IP Law · 20.11.2024

PATENT LITIGATION LAWYER IN VIETNAM – UNILAW

PATENT LITIGATION LAWYER IN VIETNAM – UNILAW In the rapidly developing pharmaceutical and technology sectors of Vietnam, protecting industrial property rights, especially patents, has become a survival factor for multinational corporations. As an experienced intellectual property…

Lawyer UnilawReading time: 9 min

By Dr. Bui Duc Anh and Lawyer Nguyen Nhu Hai – UniLaw LLC

PATENT LITIGATION LAWYER IN VIETNAM – UNILAW

In the rapidly developing pharmaceutical and technology sectors of Vietnam, protecting industrial property rights, especially patents, has become a survival factor for multinational corporations. As an experienced intellectual property attorney, we have observed that even when a foreign investor holds a global patent, enforcing those rights against local manufacturers requires a deep understanding of both local litigation procedures and international standards. A prominent example of this complexity can be seen in the multi-year legal battle between Novartis (a Swiss corporation) and a Vietnamese pharmaceutical company regarding the active ingredient Vildagliptin.

The Vildagliptin Dispute: Protecting Pharmaceutical Innovations in Vietnam

Novartis is the rightful owner of Patent No. 5529 in Vietnam, which protects the active ingredient Vildagliptin used in treating type 2 diabetes. In early 2015, the Swiss giant discovered that a Vietnamese pharmaceutical company was manufacturing and distributing a drug product named “Vigorito,” which contained the protected Vildagliptin ingredient without authorization. Novartis immediately engaged a vietnam intellectual property lawyer to initiate administrative and then civil proceedings.

The Inspectorate of the Ministry of Science and Technology (MOST) initially intervened, concluding that the local company’s actions constituted an infringement of Novartis’s patent. However, the case escalated into a civil lawsuit at the Provincial People’s Court of Binh Duong when the defendant argued that their product’s crystalline form did not fall within the scope of protection and that the patent itself was nearing expiration. Despite these challenges, the court ultimately upheld the patent owner’s rights, ordering the local manufacturer to pay compensation and issue a public apology. This case highlights why having a specialized vietnam IP lawyer is essential to navigate technical evidence like molecular structures and diffraction charts during a trial.

Legal Foundations for Enforcing Patent Rights in Vietnamese Courts

To succeed in a patent infringement lawsuit, the plaintiff must rely on several core articles of the Law on Intellectual Property of Vietnam. Under Clause 1 of Article 123 and Clause 1 of Article 125, the owner of a patent has the exclusive right to use the invention and, more importantly, the right to prevent any third party from using that invention without permission.

This “right to prevent” means that as a patent holder, you can legally stop others from manufacturing, selling, importing, or even advertising products that incorporate your technology. Article 126.1 further clarifies that any act of using a protected invention during its validity period without the owner’s consent is considered an infringement. If you find a competitor using your technology, these provisions give you the power to demand that they stop immediately and pay for the damage they have caused.

In the Novartis case, the court applied Article 202 of the Law on Intellectual Property to grant various civil remedies. Specifically:

Compulsory Cessation: The court declared the defendant’s acts as infringing and required them to stop manufacturing and distributing the product.
Damages and Costs: The defendant was ordered to pay 500,000,000 VND in material damages and 300,000,000 VND to cover the plaintiff’s reasonable legal fees.
Public Remediation: The manufacturer was forced to issue a public apology and rectification in a specialized medical journal for three consecutive issues.

For businesses, this legal framework means that your investment in research and development (R&D) is not just a sunk cost; it is a legally enforceable asset. However, the burden of proof lies with the plaintiff. Under Article 203, you must provide the patent certificate and evidence of the infringing act, such as samples of the counterfeit product or inspection reports from competent authorities. This is where a vietnam intellectual property lawyer plays a crucial role in gathering evidence and presenting technical comparisons to the judges.

The complexity of patent litigation in Vietnam often lies not in the text of the law itself, but in the highly technical interpretation of evidence and the procedural nuances of expert testimony. While Part 1 of our analysis focused on the absolute rights of the patent holder, Part 2 will explore the practical challenges of proof, the critical role of expert opinions, and the reality of seeking damages in the Vietnamese judicial system.

The Battle of Expert Opinions: Insights from the Sitagliptin Patent Dispute

A landmark case that illustrates the difficulty of proving patent infringement in Vietnam is the dispute between a major American pharmaceutical corporation (the plaintiff) and a prominent local pharmaceutical manufacturer regarding the active ingredient Sitagliptin, used in diabetes treatment. The plaintiff held Patent No. 7037 and Patent No. 5684, which protected the phosphate salt and the base form of Sitagliptin.

When the intellectual property attorney representing the plaintiff discovered that the local company was distributing “GETSITALIP” products, they initiated litigation. The central question was whether the local product’s active ingredient was technically “equivalent” or “identical” to the protected molecular structure. Initially, the plaintiff obtained an expert opinion from the Vietnam Institute of Intellectual Property Sciences (VIPRI) asserting that the local product indeed contained Sitagliptin phosphate monohydrate, which matched the patent.

