Protection of new varieties of plants under the Intellectual Property Law in Vietnam
February 9, 2009-
Traditionally an agricultural country, Vietnam has got acquainted with issues relating to new plant variety protection since very recently. Although protection of intellectual property rights is garanteed by the Civil Code since 1995, the protection of new varieties of plants has been introduced for the first time much later in some under-law legal documents, namely Government Decree No. 13/2001/ND-CP dated April 20, 2001 on protection of new varieties of plants and Circular No. 119/2001/TT-BNN dated December 21, 2001 of Agricultural and Rural Development Ministry on the implementation of Decree 13. Ordinance on protection of varieties of plants was issued by the Standing Committee of the National Assembly of Vietnam on March 24, 2004 and came into effect as of July 1, 2004.
In an effort to work out a legal framework in compliance with international standards and law and join the International Union for the protection of new varieties of plants («UPOV»), the National Assembly of Vietnam enacted on November 19, 2005 the Intellectual Property Law («IP Law») dedicating the whole Part IV on the protection of new plant varieties. The IP Law will come into effect as of July 1, 2006. New plant varieties are thus officially protected by law encouraging creative efforts in agricultural development in Vietnam.
1. Conditions for the grant of plant variety rights
a) Who may be granted breeder’s rights?
Previous legal documents did not clarify who was entitled to breeder’s rights. Article 159 of the IP Law expressly provides that breeder’s rights will be granted to all domestic and overseas entities and individuals who have «bred, discovered and developed or invested in breeding, discovering and developing a variety» or their assignees. As to foreign entities and individuals from countries not party to international conventions for protection of varieties of plants of which Vietnam is a member and having no bilateral agreement on protection of varieties of plants with Vietnam, the breeder’s rights will be only granted if such entities or individuals have a permanent residence or a real and effective industrial or commercial establishment in Vietnam.
b) Which variety of plant may be protected?
Under Article 160 of the IP Law, a plant variety may be protected if it is (i) bred or discovered and developed; (ii) belonging to protected plant species included in the list established by the State; (iii) new; (iv) distinct; (v) uniform; (vi) stable and (vi) having a suitable variety denomination. The contents of these criteria are expressly provided for in the IP Law, in Articles from 161 to 165.
2. Establisment of plant variety rights
a) Basis for establishment of plant variety rights
Under the IP Law, plant variety rights are established only through registration. Application for registration of a new variety must be filed with the Registration Office under Agricultural and Rural Development Ministry.
It is noted that there is a change in regulation relating to new plant varieties financed with state budgets. According to legal provision prior to the IP Law, the plant breeder (entity or individual) who uses state budgets or funds from projects managed by the State may apply for registration of the new variety in his/her own name. Such rights will belong to the State once the IP Law comes into force.
b) First-to-file principle
Under the IP Law, first-to-file principle is applied for protection of varieties of plants. It means that where two or more applicants have filed applications for registration of the same plant variety, a certificate of registration may only be granted to the first applicant.
Where two or more applicants have filed applications for registration of the same plant variety on the same day, they should agree to designate among themselves one applicant. In case such agreement can not be reached, the Registration Office will grant registration certificate to the applicant who is determined as the first having bred, dicovered and developed the plant variety. Under the previous legal documents, the Registration Office has the right to refuse applications in such casesRegistration certificate of plant variety shall be in effect throughout the whole territory of the Socialist Republic of Vietnam.
c) Priority right
The IP Law has broadened the scope of priority rights provided for in the previous legal documents. In addition to priority rights for the period of 12 months counting from the filing date of the first application for the same variety in other countries, the Applicant enjoys the right of priority if the Vietnamese application is filed within 12 months from the date on which the variety is inlisted among plant species authorised to be produced and commercialised in Vietnam.
d) Validity of registration certificate of plant variety
Registration certificate of plant variety shall be in effect throughout the whole territory of the Socialist Republic of Vietnam. The validity of a registration certificate begins from the granting date of the certificate and expires at the end of 25 years for trees and vines and 20 years for other kinds of plants.
e) Registration procedure
Upon filing, an application will be undergoing the following phases:
Examination as to formality: The Registration Office will examine the application as to formality within 15 days from the filing date of the application.
