Thông tư 163/TT-SHCN năm 1994 hướng dẫn phê duyệt và đăng ký hợp đồng li-xăng do Bộ Khoa Học Công Nghệ Và Môi Trường ban hành

CIRCULAR

GUIDING FOR IMPLEMENTATION OF REGULATIONS ON APPROVAL AND REGISTRATION OF LICENSE CONTRACT

According to Decree No. 201-HDBT of December 28, 1988, the Council of Ministers (now the Government) has issued the Rules on patent right, useful measure, industrial form, commodity label and technical secret (briefly called license trade).
The Ministry of Science, Technology and Environment hereby issues this Circular in an aim to explain and provide guidance for the implementation of articles on approval and registration of license contract defined in the about mentioned Rules.

I. GENERAL REGULATIONS, OBJECTS, LICENSE HOLDER

1. Conventional terms.

Conventional terms used in the Rules on license trade and in this Circular are understood as follows:

- "Rules" to indicate Rules on license trade.

- "License" to indicate the fact that an organization, individual ("Transmitting party" allows another organization, individual ("Receiving party") to use - within a given territory ("license territory") and within a given time ("license time") invention, useful measure, industrial form, commodity label ("industrial ownership object") pertaining to the ownership or utilization right of the Transmitting party.

- "Exclusive license" to indicate a license according to which, within the license territory and license time, the Receiving party has its sole utilization right on industrial ownership object.

- "Non-exclusive license" to indicate a license according to which, within the license territory and license time, the Receiving party has no exclusion utilization right on industrial ownership object, i.e. the Transmitting party also has its utilization right or allows a Third party that industrial ownership object right.

- "Depending license" or "Secondarily issued license" to indicate a license in which the secondarily issued license Transmitting party is itself the license Receiving party having exclusiveness on the very object of secondarily issued license.

The secondarily issued license is always a non-exclusive license.

- The terms "invention", "useful measure", "industrial form" "commodity label" are to be understood according to the ordinance on protection of industrial ownership right proclaimed on February 11, 1989 by Order No. 13 LCT/HDNN8 by President of State Council and by guiding documents for the implementation of that Ordinance.

2. Application scope.

2.1. The Rules on license trade regulate relations on transmission in all forms (trade, transfer, exchange) the industrial ownership object utilization right (invention, useful measure, industrial form, commodity label) being protected by the State. This transmission is called license transmission.

The above mentioned transmission could be accompanied with technical secret transmission.

2.2. The Rules on license trade do not regulate relations pertaining to:

- Transmission of ownership right of industrial ownership objects;

- Pure transmission of technical secrets without being accompanied with transmission of utilization right of industrial ownership objects.

2.3. All license contract signed between Vietnamese organization/individual and foreign, organization/individual should have approval procedures according to provision at point 10 of this Circular.

All license contract is to have registration procedures according to provision at point 11 of this Circular.

3. License object.

3.1. According to article 2 of the Rules, license object is the right to utilize invention, useful measure, industrial form, commodity label being in protection period, with or without accompanying technical secret (information, knowledge, data, document... in secret).

3.2. In order to assure interest for all concerned parties, the license object should meet the following criteria:

- It should really belong to the Transmitting party;

- The corresponding industrial ownership right should be recognized in Vietnam and the corresponding protection diploma is still valid;

The accompanying technical secret should really belong to the Transmitting party, really be necessary for the implementation of transmission objective and should meet the requirement of this object as provided for in the law on technological transmission.

