Information technology is one of the pivotal industries that play a crucial role in the economic and social development, not only in Vietnam but also in various countries around the world. Given its nature of generating and utilizing a large amount of information, the protection of intellectual property rights is an issue of great concern for information technology enterprises.
In this article, HM&P will provide insights into intellectual property rights as they relate to information technology enterprises, particularly with respect to the protection of computer programs produced by these enterprises.
Dispute over intellectual property ownership of computer programs within enterprise ownership in reality
Intellectual property rights are the rights of an organization or individual to intellectual property, including copyright and copyright-related rights, industrial property rights, and plant variety rights. Information technology is a sector of high-tech economic and technical activities that produce and provide information technology products, including hardware, software, and digital content.
In practice, due to the nature of intellectual property rights as rights over human-created intellectual creations, controlling the actions of individuals and organizations that infringe these rights is not a straightforward matter.
For example, a dispute that arose in 2018 between VayMuon Joint Stock Company ("VayMuon Company"), a subsidiary of NextTech Group, and a startup company called Fiin. In May 2018, VayMuon Company discovered that Fiin was about to launch a service similar to VayMuon.vn. Notably, some of Fiin's executives were former employees of NextTech Group. This led VayMuon Company to suspect that these former employees had taken elements of VayMuon.vn's design and software to create a new product[1].
It is obvious that during the term of their employment with a company, the employees who are directly involved in the creation of the products or who have information about the products can easily gain access to the company's intellectual property. Subsequently, they may engage in acts that violate intellectual property rights by infringing on copyrights related to the company's designs and software..
Ownership of intellectual property for products created by employees under employment contract
As stipulated in the Labor Code 2019, “individuals working for employers under an agreement are paid a salary, and are subject to the management, administration, and supervision of the employer”. Simultaneously, Article 222 of the Civil Code 2015 states that “persons engaged in creative activities have ownership rights over the property acquired from creative activities as regulated by the Law on Intellectual Property”. Thus, according to these regulations, the determination of the owner of intellectual property rights over products is carried out in accordance with the provisions of the Law on Intellectual Property.
Regarding copyright, Article 39 of the Law on Intellectual Property 2005 dictates that the entity that assigns creative tasks to the author, who is a member of the organization, is the owner of all property rights (rights to financial benefits from the work) and the right to publish or allow others to publish the work, unless otherwise agreed.
Thus, in the scenario where an employee creates intellectual property products such as software, hardware, etc., while working for an information technology company, the owner of the work will be the information technology company. This includes the right to publish or permit others to publish the work[2], as well as other property rights as set forth in Article 20 of the Law on Intellectual Property 2005 (unless otherwise agreed). The employee is the author, and in such case, the employee shall be entitled to the remaining personal rights, including (i) the right to title the work; (ii) the right to use the employee real name or pseudonym on the work, which must be attributed to the employee when the work is published or used; and (iii) the right to protect the integrity of the work by preventing others from distorting or modifying the work in any way that could harm the employee's reputation[3].
Copyright registration for computer programs
The Law on Intellectual Property 2005 provides the following definition[4]:
“A computer program is a set of instructions expressed in the form of commands, codes, diagrams and other forms which, when incorporated into an apparatus operated by computer programming languages in a manner that is enables a computer or apparatus to perform a task or achieve a specific result. Computer programs are protected in the same manner as literary works, whether they are source codes or machine codes”.
In addition, the Law on Intellectual Property designates computer programs as one of the categories of works protected by copyright[5]. Unlike other intellectual property rights, copyright arises as soon as the work is created and expressed in a certain tangible form, regardless of content, quality, form, mean, language, whether it’s been published or not, or whether it’s been registered or not[6]. Thus, a computer program is protected under the law once it is created and expressed in a specific tangible form, regardless of its content, quality, form, means, language, whether it's published or not, or whether it's registered or not. Thus, a computer program is protected by law as soon as it is created and expressed in a certain tangible form, without the need for registration. However, as mentioned above, the intellectual property sector is a highly specialized field where it is not easy to prevent individuals and organizations from infringing the intellectual property rights of information technology enterprises. Therefore, in order to protect its interests and establish a solid foundation in case of disputes related to intellectual property rights for computer programs, the owner of a computer program in this case must register the copyright with the relevant state body.
Protection of computer programs by patent
Clause 2 Article 59 of the Law on Intellectual Property 2005 stipulates that computer programs are not protected by patent. However, according to the Guidelines for Examination of Patent Applications, issued along with Decision 487/QD-SHTT on 31 March 2010, and Appendix I on Guidelines for Determination of Patentable Subject Matter Relating to Computer Programs, issued along with Decision 6193/QD-SHTT on 31 December 2021 by the National Office of Intellectual Property of Vietnam, if the requested protection sought involves technical features and truly constitutes a technical solution to solve a technical problem using a technical means to achieve a technical effect, it may be protected as a patent[7].
Nevertheless, the protection of computer programs under the patent still has many unclear contents and depends on the different opinions and judgments of the dossier handling department of the competent authorities. Therefore, when registering the protection of computer programs under the patent, enterprises should thoroughly study the regulations and specific notices mentioned in the above-mentioned Guidelines issued by the National Office of Intellectual Property of Vietnam.
In general, registering a copyright is more convenient in terms of basis, procedure and processing time compared to registering a computer program as a patent. While the duration of patent registration in Vietnam is at least 37 months[8] (including the period of publication of the application and content examination), the registration of copyright takes about 15 working days[9] (enterprises should note that the actual processing time may be longer due to the considerable volume of pending applications at the competent authority). In addition, the cost of copyright registration is also lower than that of patent registration. Specifically, according to Article 4 of Circular 211/2016/TT-BTC, the fee for registering copyright for computer programs is 600,000 VND, while the fee for the entire patent registration process is approximately 1,770,000 VND according to the Industrial Property Fee Schedule issued with Circular 263/2016/TT-BTC.
In conclusion, determining the enterprise as the rightful owner of the property rights and the right to publish or allow others to publish the computer programs, while conducting procedures to register the copyright or patent, registration procedures, provides the enterprise with a solid foundation to protect itself in case of disputes with employees (the individuals who have created these products) or other enterprises. This is crucial for companies because litigation, particularly in the area of intellectual property, often consumes significant company resources.
[1] https://viettimes.vn/nguoi-dong-sang-lap-fiin-da-chinh-thuc-xin-loi-nexttech-va-de-xuat-boi-thuong-vat-chat-tuong-trung-post81810.html, accessed on 28 August 2023.
[2] Clause 3 Article 19 of the Law on Intellectual Property 2005.
[3] Clause 1, 2, 3 Article 19 of the Law on Intellectual Property 2005
[4] Clause 1 Article 22 of the Law on Intellectual Property 2005.
[5] Point m Clause 1 Article 14 of the Law on Intellectual Property 2005.
[6] Clause 1 Article 6 of the Law on Intellectual Property 2005.
[7] Article 5.8.2.5 Examination Guidelines for Patent Applications, issued along with Decision 487/QD-SHTT on 31 March 2010 by the National Office of Intellectual Property of Vietnam.
[8] Clause 2 Article 110, Point a Clause 2 Article 119 of the Law on Intellectual Property 2005.
[9] Article 52 of the Law on Intellectual Property 2005.
