Common legal risks in patent assignment and preventive measures

In research, manufacturing, and commercial activities, patent assignment is one of the commonly adopted methods for exploiting the value of intellectual property assets by individuals and enterprises. However, not everyone fully understands the legal regulations governing the conditions, procedures, as well as the rights and obligations of the parties involved in patent assignment transactions. Thus, a comprehensive understanding of the legal provisions relating to patent assignment is essential for minimizing risks and safeguarding the lawful rights and interests of the parties throughout the transaction process.    

I. Current issues relating to patent assignment

In practice, within research, business operations, and the commercialization of intellectual property assets, patent assignment has become increasingly common as a means of exploiting the economic value of patents. Nevertheless, many individuals and enterprises still lack a full understanding of the legal regulations governing the transfer of patent ownership rights.

Some issues commonly encountered in practice include:

• Patent assignment agreements are drafted without sufficient contents as required by law, thereby leading to potential disputes between the parties.
• The parties conduct the assignment but fail to register the agreement with the competent State authority, resulting in the assignment being unenforceable against third parties.
• Confusion between patent assignment and patent licensing, leading to incorrect determination of the rights and obligations of the parties involved in the transaction.
• Failure to implement procedures for recording the new patent owner on the patent protection title after the assignment.

II. Concept of patent assignment

1. What is patent assignment?

Under Intellectual Property Law, a patent is defined as a technical solution in the form of a product or process intended to solve a specific problem through the application of natural laws.

Pursuant to Article 138 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025), the owner of industrial property rights has the right to assign its ownership rights to another organization or individual through a written agreement.

Accordingly, patent assignment may be understood as a transfer of all ownership rights relating to a patent from a patent owner to another organization or individual through an assignment agreement in accordance with the law.

Once the assignment has been lawfully completed and recorded by the competent State authority, the assignee shall become the new owner of the patent and shall have the right to exploit, use, and dispose of the patent in accordance with the law.

2. Which entities are entitled to assign patents?

Pursuant to Clause 1, Article 138 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025), regarding the right to assign industrial property rights, owners of industrial property objects are entitled to assign their ownership rights to other organizations or individuals through written agreements.

Accordingly, the entity entitled to assign a patent is the lawful owner of such patent. Patent owners may include:

• The inventor, where such inventor is concurrently the patent owner;
• Organizations or individuals that have acquired patent ownership rights through agreements or in accordance with the law;
• Organizations or individuals granted patent ownership rights by the State in accordance with intellectual property regulations.

In addition, where a patent is under joint ownership, the assignment must obtain the consent of all co-owners unless otherwise agreed by the parties in accordance with the law.

3. Is patent assignment a form of transfer of ownership rights?

Patent assignment constitutes a form of transfer of ownership rights relating to patents under intellectual property law. Pursuant to Clause 2, Article 138 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025):

• The owner of an industrial property object shall have the right to assign its ownership rights to another organization or individual.

Under this provision, upon execution of a patent assignment agreement, ownership rights to the patent are transferred from the former owner to the assignee. Once the assignment has been registered with the competent authority, the assignee becomes the new owner of the patent.

Furthermore, pursuant to Article 148 of the Law on Intellectual Property, an agreement on assignment of industrial property rights shall only be enforceable against third parties upon registration with the State authority responsible for industrial property rights management.

III. Legal regulations relating to patent assignment

1. What conditions must be satisfied for a patent to be assigned?

Patent assignment must satisfy the conditions prescribed by the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025), specifically as follows:

• The assigning party must be the lawful owner of the patent: Pursuant to Clause 1, Article 138, owners of industrial property objects are entitled to assign their industrial property ownership rights to other organizations or individuals.
• The assignment must not fall within cases restricted by law: Pursuant to Clause 1, Article 139, industrial property rights may not be assigned if such assignment is likely to cause confusion regarding the characteristics or origin of goods or services bearing trademarks, or distort the nature of the industrial property object.
• The assignment agreement must be made in writing: Pursuant to Clause 1, Article 140, agreements on assignment of industrial property rights must be established in writing.
• The assignment agreement must be registered with the competent authority: Pursuant to Clause 2, Article 148, agreements on assignment of industrial property rights shall only be enforceable against third parties upon registration with the State authority responsible for industrial property rights management.