4. License holder.

4.1. Transmitting party

According to article 3 and article 8 of the Rules, the organization or individual on behalf of the Transmitting party should meet the following requirements:

a) If the Transmitting party is an organization, such organization should have full juridical person, if the Transmitting party is an individual, such individual should not be limited by civil law influencing on license relations;

b) The Transmitting party should have full name and address (head office or residence);

c) The Transmitting party should have real license transmission right, i.e. the Transmitting party should be an organization, individual on behalf of corresponding protection diploma owner or organization, individual on behalf of corresponding exclusive license Receiving party;

d) The Transmitting party should have capability in helping the Receiving party to successfully obtain accompanying transmitted technical secret (if any);

e) If the Transmitting party is one among the co-owners of corresponding protection diploma (for non secondarily issued license) or if the Transmitting party is one among organisations, individuals sharing the behalf the excilusive license Receiving party ( for secondarily issued licence), the Transmitting party should have agreement from other co-owners or other organizations, individuals from the Receiving party for the license transmission.

4.2. Receiving party.

The Receiving party should meet all requirements provided for in items a, b of point 4.1 above mentioned, in which the term "Transmitting party" is replaced by "Receiving party".

II. LICENSE CONTRACT

5. According to article 5 of the Rules, the license transmission is only carried outing the form of written contract. All speaking agreement or other transaction documents notes, messages, mail...) are not considered license contract and have no juridical value in place of contract for the solution of disputes in license relations.

If the industrial ownership object utilization right is one among objects obtaining transmission according to technological transmission contract (or other contract), the industrial ownership content should be prepared into an independent license contract or a separate part in industrial transmission contract (or other contract). Unless other provisions are there, the following regulations are applied to both above mentioned cases.

6. The license contract should have the following main contents:

- Introduction.

(Name or name and surname, full address of the Transmitting and Receiving parties, reason for which the Transmitting party can transmit and the Receiving party can receive license object. If the Transmitting party is industrial ownership object owner, the name, number and issuance date of corresponding protection diploma should be indicated;

- If the Transmitting party is not the owner of industrial ownership object but is the exclusive license Receiving party of that object, the signing date, signing place of corresponding exclusive license contract, contract registration, certificate number at the industrial ownership Department, date of its issuance should be indicated.

- Definition of terms and concept

(To provide clear, concise, simple definition for all terms and concepts used in the license contract).

- License form

( License pertaining to the catergory of: exclusive or non exclusive, whether is the secondarily issued licence or not).

- License object

(Content and scope of industrial ownership object utilization right; indicate document describing the object enclosed and considered as inseparable part of license contract).

- Guarantee and responsibility

(Commitments and measures assured by each party for a successful implementation of contract) in which:

The Transmitting party should assure that it really controls the license object and has the right to transmit it; that all enclosed describing documents and necessary information to handle to the Receiving party are real documents and information, valuable and most conforming to the efficiency level desired by the Receiving party; the transmission of license object does not infringe upon the industrial ownership of any Third party, if there is any claim of a Third party on the use of industrial ownership object by the Receiving party, the Transmitting party should have to resolve it, on the contrary if a Third party encroaches upon the Receiving party then the Transmitting party should act by all means to oppose that encroachment.

The Receiving party should assure that it really has the need of using industrial ownership object and the objective of its reception is not meant to exterminate that object or meant to infringe upon the right of any Third party.

Both parties should assure a close coordination for a successful transmission.

The Transmitting party could request the Receiving party to implement some conditions, for instance the Transmitting party is entitled to control the product quality made according to the license, the Receiving party should indicate on the product that it is made according to the license received from the Transmitting party...)

- Price and mode of payment

(Working items and objects should be paid to the Transmitting party-including accompanying service and means - unit price of each item or object, if the unit price cannot be defined, then the principle of defining price, order, time mode and place of payment)

- Tax and fees

(Which of the parties should have the obligation to deliver taxes according to article 23 of the Rules and necessary fees, including approval fees or license contract registration fees).

- Secret protection

(All objects are considered secrets: principles of contract and reception of information or documents; secret protection principle; conditions for publishing concerned information...)

- Improvement and upgrading

(Principle of mutual information on improvement or overhauling carried out by any party: interests of the parties concerning such improvement and upgrading...)

