Conditions for patent protection under Vietnamese law

Is it in accordance with the provisions of the Law on Intellectual Property and documents guiding the implementation of the Law?

The scope of formal examination includes the following tasks: (i) Checking the form of the documents in the application; (ii) Preliminary checking of the content of the documents in the application. (iii) Drawing conclusions on the validity of the application; in case the application is valid, determining the valid filing date and priority date (if any). The work of formal examination of the application is conducted and recorded in the IPAS system.

Second, content assessment . The purpose and scope of content assessment are to assess the protection capability of the subject matter stated in the application according to the protection conditions and determine the scope (volume) of protection.

The application is examined according to the following contents: (i) Assessment of the conformity of the subject matter stated in the application with the type of protection certificate requested to be granted; (ii) Assessment of the subject matter according to each protection condition; (iii) Checking the first-to-file principle. The assessment according to the protection conditions is conducted in turn for each subject matter (if the application includes many subjects while still ensuring consistency). For each subject matter, the assessment is conducted in turn for each protection condition: (i) For patent applications, the assessment is conducted in turn for each point stated in the scope (request) of protection; (ii) For industrial design applications, the assessment is conducted in turn for the design of each product (if the application refers to a set of products); in case of mentioning many options, each option is assessed in turn, starting from the basic option (the first option stated in the application); (iii) For trademark registration applications, the assessment is conducted in turn for each component of the trademark for each goods and services listed in the list of goods and services. The substantive examination of each subject mentioned in the above contents is completed when the subject has been assessed with all protection conditions and there is sufficient basis to conclude that the subject does not meet or meets the conditions.

protection conditions, specifically: (i) Finding reasons to conclude that the subject does not satisfy one/some/all protection conditions; or (ii) Not finding any reasons to conclude that the subject does not satisfy at least one protection condition.

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The content assessment process includes:

- Assess the suitability of the subject stated in the application with the type of patent protection certificate: (i) Determine whether the subject stated in the application is a technical solution or not by examining the set of technical signs of the subject requested for protection stated in each point of the protection request to provide a technical method and/or technical means to solve the identified task to achieve the purpose set by the invention or not. (ii) Determine whether the subject stated in the application is a product or a process according to the technical signs stated in each point of the protection request according to regulations. (iii) Determine whether the subject stated in the application is contrary to social ethics, public order, harmful to national defense and security, that is, it is an object that is not protected by the State according to regulations or is an object that is not protected under the name of an invention.

- Assess the subject of the protection request according to each protection condition. To assess the subject of the protection request according to each protection condition, the examiner needs to carry out the following steps: Analyze the technical solution; Ask the applicant to explain the content of the application documents, correct formal deficiencies (in case the applicant has not been requested to correct such deficiencies during the formal examination stage), clarify the nature or submit supporting documents to prove the solution stated in the application... Reaffirm the classification of the technical solution according to the latest International Patent Classification; Look up the technical status; Examine the right of priority (if necessary) according to the provisions of Article 19 of the Regulation; Check the consistency of the application;

Assess the ability to meet the protection conditions (industrial applicability, novelty, inventive step) of each object requested for protection (if the application includes multiple objects ensuring consistency) in turn according to each point stated in the scope (request) of protection.

3.1.2. Existing problems and limitations

In addition to the initial results achieved such as increasing the number of patents, protecting the rights and legitimate interests of the patent owners themselves. The determination of technical solutions in the form of products or the process of registering for patents from the people and businesses and the reception, processing, appraisal of patent applications, and granting of patents from competent state agencies still have certain limitations and shortcomings. This is partly reflected in the number of rejected patent applications accounting for a significant proportion of the number of patent applications received, processed (appraised). This is due to the fact that the regulations on conditions for patent protection still have some of the following limitations and shortcomings:

Firstly, there is no clear distinction between the concepts of “invention” and “utility solution”. The 2005 Law on Intellectual Property, amended in 2009, only mentions the concept of invention without mentioning utility solutions. Furthermore, only inventions are defined as objects of industrial property rights (Article 3 of the Law on Intellectual Property), while Article 58 stipulates general conditions for protected inventions, stating that inventions can be protected in the form of granting exclusive utility solution patents if they are only novel and industrially applicable (without creative step). Such a provision may not have any impact in practice, but it is unscientific. The shortcomings in legal provisions have been causing difficulties for both innovators and rights-establishing agencies in the process of requesting protection.

Second, according to Article 4 of the Law on Intellectual Property, an invention must be a technical solution, that is, the application of natural laws to solve a specific technical problem. However, in the world, some countries still protect discovered or newly synthesized chemicals. These chemicals themselves (as well as newly discovered gene sequences or newly isolated microorganisms) are not technical solutions, but only their use to solve a specific task (making medicine, making colorants, etc.) is a technical solution. However, this does not prevent the above substances from being protected as chemical formulas without any specific function, that is, not as technical solutions. Thus, the law's provision that inventions are technical solutions has invisibly limited the protected objects.

Third, intellectual property law stipulates that the novelty of an invention is considered on a global scale. However, due to limitations in the ability to search for patent information (insufficient details, inaccessibility to data repositories of some countries, etc.), it is possible that a patent has been granted but then has to be revoked because it is no longer novel. Thus, providing funding for the intellectual property office to access search information repositories around the world is an issue that needs further attention.

