On November 14, 2016, the Ministry of Finance promulgated Circular No. 263/2016/TT- BTC (“Circular 263”) providing for the collection rates, regime of collection, payment, management and use of industrial property fees and charges. Circular 263 has come into full force and effect since January 01, 2017 and replaced the former Circular No. 22/2009/TT-BTC (“Circular 22”) issued on February 04, 2009.
Persons subject to application of Circular 263
Circular 263 is applicable to (i) organizations and individuals who apply for protection of industrial property rights; (ii) state management agencies in charge of industrial property right protection; (iii) other organizations and individuals involved in the collection and transfer of industrial property fees and charges.
Accordingly, since January 01, 2017, Vietnamese and foreign organizations and individuals shall, upon applying for protection of industrial property rights, pay the relevant fees and charges in accordance with the schedule of industrial property fees and charges issued under this Circular.
Main changes in regime of management and use of industrial property fees and charges
Circular 263 introduces a major adjustment in the regime of management and use of fees and charges in comparison with Circular 22. Specifically, fees’ collectors shall transfer the whole amount of collected charges and 15% of the whole amount of collected fees to the State budget. The remaining 85% of the whole amount of collected fees is retained by the fees’ collector in order to pay the costs for performing works and services with regard to industrial property rights; whereas under Circular 22, 65% of the whole amount of collected fees and charges is transferred to the State budget and the remaining 35% retained by the fees collector. Accordingly, in the schedule of industrial property fees and charges issued under Circular 263, the regime of collecting industrial property fees and charges is considerably adjusted. In general, there is a decrease in charges but increase in fees (in terms of both lists of collection items and rates).
Changes which require attention when implementing Circular 263:
– National Office of Intellectual Property of Vietnam (“NOIP”) will proceed to publish the entire patent specification instead of the abstract and representative figures as before. Accordingly, fees for publication of patent application and granted patent will be escalated, specifically, an additional amount of VND 10,000* for publication of each additional page in excess of 6 is charged. Such fee is collected at both stages of filing and granting. However, at present, NOIP has not yet collected this fee and will issue a detailed notification later.
– Collection of formality examination fee for patent applications which equals to 20% of total application examination fee is applied. Such fee for formality examination must be paid upon filing.
– No fee is collected upon filing of the first appeal. NOIP will issue a notification of acceptance to handle the appeal in which amounts of payable fees is listed.
– Instead of a single charge for maintenance/renewal of titles as stipulated in Circular 22, according to new Circular 263, NOIP will split it into 3 kinds of fees and charges: charges for validity maintenance/renewal, fees for examination of maintenance/ renewal requests, and fees for use of titles, resulting in remarkable increase of costs compared with the previous ones. For example, renewal fee associated with trademark certificate for the first class of goods/ services, industrial design patent for the first embodiment, and 2nd annuity fee of patent for the first independent claim would jump from VND 780,000* to VND 1,200,000* and VND 300,000* to VND 800,000* respectively.
– Fees for late national entry or late request for substantive examination are not collected any more.
– Some fees previously specified in Circular 22 (such as fees for accelerated examination, request for decision on compulsory transfer, verification, request for providing information, issuing kinds of copies, duplicates, re-issues, industrial property documents, sending international application, certification of priority right, etc.) but not mentioned in the New Circular 263 will be changed to service payment policy.
– No paid fees and charges are refundable.
* Current VND/USD exchange rate: VND20,000/1USD