- Contract effectiveness

(Scope of effective territory-i.e. license territory, time of effectiveness-i.e. license time, elements that could lead to confinement, limitation, ending, annulment of effectiveness in part or the whole of it, conditions for considering Contract as partly or entirely ineffective, mode of solution of aftermath).

- Claim and dispute

(Acts or elements considered as violation of Contract responsibility of contract violating parties: applied law for solution of violations, dispute and claim resolving body).

The license contract is terminated by signature of the competent representative of each party. Along with the signature there should be full notification of name, title of the signer and signing date. The signature should be confirmed (by seal of the organization or certifier, in case the certifier is not available, confirmed by the People's committee from commune or precinct echelon up).

7. The license contract should not contain irrational limited content on the right of the Receiving party as defined in article 6 of the Rules. If there was any article creating the impression that it was an irrationally limited content, there should be indication in the Contract a reason to prove that corresponding limitation is necessary and rational.

8. In case articles on industrial ownership are part of technology transmission Contract (or other Contract), that part should be clearly distinguished with remaining parts of the Contract and subtracted from contents already defined in other parts of the Contract, the part on industrial ownership should contain all remaining contents of the license contract as mentioned above in point 6.

III. APPROVAL, REGISTRATION OF LICENSE CONTRACT

9. In order to assure success in license transmission, before the negotiations and agreement on transmission, each party should have a careful control of juridical quality, corresponding capability and act of the other party according to contents mentioned above in point 4.

For State organizations or State organizations being one party to license transmission joint venture with foreign organization and individual, it should be accepted by the Ministry (if it is an organization pertaining to the Ministry) or by Province, centrally controlled City (if it is a local organization). For consideration and acceptance, the said organization should report the license transmission's reason and effective implementation possibility to the Ministry, province, city.

Science-technology management offices of the Ministry province, city, have the responsibility of examining this report and advise the Minister, Province or City people's committee President in whether or not to accept and allow their related organization to proceed license transmission with the Foreign party.

Acceptance by the Ministry, Province, City should be made in written notes.

10. License contract signed between Vietnam party and Foreign party should be approved by the Ministry of Science, technology and Environment according to order and procedures defined in Article 12 and 13 of the Rules and concretized as follows:

10.1. File for approval should comprise the following documents:

- Application for approval of license contract (Annex 1) The application for approval of license contract should be made in Vietnamese in which full name and address of both parties are notified, the contract summary should be approved:

The applicant for approval should be the Vietnamese party and could be either the Transmitting or Receiving party;

The signature of the applicant for approval should be confirmed according to principle as for license contract (the last paragraph of point 6 in this Circular);

- The original copy of license contract, in case of the license contract made in language other than Vietnamese should be accompanied with the translation of license contract into Vietnamese. The translation text should be certified or signed by both contract signing parties and confirmed as correct to the original;

- The note on approval opinion by the Ministry, province or city governing on the Vietnamese party is a state organization as defined in item 1 article 10 of the rules and concretized in paragraph 2 of the above point 9;

- The copy of corresponding protection diploma if the Transmitting is the owner of that diploma; or

- The copy of corresponding exclusive license contract and the copy of certificate of that contract registration if the contract for approval is a secondarily issued license contract;

- Bills of license contract approval fees;

10.2. The file for approval of license contract is to be submitted to the Department of industrial ownership - Ministry of Science, Technology and Environment.

10.3. The time for submission of file for approval is 30 days after the contract is signed.

10.4. The Department of industrial ownership has the responsibility of examining or if the contract for approval contains industrial content, it should be coordinated with the Department of technological development for consideration of file license contract approval according to provisions of the Rules and this Circular.

In case the license contract does not violate regulations of the Transmitting and Receiving parties, does not contain article harmful to the signatories, or to the Third party as well as other regulations, the Department of industrial ownership submits to the Minister for consideration and issuance of Decision on approval of contract as defined in item 1 article 13 of the Rules.

