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.
- 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.