Vietnam’s amended IP law changes requirements for IP agents
Linh Thi Mai Nguyen of Tilleke & Gibbins explains why an increase in trademark agents and intellectual property representation service organisations can be expected because of new legislation in Vietnam
Vietnam’s Law on Intellectual Property was comprehensively amended in 2022 (the 2022 IP Law), and the amended law came into effect (with the exception of a few provisions) on January 1 2023. Along with amendments of substantive matters, the revised version also touches upon the requirements for providing IP representation (agent) services, at the organisational and individual level.
Requirements for organisations
Article 154 of the previous IP Law provided the following conditions for organisations to act as IP representation service organisations:
The organisation is a lawfully established and operating law-practising enterprise, cooperative or organisation, or a scientific and technological service organisation, except for foreign law-practising organisations operating in Vietnam;
The organisation has the function of providing IP representation services stated in its business registration certificate or operation registration certificate; and
The head(s) of the organisation or a person, or persons, authorised by the head(s) of the organisation has a certificate for practising IP representation services.
While the first requirement remains unchanged, the 2022 IP Law has removed the second requirement, and revised the third requirement to be more relaxed.
Specifically, the amended provision only requires that there must be at least one individual holding a certificate for practising IP representation services in each IP representation service organisation. Regarding the second requirement, while it is no longer stated in the IP law, this does not mean that any organisation can practise IP representation services, because this is a conditional business line and only organisations that meet the conditions for providing such services, provided in other legislation, can do business in this field.
Requirements for individuals
At the individual level, the law both tightens and loosens the requirements. Under the former law, to be granted a certificate for practising IP representation services, the individual must:
(i) Be a Vietnamese citizen with full capacity for civil acts;
(ii) Reside permanently in Vietnam;
(iii) Have a university degree;
(iv) Have directly worked in the field of IP law or conducted examinations for IP applications at national or international IP offices for at least five years, or have completed a training course on IP law recognised by a state authority;
(v) Not be a civil servant or employee working in a state authority in relation to the establishment and enforcement of IP rights; and
(vi) Have passed an IP agent examination organised by a relevant authority.
Among the conditions above, the last is the most challenging. It is widely known that it is extremely difficult to pass an IP agent examination in Vietnam, as the pass rate in recent years has typically been lower than 10%. Because of that, through the end of 2022, only 349 individuals had been granted certificates for practising IP representation services (IP agents), and 294 organisations had been permitted to act as IP representation service organisations in Vietnam.
The 2022 IP Law divides IP representation services for individuals into two categories:
For inventions, industrial designs or layout designs (patent agents); and
For trademarks, geographical indications, trade names, anti-unfair competition and trade secrets (trademark agents).
The requirements for each category are different.
To become a patent agent, the 2022 IP Law requires that the individual must have a bachelor’s or equivalent degree in natural sciences or engineering (while under the former law, any bachelor’s degree would suffice). The other conditions mentioned above remain unchanged for patent agents. As such, generally, the conditions to become a patent agent have become more stringent.
The 2022 IP Law maintains the same six conditions for trademark agents as in the old law. However, it has opened another way to become a trademark agent by creating a new set of conditions especially for lawyers. Accordingly, any qualified lawyer who is residing in Vietnam and has completed a training course on IP law recognised by a state authority could become a trademark agent.
This makes it easier for a lawyer to become a trademark agent, as they no longer need to fulfil conditions (iv) and (v). More importantly, condition (vi) – passing an IP agent examination, which is the most difficult condition, as mentioned above – has been replaced by a much simpler condition, which is simply to complete a training course on IP law.
Likely impact of the changes
When viewing the changes in the requirements for practising IP representation services at the organisational level and the individual level, it is clear that local law firms will benefit the most from the changes. As the law no longer requires the IP agent (or patent/trademark agent) to be the head, or authorised by the head, of the firm, it will be very easy for a law firm to appoint any of its lawyers to attend a course on IP law (which can often be completed in six months and costs less than $1,000), and then that lawyer will become a trademark agent, and that law firm will become an IP representation service organisation.
Taking into account that there are more than 16,000 lawyers and 6,000 law firms in Vietnam, it is expected that the number of trademark agents and IP representation service organisations will be on the rise in the years to come.