I. Understanding the Industrial Design Assignment Agreement
An industrial design assignment agreement is a legal arrangement between the assignor and the assignee regarding the transfer of ownership rights over an industrial design that has been granted a protection title. This agreement enables enterprises to exploit and commercialize intellectual property assets while ensuring the lawful rights and interests of the parties involved.
The assignment must comply with legal regulations, including registration with the competent authority. In case of disputes, the parties may resolve them through negotiation, mediation, or litigation in accordance with applicable laws.
1. What is an Industrial Design Assignment Agreement? Is it necessary?
Article 138 of the Intellectual Property Law 2005 (amended and supplemented in 2019 and 2022) stipulates the assignment of industrial property rights as follows:
General provisions on the assignment of industrial property rights
1. The assignment of industrial property rights means the transfer by the owner of such rights of his/her ownership rights to another organization or individual.
2. The assignment of industrial property rights must be made in the form of a written contract (hereinafter referred to as an industrial property assignment agreement).
Accordingly, an industrial design assignment agreement is a legal document under which the owner transfers the ownership of a protected industrial design to another organization or individual. Such assignment must be made in writing and shall take effect upon registration with the Intellectual Property Office.
An industrial design assignment agreement is mandatory when the owner of the industrial design intends to assign full ownership to another organization or individual. The execution of the agreement ensures legal protection of rights, prevents disputes, and provides a legal basis for the assignee to commercially exploit the industrial design.
In addition, this agreement must be registered with the Intellectual Property Office in order to be legally effective. However, if the intention is merely to allow another party to use the industrial design without transferring ownership, the enterprise may consider licensing the right to use the design instead of assigning ownership.
2. Subject Matter of the Industrial Design Assignment Agreement
According to Clause 1, Article 138 of the Intellectual Property Law 2005 (amended and supplemented in 2019 and 2022), the subject matter of an industrial design assignment agreement is the ownership right over the industrial design held by the owner.
II. Legal Provisions on Industrial Design Assignment Agreements
1. Procedures for Executing an Industrial Design Assignment Agreement
The procedures for executing an industrial design assignment agreement are as follows:
* Preparation of Application Dossier:
Prepare the necessary documents, including:
- Declaration for registration of the industrial property assignment agreement (Form No. 01, Appendix IV of Decree No. 65/2023/ND-CP);
- One original or a certified copy of the industrial design assignment agreement;
- The original protection certificate of the industrial design if it was issued in physical form;
- A written consent from co-owners of the industrial design, in case of joint ownership;
- Power of attorney for an individual or organization to carry out the procedure (if filing is done through a representative);
- A copy of the receipt for payment of fees and charges (in case of payment via postal service or direct transfer to the account of the Intellectual Property Office).
* Submission of Application: Submit the application online via the Administrative Procedure Information System of the Ministry of Science and Technology, or in person/by post to the head office of the Intellectual Property Office in Hanoi, or to one of its two representative offices in Ho Chi Minh City and Da Nang.
* Processing Time: 02 months from the date of receipt of the application (excluding the time required for the applicant to rectify any deficiencies).
- If the application has no deficiencies: The Intellectual Property Office shall issue a Certificate of Registration of the Industrial Design Assignment Agreement / Certificate of Registration of the License Agreement for the industrial property object.
- If the application has deficiencies:
+ The Intellectual Property Office shall issue a notice of intended refusal to register the agreement, specifying the deficiencies and setting a deadline of 02 months from the date of the notice for the applicant to correct the deficiencies or present objections to the intended refusal;
+ The Intellectual Property Office shall issue a decision to refuse registration of the agreement if the applicant fails to rectify the deficiencies, does so inadequately, fails to submit objections, or submits unsubstantiated objections within the prescribed period.
2. Documents Required to Execute an Industrial Design Assignment Agreement
The documents required to execute an industrial design assignment agreement include the following:
- Declaration for registration of the industrial property assignment agreement (Form No. 01, Appendix IV of Decree No. 65/2023/ND-CP);
- One original or a certified copy of the industrial design assignment agreement; if the agreement is in a language other than Vietnamese, it must be accompanied by a Vietnamese translation; if the agreement consists of multiple pages, each page must be signed by the parties or have a stamped signature;
- The original protection certificate of the industrial design, if the certificate was issued in physical form;
- A written consent from co-owners regarding the assignment of ownership of the industrial design, if the industrial design is jointly owned;
- Power of attorney for an individual or organization to carry out the procedure (if the filing is done through a representative);
- A copy of the receipt for payment of fees and charges (in case of payment via postal service or direct transfer to the account of the Intellectual Property Office).
3. What Information is Included in the Declaration for Registration of an Industrial Property Assignment Agreement?
According to Article 140 of the Intellectual Property Law 2005 (amended and supplemented in 2019 and 2022), the content of an industrial property assignment agreement includes the following main elements:
(1) The full name and address of the assignor and the assignee;
(2) The basis for the assignment;
(3) The assignment price;
(4) The rights and obligations of the assignor and the assignee.
The declaration form for registering an industrial property assignment agreement is stipulated in Circular No. 16/2016/TT-BKHCN.
III. Answers to Questions Related to Industrial Design Assignment Agreements
1. In Which Cases is an Industrial Design Assignment Agreement Not Required?
According to Clause 1, Article 148 of the Intellectual Property Law 2005 (amended and supplemented in 2019 and 2022), the assignment of the following objects must be registered with the Intellectual Property Office, including industrial property rights over:
- Patents;
- Industrial designs;
- Layout designs;
- Trademarks (except for famous trademarks).
Thus, for other objects, an assignment agreement is not required to be registered with the Intellectual Property Office, including industrial property rights over trade names, trade secrets, and rights against unfair competition.
2. What to Do in Case of a Dispute Over an Industrial Design Assignment Agreement?
In the event of a dispute over an industrial design assignment agreement, the parties can take the following steps:
- Negotiation and Mediation: The parties may negotiate with each other to find a suitable solution to avoid wasting time and litigation costs.
- Request for Resolution by the Competent Authority: If a mutual agreement cannot be reached, a request can be submitted to the Intellectual Property Office or commercial arbitration to resolve the dispute.
- Litigation in Court: If the dispute is complex and affects the interests of the parties, they may file a lawsuit with the competent court as stipulated in the Civil Procedure Code.
IV. Consulting and Drafting Services for Industrial Design Assignment Agreements
The above provides important information about industrial design assignment agreements. If you require in-depth consultation or assistance in drafting related documents, please contact NPLaw. With our team of experienced lawyers and legal professionals, we are committed to offering optimal solutions that ensure legal compliance and best meet your needs.