In case the file for approval has defect and such defect could be repaired, the Department of industrial ownership proposes the applicant to repair such defect in an appropriate time.

If one of the following cases happens, the Department of industrial ownership shall propose the Minister of Science, Technology and Environment to refuse the approval of license contract:

(i) The applicant fails to repair defects of the file as defined in the above mentioned paragraph;

(ii) The applicant is not the Receiving party or Transmitting party, nor the representative of industrial ownership entrusted by the Transmitting or Receiving party;

(iii) The Transmitting party fails to meet conditions defined in point 4.1;

(iv) The Receiving party fails to meet conditions defined in point 4.2;

(v) The license object fails to meet conditions define in above mentioned point 3;

(vi) The license contract has no articles on price and mode of payment or/and no article on tax according to article 23 of the Rules;

(vii) The license contract on commodity label has no article on the Transmitting party controlling product quality to bear label used according to license produced by the Receiving party;

(viii) The license contract contains irrational limitation article as mentioned in point 7 of this Circular;

(ix) The license contract contains article harmful to any party, including the Third party;

(x) The license contract contains article in violation of Vietnam laws;

(XI) The license contract has no signature or unconfirmed signature as defined in the last paragraph of point 6 of this Circular;

(XII) The license signer is of wrong competence;

(XIII) There is deceiving objective in the signing of license contract;

(XIV) The file for approval delivered late than 30 days since the day of contract signing without any legitimate reason.

Before submitting to the Minister of Science, Technology and Environment for refusal of license contract approval, the Department of industrial ownership informs the applicant of examination result on the file in which the reason expected to refuse is mentioned and a time is fixed for the applicant to express opinion. If the fixed period is passed without the applicant has any opinion or an irrelevant opinion, the Department of industrial ownership will officially propose the refusal of approval.

11. The order and procedures for license contract registration is defined in article 14 of the Rules and concretized as follows:

11.1. The file for license contract registration comprises the following documents:

- The application for license contract registration (made according to model in Annex 2 of this Circular). The applicant for registration could be either the Transmitting or the Receiving party. If the applicant for registration is a foreign organization or individual without head office or non permanent office in Vietnam, the submission of file for registration should be made through the industrial ownership representative;

- The original copy of license contract with annexes enclosed (if any), if the license contract is made in language other than Vietnamese, it should accompanied with a contract translation in Vietnamese, the translation text certified or signed by both contract signatories confirming it as conforming to the original;

- Decision on license contract approval by the Minister of Science, Technology and Environment (for license contract where one of two signatories is a Foreign party, the remaining party being the Vietnamese one);

- A copy of corresponding protection diploma if the Transmitting party is owner of that diploma, if the contract for registration is a secondarily issued contract, it should be accompanied with a certificate of registration of corresponding exclusive license contract;

- Bills of registration fee payment (fee confirming the protected transmission right);

- Representative procreation paper if the application is submitted via industrial ownership representative.

11.2. Within one month since the day the necessary and conformable file is received, the Department of industrial ownership should examine the registration file according to the following regulations.

a) If the file is conformable and has no reason for refusal of registration acceptance (as mentioned in item c herebelow), the Department of industrial ownership should have it noted into the license contract registration book, issue license contract registration certificate and deliver sealed registration contract to various parties after having retain one copy at the Department, make procedures to publish it on the industrial ownership gazette of that registration.

b) If the license contract registration file has defect and needs to be completed and amended, the Department of industrial ownership should demand the applicant within and appropriate period of time to proceed to completion and amendment, and the time for examination is prolonged corresponding to the time reserved for such amendment.

c) The department of industrial ownership refuses to issue license contract registration certificate if one of the following cases occurred:

(i) The license contract registration applicant is not a signatory to that contract, nor an industrial ownership representative entrusted by the contract signatory;

(ii) The file lacks necessary documents but the applicant fails to amend at the requirement of the industrial ownership Department;

