Enlightenment from a Vietnamese patent infringement case (1)

Vietnam, an emerging economy of global concern, is trying to become a better country in line with the world. This is true from the perspective of economic development, but also from the perspective of intellectual property rights. A patent infringement lawsuit between Bayer SAS, which was the first to invent aspirin, and Nong Phat, a local Vietnamese company, happened in the world's top 500 companies, which can be the best commentary on the development of intellectual property rights in Vietnam.

01 Action of the plaintiff

Bayer SAS has obtained a patent in Vietnam protecting a combination of new agrochemicals whose subject matter is two known pesticides and other agrochemicals. Through market research, Bayer found that a Vietnamese company named "Công ty TNHH Thương mại Nông Phát" ("Nong Phat") produced an insecticide named "SESPA GOLD" and "HUMMER" containing active ingredients "Fipronil" and "Imidacloprid" - these ingredients are Bayer's patents protected by multiple rights.

To substantiate the allegations of infringement, Bayer sought an expert opinion on the possibility of patent infringement from the Vietnam Intellectual Property Research Institute (VIPRI). Subsequently, VIPRI provided expert witness testimony in favor of Bayer.

Based on the expert opinion of VIPRI, Bayer AG filed a patent infringement lawsuit against Nong Phat in the court of Ho Chi Minh City, Vietnam. In the request, Bayer asked the Ho Chi Minh City People's Court to order the defendant to (i) stop manufacturing, distributing, storing, circulating, offering for sale, and promoting the pesticide named "SESPA GOLD"; (ii) stop importing it for the manufacture of "SESPA GOLD" and "HUMMER" products' materials, additives; (iii) Recall of "SESPA GOLD" products. (iv) revoke the circulation registration file of the product in the plant protection department, (v) not conduct circulation registration for any product containing "fipronil" and "imidacloprid", (vi) pay 200 million VND (approximately US$8,700) Compensation, (vii) Public apology in local newspaper.

02 Defendant's Reaction

The defendant Nong Phat Company did not accept the infringement allegations against the global giant, arguing that (i) the ingredients "fipronil" and "imidacloprid" were imported from a foreign company, which entrusted the defendant to use the above ingredients; (ii) the plant After receiving the circulation registration dossiers of "SESPA GOLD" and "HUMMER" products, the protection department reviews, inspects and determines that these products meet the registration standards. All the above-mentioned evidence proves that the defendant's products are legal, and its manufacture, distribution, storage, circulation, offering for sale and publicity of the so-called pesticides comply with Vietnamese laws and regulations. At the same time, the defendant Nong Phat Company filed an invalidation lawsuit against Bayer's patent, hoping that the court would suspend the lawsuit.

03 Vietnam Intellectual Property Office ("IP VIETNAM")

IP VIETNAM was required to provide its expert opinion, and then IP VIETNAM issued a search and analysis conclusion in favor of Bayer ex officio, and Bayer's patent remained valid.

04 Court decision

For patent infringement litigation, Vietnamese courts first need to determine which law applies, whether it is the Civil Procedure Law or the Intellectual Property Law, so as to better protect the legitimate rights and interests of both parties.

In the end, based on the facts of the case, the court made a judgment and accepted most of Bayer's Claim in the lawsuit. Defendant Nong Phat Company was ordered to pay damages of VND59,469,750 (US$2,600) to the plaintiff.

(*Please continue to pay attention to the page code IP to learn the details and experience of classic patent infringement cases in Vietnam.)