Acquiring a trademark, taking an exclusive patent license, or assigning an industrial design — every transfer of industrial property rights in Vietnam connects to one mandatory (or strongly advisable) procedure: registering the contract with the IP Office. Many businesses sign the contract and “file it away,” only to discover in a dispute that their contract has no effect against third parties — or never took effect at all.
This article is a comprehensive guide to registering assignment contracts and license (right-to-use) contracts for industrial property rights under current law.
1. Assignment vs licensing
- Assignment (Articles 138–140, Intellectual Property Law): transfer of ownership — the assignor exits, the assignee becomes the new title holder;
- Licensing / transfer of the right to use (Articles 138, 144): the owner retains the right and authorizes another party to use the industrial property subject — exclusively (only one licensee, the owner itself excluded within the granted scope) or non-exclusively.
This distinction directly determines the registration requirement — the point businesses misunderstand most.
2. When is registration mandatory? The validity rule (Article 148)
- Assignment contracts: registration is MANDATORY for validity. Under Article 148.1, for industrial property rights established through registration, an assignment contract takes effect only once registered with the state authority for industrial property rights. Unregistered = no transfer effect;
- License contracts: valid as agreed between the parties (Article 148.2) — but have legal effect against third parties only once registered (Article 148.3), except trademark license contracts. In other words: unregistered, a license still binds both parties but cannot be invoked against third parties;
- A license contract automatically terminates if the licensor’s industrial property right terminates (Article 148.4).
3. The registration dossier (Article 149)
- Declaration in the prescribed form — use the new forms issued with Circular 10/2026/TT-BKHCN (effective 01/4/2026);
- Original or valid copy of the contract — multi-page contracts must have each page countersigned or giáp-lai stamped; foreign-language contracts need a Vietnamese translation;
- Original protection title — for assignment of industrial property rights;
- Written consent of co-owners — where the right is jointly owned;
- Fee payment receipts;
- Power of attorney — if filed through an industrial property representation organization.
4. Procedure and timeline at the IP Office
Under Article 59 of Decree 65/2023/ND-CP (as amended in 2026):
- Step 1 — Filing with the IP Office (directly or via an IP representative);
- Step 2 — Examination: processing time is 02 months (excluding time the filer takes to remedy deficiencies). Common deficiencies: invalid declaration, assignor not the title holder, subject no longer within protection term or under dispute, contract missing mandatory contents under Articles 140/144;
- Step 3 — Recordal: a decision recording the assignment (for assignment contracts) or a decision granting the Certificate of registration of the right-to-use contract (for licenses); entry into the National Register of Industrial Property;
- Step 4 — Publication of the decision in the Industrial Property Official Gazette within 02 months of issuance.
Note: if the parties develop a dispute over the contract during processing, the IP Office will suspend examination until the dispute is resolved.
5. Practical points businesses often miss
- Each dossier records only one assignment step — multi-step transfers need separate dossiers per step;
- Trade secret transfer contracts are not registered — trade secrets are protected through confidentiality, not registration;
- Copyright assignment/license registration goes to the Copyright Office — a different authority and procedure; do not file with the IP Office;
- Always verify the validity status of the title and the transferor’s entitlement before signing — expired or disputed titles lead to refusal.
Need drafting or review of an IP license/assignment contract, or registration with the IP Office? Contact us for advice.
Prepared by the FLAW AI Legal Council. This draft is pending QA Council review before submission for approval; information is for reference only and does not replace legal advice for your specific case.