Publication of the application: if the application is accepted as filed in due form, the application will be published in a specialised magazine within 90 days from the acceptance date of the application for opposition purpose.
Substantive examination: the accepted application will be examined as to the registrability. Substantive examination will be conducted as to (i) the novelty and suitability of the variety denomination; and (i) the result of growing tests in order to determine the distinctness, uniformity and stability of the variety.
f) Suspention and cancellation of the validity of registration certificate
The validity of registration certificate can be suspended in the following cases:
The protected variety no longer meets the criteria for protection as to the uniformity and stability as it did at the moment of granting the registration certificate;
The certificate holder (i) does not pay the annual fees as prescribed; (ii) does not provide the authority with documents or materials deemed necessary for the maintenance of the variety; (iii) does not change the variety denomination as per the authority’s request and (iv) ceases to exist but has no legitimate successor.
The validity of a registration certificate can be cancelled in the following cases:
The registration certificate is granted to the person who is not entitled to file the application;
The protected variety does not meet criteria for protection (i) as to novelty or distinctness at the moment of granting the registration certificate; (ii) as to stability or uniformity in case the certificate is granted based on the result of growing tests provided by the applicant.
3. The scope of the breeder’s rights and limitation
a) Scope of rights
The certificate holder shall have the right to: (i) use or permit others to use the variety by conducting acts as provided for in Article 189; (ii) prohibit others to use the variety by conducting acts as provided for in Article 191; and (iii) assign plant variety rights to others.
The breeder’s rights are extended to other varieties if (i) such varieties are essentially derived from the protected variety; (ii) such varieties are not clearly distinguishable from the protected variety; and (iii) their production requires repeated use of the protected variety.
The Applicant shall enjoy from the date of filing a so called «temporary right» which will be effective only in case a registration certificate is eventually granted.
b) Limitation of the breeder’s rights
The IP Law has some provisions limiting plant breeder’s rights. According to them, the use of a protected plant variety for personal and non-commercial or research purposes will not be considered as infringement of the breeder’s right. Individual farm households can legitimately use the products derived from a protected variety to further propagate and cultivate for the next crop in their own soil.
In addition, the breeder’s rights shall not extend to acts concerning any material of the protected variety which has been sold or otherwise marketed by the owner or with his consent, unless such acts (i) involve further propagation of the variety in question or (ii) involve export of materials of the variety into a country which does not protect varieties of the plant genus or species to which the variety belongs, except where the exported material is for final consumption purposes.
4. Infringement acts
This is the first time the law determines acts deemed as infringing breeder’s right. Under Article 191, they include:
Exploiting and using the protected variety without the breeder’s consent ;
Using a denomination which is identical or similar to the protected variety denomination for a variety of the same of or closely related to species to which the protected variety belongs;
Infringing the breeder’s temporary right without paying compensation as prescribed;
Not fulfilling the obligation to pay remuneration to the creator or not ensuring the right to mention creator’s name in accordance with point 1, Article 188 and point 1, Article 194.
5. Transfer the breeder’s rights
Breeder’s rights can be assigned or licensed to a third party where appropriate. Assignment or Licence Agreement must be made in writting.
The IP Law provides several provisions regarding compulsory licence. The Registration Office has the authority to request a plant breeder to licence the protected variety to a third party upon his/her request if there is necessity for the variety to be widely used at resonable price and good quality. However, compulsory licence is only granted to a third party who provedto be capable to use the variety, and has tried but failed to get a licence by agreement. A compulsory licence is in principle non-exclusive. The licensee can not transfer his/her rights to others unless they are transfered together with the licensee’s indutrial or commercial establisment.