The “first to file” principle in the protection of industrial property objects

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The “first to file” principle in the protection of industrial property objects

In the global business environment and increasingly crowded markets, businesses often have to improve and apply new methods of production, sales and product marketing to maintain and enhance their competitiveness in the international market. In parallel with the innovation and creativity of business entities, a series of tools are created by the legal system of intellectual property rights (IP) to provide owners with the management options to protect their innovation, knowledge and creativity. IP rights motivate companies to differentiate their products from those of their competitors, as well as enjoy equal monopolies that reduce the risks and uncertainties involve in introducing new or improved products to the market. However, in reality, we still often encounter some cases of ideas accidentally being duplicated or confusing are both submitted to the registrar. However, with the rule of “first to file” (filing priority), the law only protects intellectual property rights for a single owner who is the first person to file a registration application. 

The rule of “first to file” in Vietnam’s intellectual property law

The first to file principle in Vietnam’s intellectual property law had been derived from the “priority principle” in the 1883 Paris Convention on the protection of industrial property rights, of which Vietnam is a member. This is one of the two filing principles being used by almost all countries on over the world when registering for protection of intellectual property objects: the “first to file” and the “first to use”. According to the first to file principle specified in Article 90 of the Intellectual Property Law, in case there are many different application owners filing identical or indistinguishable patents/ industrial designs or trademarks that are identical or similar for the same group of identical or similar products or services, the approved application for protection is the application with the priority date or the first filing date. In cases where many applications of different applicants are filed with the same subject and same priority date or first filing date, the protection title shall be granted only to one applicant among all applications. If the applicants cannot reach an agreement, all the applications of that subject will be denied protection.

In addition to the first to file, in the case of the applicant of the invention, the industrial design and trademark wish to extend the scope of protection to other countries. They can apply the principle of priority to enhance the protection ability of their IP assets. This principle will be applied when at least two applications are filed together to protect the same invention, industrial design, or trademark and the applicant has claimed the priority right and pay the fee to get the priority right. The priority principle is regulated in Article 4 of the Paris Convention on protecting industrial property and specified in Article 91 of the Law on Intellectual Property of Vietnam (specifically guided in Article 10 of Decree 103/2006 / ND-CP). However, the right to claim priority for the object in the first application in Vietnam or in countries that are members of the Paris Convention on industrial property, PCT Convention on invention protection only applies within a limited time, specifically (1) for an invention, the priority period is 12 months from the date of the first application, (2) for an industrial design and mark, period of Priority entitlement is 6 months from the first filing date.

The relationship between the first-to-file and priority rule

When considering the relationship between the first-to-file and the priority rule, some people usually consider that the priority rule is an exception of the first to file principle. However, in the author’s opinion, the first to file and the priority principle are two independent but complementary principles that assist the applicant to take advantage in protecting their intellectual property rights in another country. Namely, priority rule is the applicant ‘s right based on having the first valid application filed in a country being a member of a treaty that has a priority rule agreement. An application may file to protect the invention, industrial design or trademark in another Member State, and the subsequent application is deemed filed on the same day as the first application within a particular time. The priority date is the filing date of the first application, while the first filing rule determines the first application’s filing date. Therefore the priority rule is not an exception to the first-to-file rule.

Industrial property objects are entitled to the first to file and priority principle

There are two methods to be granted rights on intellectual property objects: (1) automatic (through creating works or using without registration), which is applicable to copyrights, rights to well-known trademarks, trade names, business secrets; (2) the method for generating the right to grant protection titles such as inventions, industrial designs, trademarks (except well-known trademarks); design and layout of semiconductor integrated circuits and geographical indication. However, the first to file principle and the priority principle only apply to inventions, industrial designs and trademarks according to Articles 90 and 91 of the Law on Intellectual Property. Accordingly, Vietnamese laws do not prescribe the first to file and the priority principle for geographical indications and layout design of semiconductor integrated circuits. This provision is quite appropriate to the Paris convention and practical situation, because the right to register geographical indications belongs to the State. Organizations and individuals to produce products bearing geographical indications, collective organizations representing such organizations or individuals or the local administrative state management agency where the geographical indication exercises the right of registration when having the State’s permission and the State is the owner of the geographical indication (Article 88 Intellectual Property Law). Disputes in the registration of geographical indications are very unlikely. For the layout design of semiconductor integrated circuits, reality shows very few cases of identical subjects filing together for this object.

Through the analysis above, we can see that the first – to – file principle is the basic and most important principle in the legal system to protect the nation’s industrial property. This rule does not allow delays in applying if the applicant wishes to be granted a protection title. From which, “First to file” is also considered a powerful tool to promote the protection of the IP assets. The first to file principle also helps to raise the awareness of the right holders of industrial property objects to protect their rights better.

If you have any questions or require any additional information, please contact Apolat Legal – An International Law Firm in Viet Nam.

This article is for general information only and is not a substitute for legal advice.