2. What are the essential contents required in a patent assignment agreement?

Pursuant to Article 140 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025), agreements on assignment of industrial property rights (including patents) must be made in writing and contain the following principal contents:

• Full names and addresses of the assignor and the assignee;
• Basis for the assignment of ownership rights, including information relating to the patent protection title (protection title number, issuance date, and issuing authority);
• Assignment price and payment method, including payment form, payment duration, and related conditions;
• Rights and obligations of the parties in implementing the patent assignment agreement;
• Provisions regarding liability for breach of contract and dispute resolution mechanisms (if any).

In addition to the above essential contents, the parties may agree on other provisions consistent with the law to clarify the scope of patent ownership transfer, responsibilities for registration of the agreement, and obligations arising after the assignment.

3. Procedures for patent assignment

Pursuant to Article 138 and Clause 2, Article 148 of the Law on Intellectual Property 2005 (as amended by Clause 9, Article 2 of the Law on Insurance Business and the ămended Law on Intellectual Property 2019), patent assignment must be established through a written agreement and registered with the State authority responsible for industrial property rights management. Patent assignment procedures are generally conducted as follows:

- Step 1: Execution of the patent assignment agreement

The parties execute a written agreement on assignment of patent ownership rights, which must include the principal contents prescribed under Clause 1, Article 140 of the Law on Intellectual Property, such as information on the parties, basis for assignment, assignment price, and rights and obligations of the parties.

- Step 2: Preparation of the dossier for registration of the assignment agreement

Pursuant to Article 58 of Decree No. 65/2023/ND-CP, the dossier for registration of an agreement on assignment of industrial property rights (including patents) includes:

• Declaration for registration of the agreement on assignment of industrial property rights in accordance with Form No. 01 under Appendix IV;
• One copy of the assignment agreement (original or certified true copy); where the agreement is in a foreign language, a Vietnamese translation must be enclosed;
• Original protection title (where the protection title was issued in paper form);
• Written consent of co-owners (where the patent is jointly owned);
• Power of attorney (where the dossier is submitted through an industrial property representative organization);
• Copy of receipts evidencing payment of prescribed fees and charges.

- Step 3: Submission of the dossier to the competent authority

The dossier for registration of the patent assignment agreement shall be submitted to the Intellectual Property Office of Vietnam under the Ministry of Science and Technology or through an industrial property representative organization in accordance with the law.

- Step 4: Examination and recording of the assignment by the competent authority

Upon receipt of the dossier, the competent authority shall examine its validity. If the dossier satisfies all statutory requirements, the patent assignment shall be recorded in the National Register of Industrial Property.

- Step 5: Publication and establishment of the effectiveness of the assignment

After registration, information relating to the patent assignment shall be published in the Industrial Property Official Gazette. Pursuant to Clause 1, Article 148 of the Law on Intellectual Property 2005 (as amended by Clause 1, Article 2 of the Law on Insurance Business and the amended Law on Intellectual Property 2019), for industrial property rights established on the basis of registration (including patents), the assignment agreement shall only take effect from the date of registration with the state authority responsible for industrial property rights management.

4. By which methods are disputes arising from patent assignment agreements commonly resolved?

Disputes arising from patent assignment agreements may be resolved through the following methods:

• Negotiation between the parties: The parties to the agreement may directly discuss and negotiate to reach a mutually agreed dispute resolution solution.
• Mediation: Disputes may be resolved through a neutral third party assisting the parties in reaching an agreement. 
• Commercial arbitration: Where the agreement contains an arbitration clause, the parties may request dispute resolution at an arbitration institution in accordance with the Law on Commercial Arbitration 2010.
• Court proceedings: Where the parties cannot resolve the dispute through negotiation or mediation, or where there is no arbitration agreement, either party may initiate legal proceedings before a competent court in accordance with the Civil Procedure Code 2015 to request resolution of disputes relating to the patent assignment agreement.

IV. Questions relating to patent assignment

1. After a patent assignment, does the assignor retain the right to exploit the patent?

Pursuant to Clause 1 Article 138 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025), a patent owner has the right to assign its ownership rights to another organization or individual.

