South-East Asia IPR SME Helpdesk

Case Study 53 - Patent infringement lawsuits against two Vietnamese pesticide producers

Background

A multinational European life sciences giant holds a patent in Vietnam for a state-of-the-art insecticidal combination. In 2011, the company was made aware of various pesticides produced by local entities that contained the patented insecticidal combination. The European company worked with the Inspectorate of the Ministry of Science and Technology (MOST) and other administrative enforcement bodies, requesting that they take action against the infringers. However, given certain issues in dealing with infringement in sensitive fields such as agriculture, as well as a lack of precedent in enforcing patent infringement, the competent authorities were reluctant to take action. The European company decided to start a civil lawsuit to resolve the case.

Action taken

On 13 August 2013, two civil lawsuits against two major local pesticide producers were brought before the court. These were the very first two cases of patent infringement that Vietnamese courts had ever dealt with.

The first case was brought to Ho Chi Minh City Court, and achieved an initial landslide victory in February 2015. The infringer appealed, and the appeal litigation was completed in the spring of 2016, with the European company’s victory affirmed by the Ho Chi Minh City Court of Appeals.

The Vietnamese company had tried to delay the proceeding by filling a nullity suit, but the court agreed with the plaintiff that the patent was valid even though certain technical terms had been “Vietnamized” in translation, in compliance with the current practice of the IP Office, rather than appearing in international chemical terms.

Based on the judgment, the European company preceded with the execution of the decision and also asked the Plant Protection Department of Vietnam to withdraw the registration of the infringing pesticides and not grant any registration for potentially infringing goods during the validity term of the patent.

In the meantime, the second lawsuit against the other Vietnamese company was brought before a court in Long An Province. The court initially seemed willing to protect the Vietnamese company and dismissed the case, however they eventually decided to hear it.

After two trials, on 14 November and 21 November 2017, the judging panel finally announced its decision, siding with the European company and ruling that the defendants clearly committed patent infringement when producing and distributing the pesticides during the validity of the patent. As the Vietnamese company committed infringement, the panel dismissed all of its counter-claims for damages, legal fees and a public apology.

Lessons learned

Although permanent injunctions rendered by the court are not specifically mentioned in Vietnamese law, it is possible to convince a court to ban (future) patent infringement—essentially a permanent injunction—in its ruling against an infringer.

Some companies try to slow down the enforcement of the law by requesting the invalidation of the patent at the IP office. However, it’s not mandatory for a civil court to wait for the decision of the IP office before giving a judgment.

Reference: Tilleke & Gibbins, Vietnam

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