Contents of the Contract for Transfer of Rights to Use Shcn Object

Industrial design is also increasing and is gaining popularity in the commercial business market.

For industrial designs, the transfer of the right to use is carried out through the transferor allowing the transferee to perform the acts prescribed in Clause 2, Article 124 of the Law on Intellectual Property as follows:

- Production of products whose external appearance is an industrial design protected by law;

- Circulating, advertising, offering for sale, storing for circulation products whose external appearance is a protected industrial design;

- Importing products whose external appearance is a protected industrial design.

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The owner of the industrial design right has the exclusive right to use and transfer the right to use the industrial design according to the specific acts mentioned above. The owner of the industrial design also has the right to allow others to transfer the right to use that industrial design according to a sub-license contract.

The subject having the right to transfer the right to use an industrial design can transfer the above acts within the scope of protection of the industrial design protection certificate. The space for patent protection is also limited to the territory of Vietnam like other IP objects. The protection period for an industrial design is 5 years from the date of filing and can be extended twice in a row, each time for 5 years. This means that the term of the industrial design license contract can only be extended when the owner of the industrial design requests an extension of the industrial design protection period with the competent state agency.

An agreement to license an industrial design is often part of a more general license agreement that covers many other aspects of the product.

Thus, the contract for using industrial designs can only be transferred for the above-mentioned acts of use and must be consistent with the scope of protection of the industrial design protection certificate.

Right to use layout design

Layout design is the spatial structure of circuit elements and their interconnections.

layout design is also defined in the Washington Treaty on Intellectual Property in Respect of Integrated Circuits 1989 as follows: “layout design (topograph)” means the three-dimensional arrangement, in any form, of the elements, at least one of which is active, and of some or all of the interconnections, of an integrated circuit, or such three-dimensional arrangement of an integrated circuit designed for the manufacture of the said integrated circuit”.

Layout designs are protected by IP rights if they meet two conditions of originality and commercial novelty. Layout designs help integrated circuits save space and thus save a lot of raw materials for circuit production. The benefits of integrated circuit layout designs for human life are undeniable and their increasing popularity has led to an increase in the transfer of rights to use layout designs. Allowing others to use the owner's circuit layout design through a licensing contract will bring additional revenue to the business of the owner of the circuit layout design and is a common way that companies often use to exclusively exploit registered layout designs.

According to the provisions of Vietnamese law, the owner of the intellectual property right to a layout design has the exclusive right to allow other organizations and individuals to use it.

The right to use a layout design is limited by Vietnamese law to certain acts. According to Clause 3, Article 124 of the Vietnamese Intellectual Property Law, the use of a layout design is the performance of the following acts:

- Copying layout designs and manufacturing semiconductor integrated circuits according to layout designs protected by law on intellectual property rights for layout designs;

- Selling, leasing, advertising, offering for sale or storing copies of layout designs, semiconductor integrated circuits manufactured under the layout design or goods containing semiconductor integrated circuits manufactured under the protected layout design;

- Importing copies of layout designs, semiconductor integrated circuits manufactured according to layout designs or goods containing semiconductor integrated circuits manufactured according to protected layout designs.

Similar to patents and industrial designs, the transfer of the right to use a layout design can only be carried out in the territory where the IP rights to the layout design arise. According to Vietnamese law, this transfer can only be carried out in the territory of Vietnam. The term of the transfer of the right to use a layout design also depends on the term of the certificate of registration of the semiconductor integrated circuit layout. The certificate of registration of the semiconductor integrated circuit layout design is effective from the date of issuance and expires on the earliest of the following dates:

- End of ten years from the date of filing;

- The end of ten years from the date on which the layout-design was first commercially exploited anywhere in the world by the person having the right to register or by his or her permission;

- The end of fifteen years from the date of creation of the layout design.

Trademark rights

Trademarks are signs used to distinguish goods and services of different organizations and individuals. These signs are protected by intellectual property rights if they meet two conditions:

- Is a visible sign in the form of letters, words, drawings, images, including three-dimensional images or a combination of such elements, represented in one or more colors;

- Ability to distinguish the goods and services of the trademark owner from those of other entities.

By transferring the right to use a trademark, the licensor will gain some basic benefits such as: expanding the market for its products and services without having to spend a lot of money and effort to invest in building a network of branches and representative offices in many places (domestic and international); increasing revenue for the licensor; the trademark is promoted to many markets and is known to more consumers; being able to better protect the trademark for its products against trademark infringement because the licensee will support the licensee in collecting information related to trademark infringement... The licensee will benefit greatly from the fact that its products are allowed to have a trademark that is known to many consumers.

The trademark owner has the exclusive right to use and transfer the right to use the trademark in the following acts:

- Attaching protected trademarks to goods, product packaging, business vehicles, service vehicles, and transaction documents in business activities;

- Circulating, offering for sale, advertising for sale, storing for sale goods bearing protected trademarks;

- Import of goods and services bearing protected trademarks.

