Regulations on transfer of industrial property rights

Transfer of industrial property rights is the transfer of ownership rights by the owner of industrial property rights to another organization or individual. This has a great impact on the intellectual property rights of organizations and individuals. For the transfer process to take place legally and effectively, it is necessary to clearly understand the regulations, conditions, procedures, and related notes. In the following article, Long Phan will provide customers with regulations on transferring industrial property rights.

Regulations on industrial property rights

Industrial property rights are the rights of organizations and individuals to industrial property objects that they create or own, including inventions, industrial designs, and layout designs of semiconductor integrated circuits, trademarks, trade names, geographical indications and trade secrets.

In addition, industrial property rights also include the right to protect against unfair competition, helping to ensure the owner’s legal rights to the intellectual property they create.

The owner of these rights has the right to exploit benefits from objects that have been granted a Certificate of Industrial Property Rights, thereby being able to transfer ownership rights to other organizations and individuals.

CSPL: Clause 4, Article 4 of the Law on Intellectual Property 2005, amended and supplemented in 2022.

Conditions restricting the transfer of industrial property rights

Although the transfer of industrial property rights is allowed, according to Article 139 of the Law on Intellectual Property, there are still some restrictive conditions. These conditions include:

• The right owner can only transfer within the scope of protection of industrial property rights.
• Rights to geographical indications are not transferable.
• Trade name rights can only be transferred upon transfer of the entire business establishment.
• The transfer of trademark rights does not cause confusion about the characteristics or origin of goods or services.
• Rights to inventions and industrial designs can only be transferred to organizations and individuals with sufficient legal conditions in Vietnam.

Procedures for the transfer of industrial property rights

Documents need to be prepared

Records of transfer of industrial property rights include:

1. Declaration for registration of industrial property transfer contract according to Model number 01 in Appendix IV of the Decree.
2. Transfer contract (original or certified copy), with Vietnamese translation if the contract is in another language, and a confirmation signature or stamp on each page if the contract has many pages.
3. Original certificate of protection (if issued in paper form).
4. Written consent of co-owners if industrial property rights are jointly owned.
5. Authorization document if application is submitted through a representative.
6. Copy of fee and fee payment voucher if fees are paid via postal service or directly to the account of the state management agency on industrial property.
7. For collective marks and certification marks, it is necessary to supplement:

• Regulations on the use of collective marks/certifications of the transferee.
• Documents proving the transferee’s right to file an application according to the provisions of Article 87 of the Law on Intellectual Property.

CSPL: Clause 1, Article 58, Decree 65/2023/ND-CP.

Execution order

Step 1: Submit application

After fully preparing the documents, customers submit the documents to the Intellectual Property Department.

Step 2: Process documents

If the profile is valid:

• Issue a decision to record the transfer of industrial property rights (for transfer contracts) and issue a Certificate of registration of a contract for transfer of rights to use industrial property objects (for contracts to transfer use rights).
• Record industrial property rights in protection documents for transfer contracts; Issue a Trademark Certificate to the transferee when there is a transfer of a list of goods and services.
• Announce the decision in the Industrial Property Official Gazette within 02 months from the date of decision.

If the documents are incomplete or incorrect:

• Issue a notice of intention to refuse registration and request the applicant to make corrections within 02 months.
• Make a decision to refuse registration if errors are not corrected or are not reasonable within the required time limit.

Notes when transferring industrial property rights

When transferring industrial property rights, the transferring parties need to pay attention to the following issues:

• Check the legal ownership of the transferor.
• The transfer contract must be made in writing and ensure all necessary provisions.
• Attention must be paid to the conditions restricting the transfer of industrial property rights.
• It is necessary to ensure that the contract has all the signatures of the parties and has accurate information about the names and addresses of the parties.
• The transfer contract must be signed in writing and implemented in accordance with the provisions of law.
• The parties in the contract need to clearly agree on the transfer value, rights and obligations of the parties.
• The contract must be registered at the National Office of Intellectual Property to have legal effect.

Guidance on drafting and consulting on transfer of industrial property rights

To ensure that industrial property transfer contracts fully meet the provisions of law, customers can consult consulting services from experts. Our services include:

• Consulting on regulations on industrial property rights, transfer of ownership rights, and rights to use industrial property objects.
• Instructions for drafting industrial property transfer contracts.
• Consulting on procedures for transferring industrial property rights according to regulations.
• Representing customers to submit and monitor application processing progress.
• Advice on how to resolve when a dispute occurs.

Transfer of industrial property rights is an important process, requiring full compliance with the provisions of the Law on Intellectual Property. Customers need to clearly understand the conditions, procedures and contract content to ensure their legal rights. If you need detailed advice, please contact us via the hotline 0906735386 for quick and professional support.