to be resolved later.

If the answer is no, the court will have the independent right to try the case, as inherently required by law, without waiting for the IP Office's resolution of the patent validity issue.

A reasonable resolution

In the end, the Superior Court issued a response that was like a knot being untied for the plaintiff and other rights holders. According to the Superior Court, the court initially has the right to issue a decision on suspension of a case in order to check with the IP Office about the authenticity of the process of considering the patent's validity. However, after receiving the IP Office's response, even if that response is purely a status update or a confirmation that a request for cancellation has been filed, the court may not continue the suspension on the grounds that the validity issue itself remains unresolved. As such, the court has to resume the process and the case will continue to be tried as usual.

Immediately after the decision issued by the Superior Court, the case was transferred to the lower court and the lower court had to make a decision to continue the trial of the case.

It is hoped by practitioners that the positive effect of this decision issued by the Superior People's Court in Ho Chi Minh City will spread to many other provincial and city courts in similar cases.

Le Xuan Loc

More from across our site

The US Supreme Court rejected an appeal on American Axle, dashing hopes of a judicial fix to patent eligibility uncertainty
The Copyright Office refused to grant protection on the basis that the authorship couldn’t be distinguished from the final work produced by the program
COVID vaccines top Clarivate’s new brands list; Fed Circuit reverses Coca-Cola’s TTAB win; Skechers sues Brooks; USPTO to retire Public PAIR tool; CCB sees cricket complaint
Lawyers should pay attention to APJs’ questions and remember that PTAB proceedings aren’t jury trials, say former PTAB judges
The USPTO cancelled ‘Galavava’ and 'Surfstar Wake' and partly cancelled ‘Heika’ this month
We have published all the 2022 rankings of the leading firms for patent litigation and protection work
In-house and private practice counsel say UK judges have raised the bar for preliminary injunction requests
António Campinos will serve another five years as EPO president – perhaps he’ll calm unrest at the office in that time
LGBTQ IP lawyers say using rainbow colours and posting solidarity messages on social media must be followed by concrete action
Brand owners bemoan counterfeiters’ latest wheeze and say enforcement authorities should get more involved
We use cookies to provide a personalized site experience.
By continuing to use & browse the site you agree to our Privacy Policy.
I agree