However, during the appeal process, the case took a significant turn. The court highlighted a critical procedural flaw: the expert opinion provided by the plaintiff had been conducted without a physical sample of the defendant’s product at that specific time, relying instead on registered names or older records. The appellate court ultimately ruled that the first-instance court’s reliance on this expert report was premature, as it did not satisfy the strict requirements of Article 203 regarding the burden of proof and the physical verification of infringing factors.

This case serves as a warning for any vietnam intellectual property lawyer: a patent litigation strategy is only as strong as the physical evidence and the procedural integrity of the expert testimony. Winning a case requires not just showing that a competitor uses a similar name, but providing a technical comparison that survives the scrutiny of “procedural legality”.

Expert Testimony under Article 201: Evidence or Suggestion?

To understand why the Sitagliptin case was so contentious, one must look at Article 201 of the Law on Intellectual Property regarding Giám định (Intellectual Property Assessment/Expert Opinion). The law states that an expert opinion is “one of the sources of evidence for the competent authority to handle the case”.

Specifically, Clause 5 of Article 201 clarifies that an expert conclusion does not conclude whether an act constitutes “infringement” or “a dispute”. Instead, it should only provide technical findings—such as whether a chemical formula in Product A is identical to the formula in Patent B. The final decision on whether an act is an “infringement” rests solely with the Judge.

In practice, however, Vietnamese courts depend heavily on these assessments. This creates a “reality gap”:

The Law Says: Expert opinions are just one source of evidence, and judges must evaluate them alongside other proofs like witness statements or administrative inspection reports.
The Court Does: In many patent cases, if a vietnam IP lawyer cannot produce a favorable VIPRI assessment, the case is nearly impossible to win. Conversely, if an assessment is procedurally flawed—as in the Sitagliptin case—it can lead to the entire judgment being overturned, even if the technology is actually infringing.

This highlights the importance of the intellectual property attorney’s role in ensuring that any assessment is conducted in full compliance with Article 48 of Decree 105/2006, which requires the presence of witness signatures and proper sample collection protocols to be valid in court.

The Reality of Proof and Article 203: Who Bears the Burden?

Article 203.1 of the IP Law sets a standard rule: the plaintiff (the patent owner) bears the burden of proving that their rights have been infringed. This is often the hardest hurdle in technology or chemical patents where the manufacturing process is hidden behind factory walls.

However, the law offers a special “shift” in the burden of proof for process patents. Under Article 203.4, if the product produced by a patented process is “new,” or if the owner has made reasonable efforts but still cannot determine the competitor’s process, the defendant is forced to prove that their product was made by a different process.

This is a powerful tool for a vietnam intellectual property lawyer. In the pharmaceutical sector, if your client owns the patent for a specific crystallization process, you can demand that the local manufacturer disclose their methodology if you can show your process was the only known way to achieve that specific purity or form at the time of the patent. If the defendant fails to prove their process is unique, the court may presume infringement.

Calculated Damages: Why is 500 Million VND the “Golden Number”?

When foreign investors look at Vietnamese IP judgments, they often notice that the requested material damages are frequently 500,000,000 VND (approx. 20,000 USD). Why is this number so common, even for patents worth millions?

The answer lies in the intersection of Article 204 (Principles for determining damage) and Article 205 (Basis for determining damage). Under Vietnamese law, material damage includes:

Loss of property.
Decrease in income and profit.
Loss of business opportunity.
Reasonable costs to prevent or mitigate the damage (including intellectual property attorney fees).

Proving “loss of profit” or “loss of business opportunity” in a Vietnamese court is notoriously difficult. It requires auditing the defendant’s books or providing complex economic data that courts often find speculative. Therefore, many plaintiffs rely on Article 205.1(c), which allows the court to award a “statutory” amount when damages cannot be precisely calculated, capped at 500,000,000 VND.

For a patent holder, this means litigation in Vietnam is often more about market clearance (getting the infringer off the shelves) than it is about financial recovery. However, Article 205.3 also allows you to claim “reasonable attorney’s fees”. As seen in the Servier case, the court awarded 300,000,000 VND just for legal costs, which helps offset the expense of the vietnam IP lawyer.

Conclusion: Strategic Litigation for Long-Term Protection

Enforcing a patent in Vietnam is a multi-layered chess game. It requires a vietnam intellectual property lawyer who can handle molecular diffraction charts as skillfully as they handle the Code of Civil Procedure. The Sitagliptin and Vildagliptin cases show that the courts are becoming more sophisticated, demanding higher standards of technical evidence and procedural perfection.

If your technology is being copied, do not wait for the market to be flooded. Early intervention through administrative inspections or civil litigation can preserve your market share and signal to competitors that your IP is an actively defended asset. At Unilaw, we combine deep technical analysis with rigorous courtroom strategy to ensure your innovations are protected under the full weight of Vietnamese law.

Contact Unilaw today to consult with a specialized intellectual property attorney and secure your competitive edge in the Vietnamese market.