What are Requirements for License Recordal in Vietnam?

Minimum Requirements for a License Agreement

A license agreement must at least includes the following contents:

  • Full name and address of the licensor and licensee;
  • Details of the subject to be licensed (information on granted trademark registration or patent);
  • Scope of the license including:
    – type of license (exclusive or non-exclusive);
    – object(s) of the license determined by the restrictions on the right to use and the restrictions on the industrial property object (patent for invention/utility model/industrial design or certificate of registration of trademark);
    – territorial restriction (Vietnam or part of Vietnam);
    – term of license (must be within the term of the patent for invention/utility model/ industrial design or of the certificate of registration of trademark; or the term the corresponding exclusive license if this is a sub-license);
    In case of a sub-license, the license scope must fall within the license scope of the corresponding exclusive license.
  • Price of the license and term of payment;
  • Rights and obligations of each party;
  • Conditions for amendment, termination and invalidation of the agreement;
  • Method of settlement when complains or disputes arise;
  • Date and place of signing;
  • Signatures of the parties or of their authorized representatives with the full names, and positions of the signatories.

Documents Required for Recordal of a License Agreement

  • A Power of Attorney (PoA) from the applicant (assignor or assignee) (required at the time of filing);
  • Two original or certified copies of the agreement, including appendix or appendices (if any) and their Vietnamese translations;
  • A certified copy of the patent of invention/utility model/industrial design or certificate of registration of trademark. If the agreement to be approved is a sub-license agreement, it must be accompanied by a copy of the certificate of registration of the corresponding exclusive agreement;
  • A notarized copy of business license/investment license if the assignee is a Vietnamese entity.

Notes:

  • Recordal of license agreement with the Intellectual Property Office of Vietnam is not compulsory. However, to be enforceable with third parties, it must be recorded with the IP Vietnam;
  • Request for recordal should be filed within 60 days from the date of signing of the agreement;
  • Multiple page agreement must have signatures of both assignor and assignee on each page or all pages must be attested and marginally stamped;
  • For all applications including applications for patent, trademark and industrial design, Power of Attorney form just needs to be filled in and signed. Neither notarization nor legalization is required.
  • Power of Attorney can be submitted at a later date, but can not be later than 1 month from the filing date with surcharge.