Enlightenment from a Vietnamese patent infringement case (2)

Last week, we described the case of Bayer suing Nong Phat Company for infringement of its patent right to the court of Ho Chi Minh City, Vietnam in the enlightenment from a Vietnam patent infringement case (1), and the final case was 59,469,750 VND.

This week, we bring you lessons learned from this Vietnamese patent infringement case.

1. In Vietnam, even if an invalidation request is submitted to IP VIETNAM, the civil procedure will not be suspended

Based on the reason for the alleged infringement, the defendant Nong Phat Company filed a lawsuit to revoke the patent involved before the trial, requesting the court to comply with Article 214.1(d) of the 2015 Civil Procedure Law: , the court should make a ruling to suspend the civil lawsuit. According to the law, the resolution of another related case or matter must be resolved by other institutions or organizations before the case is resolved, and it needs to wait.” In addition, according to Articles 27 and 28 of Decree No. 99/2013/ND-CP, Vietnamese courts have suspended proceedings until IP VIETNAM resolves invalidity proceedings.

However, the consideration of the Vietnamese court is obviously more than that. Considering that this is a case based on intellectual property rights, the Vietnamese court compared the current Vietnam Civil Procedure Law with the Intellectual Property Law. In the end, the court and the procuratorate agreed that the Intellectual Property Law should prevail, Because it is a special law relative to the general law of the "Civil Procedure Law", and Vietnam's "Intellectual Property Law" does not have the relevant provisions of "requiring the court to suspend the case". Accordingly, the court rejected the motion of the defendant Nong Phat Company, directly tried the patent infringement case, and finally made a judgment in favor of the foreign patentee.

Vietnam is moving faster and faster on the road to international standards, and the actions of the court have increased the confidence of other law enforcement agencies in Vietnam in handling IP infringement cases. The alleged patent infringers are trying to create ownership disputes to delay or suspend IP infringement cases The status quo of the process will be strongly transformed.

2. Various remedies against IP infringement in Vietnam

In Vietnam, according to the nature and seriousness of intellectual property infringement, when intellectual property infringement occurs, intellectual property right holders can combat intellectual property infringement through administrative, civil or criminal means. If counterfeit or infringing products are imported into Vietnam, right holders can also consider adopting border control measures to monitor incoming goods, and if counterfeit products are found, they can be seized at border ports in Vietnam.

In Vietnam, patent rights can be enforced through a series of administrative procedures, such as market supervision and management agencies, police, Ministry of Science and Technology Supervision Bureau, customs and other administrative law enforcement agencies, as well as civil proceedings. Criminal approach The current law in Vietnam does not apply to patent infringement.

Civil litigation channels for intellectual property rights are not widely used in Vietnam at present, and most rights holders believe that Vietnamese courts have no experience in adjudicating intellectual property infringement cases. However, in recent years, civil litigation for intellectual property rights has become more and more popular with right holders, because it provides unique remedies that administrative litigation cannot provide, such as compensation for losses, public apology, and recovery of attorney fees.

3. Countermeasures available to defendants in Vietnam

In patent infringement cases, one of the countermeasures commonly used by the accused infringer is to challenge the validity of the granted patent, that is, to file a patent invalidation request with IP VIETNAM. An important purpose of the invalidation request is to delay the trial procedure of the patent infringement case. In addition to this, in Vietnam, the alleged infringer can take the following countermeasures:

(i) According to Article 8 of Decree-Law No. 105/2006/ND-CP, prove that the alleged embodiment does not fall within the scope of the patent right.

(ii) According to Article 125.2 of the Intellectual Property Law of Vietnam, prove that the alleged infringement is an act of exemption from pursuing patent infringement.

4. In Vietnam, damages claimed in civil lawsuits

In this patent infringement lawsuit, the plaintiff, Bayer AG, requested damages of VND 500 million (approximately US$ 21,700). But in the end the court found that the defendant only compensated the plaintiff 59,469,750 VND (approximately US$2,600), which was the attorney fee paid by the plaintiff to hire a lawyer to participate in the lawsuit.

According to Vietnam Intellectual Property Law, the patent infringement damages obtained by the plaintiff will be determined according to the actual loss of the patentee. Damages can include the following:

• Material damage, including loss of property, loss of revenue and profits, loss of business opportunity, and reasonable costs of preventing and remedying such damage.
• Moral damage, including loss of honor, dignity, reputation or reputation, and other moral damage.

Compensation is calculated using one of the following methods:

• Compensation amount = total material loss + the amount of profit gained from the defendant's infringement.

If there is a license agreement, the amount of compensation shall follow the amount stipulated in the patent license agreement.

If the amount of compensation cannot be determined or quantified, the Vietnamese court may have the power to determine the amount of compensation not exceeding VND 500 million (approximately US$24,000) in accordance with Article 205.1(c) of the Vietnamese Intellectual Property Law.

Practice shows that in Vietnam, it is often not easy to claim damages according to the wishes of the patentee. A patentee claiming against a patent infringer must provide relevant evidence to the court to prove that he has suffered actual and direct damages, such as loss of property and/or loss of income, profit and/or OR LOSS OF BUSINESS OPPORTUNITY AND/OR REASONABLE COSTS TO PREVENT AND REMEDY DAMAGE. The proof of damage on which compensation is based must be clear and legal evidence showing a direct causal link between the tort and the damage. In previous cases, the amount of damages that Vietnamese courts have ordered infringers to pay to IP owners is actually quite insignificant.

In the future, patent infringement lawsuits in Vietnam will be more and more inclined to the direction of patentees. We will wait and see.