In what cases is it mandatory to transfer the rights to use an invention?

In what cases is it mandatory to transfer the rights to use an invention?

The law stipulates that individuals and organizations are allowed to conduct research and develop a product that can be applied in practical life and provide utility and accuracy. This is considered a new invention and can be registered with the competent authority to receive intellectual property protection from the state. So, what are the cases that require the transfer of rights to inventions?

In what cases is it mandatory to transfer the rights to use an invention?

According to the Intellectual Property Law in Viet Nam, there is a principle regarding inventions in Article 7, Clause 3, which states:

“In order to ensure the objectives of national defense, security, public interest, and other benefits of the State, the society regulations in the law, the State has the right to prohibit or restrict the subject of intellectual property rights (IPR) from exercising their rights or force the subject of IPR to allow organizations or individuals to use one or more of their rights under appropriate conditions; limitations on rights for inventions under state secrets shall be implemented in accordance with government regulations.”

In the following cases, the right to use inventions is transferred to other organizations and individuals according to the decision of the competent state agency, as stipulated in Article 147, Clause 1 of the Intellectual Property Law, without the consent of the exclusive right holder:

  • Using the invention for public, non-commercial purposes, serving national defense and security, disease prevention and treatment, nutrition for the people, or meeting urgent social needs.
  • The exclusive right holder does not fulfill the obligation to use the invention as stipulated in Article 136, Clause 1 and Article 142, Clause 5 of the Intellectual Property Law, after four years from the date of filing the patent application and three years from the date of granting the exclusive patent right.
  • The party in need of using the invention fails to reach an agreement with the exclusive right holder for the conclusion of an invention use contract, even though they have made reasonable efforts to negotiate a fair price and commercial terms.
  • The exclusive right holder is considered to engage in anti-competitive behavior prohibited by competition laws.
  • The exclusive right holder has the right to request termination of the right to use if the conditions for the transfer specified in Article 145, Clause 1 no longer exist and there is no possibility of recurrence, provided that the termination does not cause harm to the party to whom the right to use the patent is transferred.

What is the authority for compulsory transfer of the right to use inventions? According to Article 147 of the Intellectual Property Law 2005, which stipulates the jurisdiction and procedures for compulsory transfer of the right to use inventions:

  • The Ministry of Science and Technology issues a decision to transfer the right to use patents based on the consideration of requests for transfer of rights in cases specified in points b, c, and d of Clause 1, Article 145 of this Law.
  • Ministries or equivalent state agencies issue decisions to transfer the right to use patents in their respective state management areas when cases specified in point a, Clause 1, Article 145 of this Law occur, based on the opinions of the Ministry of Science and Technology.
  • The decision to transfer the right to use patents must determine the scope and conditions of use in accordance with the provisions of Article 146 of this Law.
  • The competent state agency deciding to transfer the right to use patents must notify the exclusive right holder of that decision.
  • The decision to transfer the right to use patents or refuse the transfer can be appealed or brought to court according to the provisions of the law.
  • The government will specify the specific procedures for transferring the right to use patents as stipulated in this Article.

Above is the article:”In what cases is it mandatory to transfer the rights to use an invention?” by GreenIP. Should you or anyone you know need help with this, feel free to contact us at our email: info@greenip.asia
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