Accordingly, once the assignment agreement takes effect and has been registered in accordance with the law, ownership rights to the patent shall belong to the assignee

Thus, the assignor no longer retains the right to exploit the patent, unless permitted by the assignee through a patent licensing agreement in accordance with Article 141 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025).

2. Does patent assignment result in a change of ownership information on the protection title?

Where a patent assignment is lawfully conducted, the ownership information stated on the protection title shall be amended accordingly.

Pursuant to Clause 3 Article 148 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025), agreements on assignment of industrial property rights shall only be enforceable against third parties upon registration with the State authority responsible for industrial property rights management. Upon registration, the Intellectual Property Office of Vietnam shall record the new owner on the patent protection title.

3. Does patent assignment lead to any tax obligations or registration fees?

Patent assignment may lead to tax obligations and fees for registration of the assignment agreement in accordance with the law.

First, with respect to tax obligations, income derived from patent assignment is regarded as royalty income and is subject to personal income tax under Clause 7 Article 2 of Circular No. 111/2013/TT-BTC. This provision stipulates that royalty income includes income received from the assignment or transfer of ownership rights or rights to use intellectual property objects, including patents. Where the assigning party is an organization, such income may also be subject to corporate income tax in accordance with tax regulations.

Second, regarding fees and charges, pursuant to Clause 1 Article 148 of the Law on Intellectual Property 2005 (as amended by Clause 9 Article 2 of the Law on Insurance Business and the amended Law on Intellectual Property 2019), agreements on assignment of industrial property rights (including patents) shall only take effect upon registration with the State authority responsible for industrial property rights management. Accordingly, when implementing registration procedures for the assignment agreement at the Intellectual Property Office of Vietnam, the parties are required to pay the prescribed fees and charges relating to industrial property registration.

4. Can patents be assigned through an asset auction?

A patent constitutes a type of intellectual property asset and therefore may be assigned through an asset auction in accordance with the law.

Pursuant to Clause 1 Article 105 of the Civil Code 2015, assets include objects, money, valuable papers, and property rights. Intellectual property rights relating to patents are regarded as property rights and may therefore become the subject matter of civil transactions. In addition, under Article 35 of the Law on Asset Auction 2016, property rights are among the categories of assets permitted to be auctioned.

Furthermore, the assignment of patent ownership rights must be conducted through a written agreement and shall only be enforceable against third parties upon registration with the state authority responsible for industrial property rights management, in accordance with Article 138 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025).

As patents constitute property rights, they may be assigned through asset auctions. However, after a successful auction, the parties must still execute a patent assignment agreement and register it with the Intellectual Property Office of Vietnam in order for the transfer of patent ownership rights to have legal validity.

5. Is it possible to assign multiple patents under a single agreement?

The law does not restrict parties from assigning multiple patents under the same agreement, provided that such patents are under the lawful ownership of the assigning party.

Pursuant to Clause 2 Article 138 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025), industrial property rights relating to patents may be assigned through a written agreement. This provision does not limit the number of industrial property objects included in a single agreement.

However, pursuant to Article 140 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025), the assignment agreement must clearly specify the assigned objects, including the patent name, protection title number, or corresponding identifying information.

Accordingly, the parties may assign multiple patents under a single agreement, provided that each patent and its corresponding protection title information are clearly identified to ensure legal validity and facilitate registration procedures at the Intellectual Property Office of Vietnam.

V. Why you should seek legal advice from NPLaw regarding patent assignment issues

• Advising on relevant legal regulations: NPLaw shall provide assistance in interpreting and properly applying the provisions of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022, and 2025) regarding the conditions, scope, and procedures for patent assignment.
• Drafting and reviewing patent assignment agreements: We ensure that agreements contain all mandatory contents required by law while minimizing unfavorable clauses or provisions likely to lead to disputes.
• Assisting with registration procedures before competent authorities: NPLaw may represent clients in implementing registration procedures for assignment agreements at the Intellectual Property Office of Vietnam to ensure that the transaction is enforceable against third parties.
• Advising on dispute prevention and resolution: In the cases of disputes relating to patent assignment agreements, NPLaw may assist with negotiation, mediation, or participation in dispute resolution proceedings in accordance with the law.

The above information is provided for reference purposes only. Should you require detailed advice relating to a specific case, please contact NPLaw Firm for prompt legal consultation.