(iii) The license contract is not approved by the Ministry of Science, Technology and Environment (if one of the two parties is a foreign organization or individual and the remaining party is Vietnamese organization or individual);

(iv) The license object fails to meet requirements mentioned in point 3.2 of this Circular;

(v) The Transmitting party fails to meet requirements mentioned in point 4.1 of this Circular;

(vi) The Receiving party fails to meet requirements mentioned in point 4.2 of this Circular;

(vii) The license contract contains one of irrational limitation articles as mentioned in point 7 of this Circular;

(viii) The license contract has no provision on price and mode of payment or/and has no provision on taxes according to article 23 of the Rules;

(ix) The license contract on commodity label has no provision on the Transmitting party controlling product quality to bear label used according to license produced by the Receiving party;

(x) The license contract has no signature or unconfirmed signature defined in the last paragraph of point 6 of this Circular;

(xi) The license contract signer is of wrong competence;

(xii) There is deceiving objective in the signing of license contract.

d)Before the official refusal of license contract registration certificate issuance, the Department of industrial ownership informs on examination result of registration file, on the expected refusal, reason for refusal and fix and appropriate time for the applicant to express opinion. Past that fixed time without the applicant has any opinion of objection or irrelevant objection, the Department of industrial ownership issues information on refusal of issuance of license contract registration certificate in which the reason should be clearly mentioned.

e) The Department of industrial ownership is not entitled to refuse the issuance of license contract registration certificate which has been approved by the Ministry of Science, Technology and Environment. If an element was discovered and affirmed that a license contract should not be approved, the Department of industrial ownership proposes it to the Minister for re-examination of an approved decision. After 15 days from the day the announcement is made, if there was no other opinion from the Minister, the Department of industrial ownership continues with procedures of license contract registration.

12. All changes and amendments to the license contract already provided with registration certificate should be made with the same procedures as if it was for a new license contract.

IV. HANDLING OF CLAIMS

13. If there was disagreement with the reason of refusal to license contract approval, within one month from the day the announcement is made on refusal of approval, the applicant is entitled to claim it on the Minister of Science, Technology and Environment. The claiming note should be made in Vietnamese in which the claiming reason should be clearly mentioned.

This claim is resolved according to claiming order, result of claim settlement related to the issuance of protective diploma as mentioned in the last paragraph of point 71 as well as point 72 of Circular No. 1134/SC of October 17, 1991 by the State Committee of Sciences.

14. If there was disagreement with the reason of refusal to issuance of license contract registration certificate within one month from the day the announcement is made on refuse the contract registration applicant is entitled to claim it on the Head of industrial ownership Department. The claiming opinion should be made in written note and in Vietnamese, in which the claiming reason should be clearly mentioned. The claimant should pay claiming fees as it was in the case of claiming on issuance, amendment, maintenance of effectiveness of protection diploma as defined in Circular No. 1134/SC of October 17, 1991 by the State committee of Sciences as well as in part III of Circular No. 99/TC-KHCNMT of December 2nd, 1993 by the joint ministries of Finance, Science, Technology and Environment. This fee will be reimbursed to the applicant if the solution proved that the applicant-claimant was correct.

15. Within one month from the day the claiming file is fully received, the Head of industrial ownership Department should have it resolved and announce its result to the claimant. If the claimant is correct, the Department of industrial ownership should reimburse the claimant with claiming fees.

16. If there was disagreement with the solution of claim by the Head of industrial ownership Department, within one month from the day the announcement of result is made, the above-mentioned claimant is entitled to claim it in written not to the Minister of Science, Technology and Environment.

The time for solution at the Ministry of Science, Technology and Environment is one month from the day the claiming file is fully received by the Ministry of Science, Technology and Environment.

The Decision by the Minister of Science, Technology and Environment is the final one on such problem.

V. IMPLEMENTATION EFFECTIVENESS

17. This Circular is effective on the day of its signing.

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