Fourthly, Circular 01/2007/TT-BKHCN issued on February 14, 2007 is considered an important document in determining the process of establishing IP rights for inventions. However, in the process of application, it has revealed a number of shortcomings and limitations that conflict with the IP law. First, throughout the provisions of the Circular, in a number of articles, different viewpoints are revealed, requiring a unified understanding and application. Specifically:

Firstly, Article 23.3b on the uniformity of patent applications lists cases that can be considered uniform:

a) Requesting protection of a single subject matter; or (b) Requesting protection of a group of technically related subjects, expressing a single common creative intention, falling under the following cases:

(i) An object used to create (produce, manufacture, prepare) another object;

(ii) One object is used to implement another object;

(iii) One object is used to use the other object;

(iv) Objects of the same type, with the same function to ensure the same result [6, Article 23.3b]

This approach is incomplete and will be controversial when iterating cases beyond the above examples.

Second, in Article 23.6, the provision on the description of the invention stipulates that the patent application must briefly state the subject (objects) to be registered. There is no similar provision in the requirements, but only the provision that the patent name must be “clearly and concisely stated, specifying the technical specifications of the invention,” rather than “briefly stating the subject”. Such a provision will cause difficulties for applicants when the application contains many inventions (many subjects or many independent protection requests for different subjects), especially inventions in the field of microbiology. Therefore, the requirement on the patent name is difficult to meet “briefly”.

Third, at point b (ii), Clause 25.3 mentions the diagnostic method as a protected process. However, Clause 7, Article 59 of the IP Law does not state these objects as inventions. Thus, there is a contradiction in the understanding of “diagnostic method” between the IP Law and Circular 01/2007/TT-BKHCN.

Fourth, Point b (i) (ii), Clause 25.5 stipulates on the assessment of novelty: (i) Two technical solutions are considered identical when they have all the signs (specifically,

(ii) two technical solutions are considered similar when most of the basic signs (characteristics) are identical or equivalent (interchangeable); Can this term “equivalent” (interchangeable) be understood as “equivalent invention” as defined for the assessment of patent infringement?

Fifth, Point d (ii) Clause 25.5 stipulates that the assessment of the novelty of the basic features of the examined solution is compared with the features of the reference solution, in which “ the basic features of the technical solution stated in the application, in the protection certificates are shown in the scope (request) of the invention protection”. This is a shortcoming of the Circular when it does not specifically stipulate what type of protection certificate is mentioned because if it is a certificate presented as a reference, the comparison cannot be conducted only with the features revealed in the “scope (request) of protection” of these documents but with everything revealed in the entire text of those certificates.

Sixth, Point d (i), Clause 24.4 states: “ The basic signs of a technical solution may be the characteristics of function, use, structure, connection, composition... together with other basic signs forming a necessary and sufficient set to determine the nature (content) of the object”. How is the concept of “necessary and sufficient set” correctly understood in the process of law application?

Seventh, at point a(ii) clause 25.4, regulations on assessment of industrial applicability as prescribed in Article 62 of the Law on Intellectual Property:

Information on the nature of the solution together with instructions on the necessary technical conditions are presented clearly and sufficiently to enable a person with average knowledge in the relevant technical field to create, produce or be able to use, exploit or implement that solution [32, Article 62].

The concept of exploitation is not explained specifically here.

Fifth, many provisions on patent protection are not compatible with international conventions.

Looking at our country's intellectual property laws, we see that there are still many regulations that are not compatible with international conventions that Vietnam has been and will be a member of, including regulations on the protection of biotechnology inventions.

Biotechnology is recognized as one of the most promising technologies of the future. This technology creates breakthroughs in medicine and brings new opportunities in food and energy production as well as solutions to environmental pollution. Globally, biotechnology is recognized for its importance and is protected by law. The practice of the European Union and the United States shows that: protecting creativity in the field of biotechnology brings great benefits to many areas of life as well as economic and social development. International treaties protecting biotechnological inventions were formed very early. The most basic international conventions related to the field of biotechnology include: the Paris Convention for the Protection of Industrial Property in 1883; the International Convention for the Protection of New Varieties of Plants (UPOV Convention) in 1961; Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedures 1977; Convention on Biological Diversity 1992; Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) 1997. However, Vietnam has not joined any international conventions in the field of biotechnology and has not issued independent legal documents to protect biotechnological inventions.

Previously, objects that could be protected with the title

The meaning of the invention includes product, process and use (new indication)

– Protection requirements referring to “use” are also known as Swiss case. The 2005 Intellectual Property Law has limited the scope of protected objects under the name of invention, accordingly, a protected object can only be a product or a process. Thus, it can be understood that the “use-patent” object has been “removed” from the list of protected objects under the name of invention. This is to protect the interests of the people, allowing people to use new advances and discoveries to serve their own interests. However, since the 2005 Intellectual Property Law came into effect, this new provision has again revealed its “harmful effects”.

The elimination of “use patents” protected under the name of inventions has invisibly deprived society of the opportunity to know the new uses of a certain product or active ingredient, and reduced research activities on new effects of a known active ingredient, compound or product. Scientific experiments show that to find a new use or a new indication for a product or substance also requires research and exploration activities, which also drains mental and physical strength and investment costs just like the effort to invent a “product” or “process”. For example, if previously the subject as stated in the following protection request was protected under the name of invention “the use of active ingredient A to increase crop yield” or “the use of active ingredient with formula I to kill harmful insects”. Thus, if the “use patent” is not protected, this will cause the inventors to remove this subject from the list when filing an application for exclusive patent rights in Vietnam. Thus, the people will not know about this new use. Especially when the subject of use mainly focuses on the new indication or new use of a compound or active ingredient to prevent harmful insects and fungi.

Conditions for patent protection under Vietnamese law - 10

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