Like other IP rights, the right to use a trademark is limited in terms of time and space protected. The protection space of a trademark is limited to the territory of Vietnam. The protection period for a trademark is 10 years from the date of filing the application. The owner can also apply for renewal of trademark protection many times in a row, each time for 10 years. Therefore, the trademark license contract can only be renewed if the trademark owner applies for renewal of trademark protection.

In the trademark license contract, Vietnamese law has provisions on the restriction of transferring the right to use the trademark as follows:

- For collective trademarks, the right to use cannot be transferred to organizations or individuals who are not members of the collective that owns that trademark.

- The party licensed to use the trademark is obliged to indicate on the goods and packaging that the goods are produced under the trademark license contract.

Right to use trade secrets

A trade secret is information obtained from financial and intellectual investment activities, which has not been disclosed and has the potential to be applied in business. Current Vietnamese law recognizes the protection of intellectual property rights for trade secrets if they fully meet the following protection conditions:

- Not common knowledge and not easily acquired;

- When used in business, it will give the holder of the trade secret an advantage over those who do not hold or use that trade secret;

- The owner must keep the trade secret confidential by taking necessary measures to prevent it from being disclosed and easily accessible.

Thus, a protected trade secret must satisfy the basic conditions of creativity, usefulness and confidentiality.

Trade secrets are creating great economic development advantages for businesses, especially in the context of unfair competition acts appearing more and more with different scales and tricks. The provisions of the law on trade secrets aim to maintain and encourage ethical standards and fairness in trade, creating incentives for innovative businesses by protecting the time and significant capital invested in developing innovations that bring competitive advantages, both technically and commercially, especially those that are not patented or do not meet the conditions for patenting.

Because of the important functions of trade secrets in commercial business, owners of intellectual property rights to trade secrets are always expected to promote activities of transferring the right to use trade secrets. Vietnamese law stipulates that the transfer of the right to use trade secrets is when the owner of the right to trade secrets allows other organizations and individuals to use the trade secrets in the following forms of behavior:

- Applying trade secrets to produce products or provide services or trade goods;

- Selling, advertising, storing for sale, importing products produced by applying the transferred trade secret.

Trade secrets are automatically protected on the basis of legally obtaining the trade secret and keeping it confidential.

Therefore, the scope of protection of trade secrets is different in terms of protection period compared to other IP objects protected on the basis of granting protection certificates by competent state agencies. Accordingly, trade secrets are protected indefinitely and it lasts until the trade secret is disclosed to the public. Trade secrets are also protected within the territory of Vietnam like other IP objects. Therefore, contracts for the use of trade secrets can be transferred indefinitely and within the territory of Vietnam.

Due to the confidential nature of trade secrets, when transferring the right to use a trade secret, the owner of the intellectual property rights must note that information about the trade secret must be kept confidential. The confidentiality of this information is agreed upon by the two parties participating in the contract to transfer the right to use, in accordance with the rights and interests of the parties.

2.1.3 Contents of the contract for transferring the right to use the SHCN object

The content of the contract for using the SHCN object includes:

 Full name and address of the assignor and assignee

Accordingly, the content of the contract for transferring the right to use an intellectual property object must clearly state the full name and address of the transferor and the transferee; the name and address of the representative organization of each party (if any).

 Basis for transferring the right to use intellectual property objects

A contract for the use of an IP object only becomes legally effective if the transferor has the right to transfer the right to use. If the transferor is the owner of the IP right, the contract must clearly identify the protection certificate owned by the transferor through the name of the protection certificate, certificate number, date of issuance of the certificate, and validity period of the certificate (if the right is transferred).

SHCN for SHCN objects arises on the basis of granting protection certificates by competent authorities). In case the SHCN object is automatically protected, the transferor only needs to state that he is the owner of the SHCN object and must prove that ownership when there is a dispute. If the transferor is the person to whom the legal ownership of the SHCN objects is transferred through a contract for transferring the right to use the SHCN object, the status of the transferor must also be confirmed with the following information: name, date of signing, registration number (if any) and effective period of the contract for transferring the right to use the superior through which the right to use the SHCN object is granted to the transferor.

 Contract type

The contents of the contract for transferring the right to use an IP object must include provisions on the type of contract used. It is an exclusive or non-exclusive license contract, a secondary contract or a direct transfer contract between the IP owner and the party receiving the transfer of the right to use. The types of contracts for transferring the right to use an IP object have been presented in Chapter I of the thesis, the form of the contract for transferring the right to use an IP object.

 Scope of contract for transferring the right to use intellectual property objects

The scope of transfer of the right to use an IP object includes: the scope of limitations on the transferred usage acts and the territorial scope in which the transferee has the right to exploit the IP object for which the right to use is transferred.

First , the limitation on the acts of use for which the right to use is transferred (limitation of the right to use).

Limitation on use is understood as the licensor allowing the licensee to perform (all or some of the uses)