Conditions for patent protection under Vietnamese law

This principle has the advantage of being easy to determine because the filing date is clearly stated in the application for protection and only concerns the subject who filed the application early, not the person who created the invention first. Parallel to this principle, in the world (in the United States) there is also a principle that only concerns the first person who created the invention. However, this system reveals limitations: (i) Should a patent be granted to the person who comes up with a technical solution without filing an application and waits until someone else files an application and finds that the technical solution is likely to be patentable before filing an application? (ii) Proving who was the first person to come up with a technical solution is very difficult and in many cases impossible.

Second, it is the priority date of the unit requesting the patent registration. The priority date of the application may be the date of the first filing of the patent application in a country that is a member of the International Convention for the Protection of Industrial Property Rights for Inventions that Vietnam has signed or participated in (for example, applying for priority under the Paris Convention or the International Convention for the Cooperation in the Protection of Inventions - PCT, etc.). The priority date may also be the date on which the subject matter of the technical solution for which the patent is registered is displayed or presented in international or domestic exhibitions. Before the above two times of the patent registration application, all knowledge in the relevant technical field of the invention that has been disclosed in the form of use, documents or any other form in the world, is considered as the state of the art to consider the ability to meet the novelty requirement of the technical solution for which the patent is requested.

The question is to what extent must the information of an invention be disseminated before it is considered publicly disclosed? Clause 1, Article 60 of the Law on Intellectual Property only mentions the spatial scope in which the technical solution is disclosed “ domestic or foreign ” and the forms of disclosure of the invention.

“ in the form of use, written description, or any other form ”, but the qualitative level of disclosure of the invention has not been specifically regulated. This is really a challenge not only for Vietnam but also for any country in the world today in establishing the conditions for novelty of inventions.

Previously, Article 4, Clause 1 of Decree 63/CP more or less mentioned the public disclosure of inventions. Accordingly, an invention is considered to have been publicly disclosed if, before the priority date of the invention, the technical solution stated in the application has been demonstrated to the extent that a person with average skill in the relevant field can implement that solution. Referenced sources of technical information include: (i) Information sources related to inventions and utility solutions abroad, from the date of publication; (ii) Other sources of information, with any information carrier (publications, films, magnetic tapes, magnetic discs, optical discs) from the date the information carrier begins to circulate; (iii) Sources of mass information (radio, television, broadcasting). From the date of publication; (iv) Scientific reports, lectures from the date of scientific reporting or lecture; (v) Exhibitions, from the date the object is first displayed.

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Thus, if, before the priority date of the patent application, the content of the invention is clearly disclosed to the extent that, based on that, a person with average skill in the art can easily deduce or immediately implement the technical solution requested for protection, the invention is considered not novel. For example, the invention refers to a burner of a hazardous waste incinerator consisting of a nozzle, a mixing tube, a distribution grid, a flow guide tube, a primary air inlet, a secondary air inlet, and a secondary air inlet. However, another previous document has described a fuel injector with a similar burner structure, through which a person with average skill in the art can easily deduce or immediately implement the technical solution requested for protection.

The relevant technical field can completely apply the above structure to a hazardous waste incinerator. In this case, the technical solution of the invention is considered to have been publicly disclosed and therefore is not new. The disclosure of the invention can be in the form of a written description, publication; through speeches, lectures; through application to production, business activities, offering products on the market; or other forms through which others can access information about the technical solution of the invention.

However, the solution to determine the public disclosure of an invention through a qualitative principle, although having the advantage of being highly generalizable, is extremely difficult to apply in practice in patent examination. The above provision of only general principles does not allow the examiner to accurately and objectively assess the popularity of the disclosed information, thereby assessing the ability to meet the requirements of the novelty condition of the technical solution requested for protection. For example, the invention refers to a type of seal with the ability to automatically refill ink. Suppose, before filing an application for patent protection, this product was circulated on the market by another entity at the district level in Vietnam. In this case, is the technical solution of the invention considered to have lost its novelty, or is the entity that circulates a product similar to the subject of the invention's requested protection considered a prior user? In another case, the subject matter of the invention was a fuel injection device installed in a motor vehicle. This subject matter was later proven to have been installed in a motor vehicle and tested in a public place. So, is the invention considered to have lost its novelty? From this, it can be seen that the assessment of the public disclosure of the invention in practice is

extremely complex. The difficulty often encountered is not in determining the level of disclosure that a person with average skill in the relevant technical field is capable of understanding and implementing, but in determining the level of dissemination of information. Therefore, in this respect, it can be seen that, if only with the above general principles, the possibility of implementing the regulations on novelty conditions in practice is not high.

In some exceptional cases, according to the provisions of Clause 3, Article 60 of the Law on Intellectual Property, the publication of information about an invention before the priority date of the application is not considered to have been publicly disclosed and does not lose its novelty, if the application for patent registration is filed within six months from the date of publication: (i) The invention is published by another person without the permission of the person entitled to register. This provision is completely consistent with international practice in the protection of intellectual property rights for inventions, to maximally protect the rights and legitimate interests of the patent owner - those who have the right to file an application for patent protection.

(ii) The invention is published by the person with the right to register in the form of a scientific report. This is a newly recognized addition to the 2006 Intellectual Property Law, consistent with the current development trend of the law on patent protection in the world, and at the same time has a very great effect in encouraging domestic scientific creativity as well as technology transfer activities from abroad. This provision will create favorable conditions for domestic and international scientists to be able to focus more on their professional activities, while still being able to protect their research works to the maximum extent.

(iii) The invention is displayed by the person with the right to register at a national exhibition of Vietnam or at an official or officially recognized international exhibition.

Accordingly, the technical solution publicly announced in the above cases, when filing an application for patent protection, is considered to be capable of meeting the requirements for novelty based on the technical conditions before the date of first publication, not the date of filing the application for patent protection, provided that the application is filed within six months from the date of publication.

In another case, an invention will be considered to have lost its novelty even if, before the priority date or filing date of the patent application, the content of the technical solution requested for protection is identical to the content of a patent application with an earlier priority date and filing date in Vietnam. This is a consequence of the application of the first-to-file principle in the field of industrial property protection in general and patent protection in particular. Thus, immediately after filing a patent application, the content of the application has not been publicly announced and is being protected as confidential information, but it can still be considered as prior art to review and evaluate the novelty of domestic inventions in the same field with a later priority date or filing date. In this case, the earlier application will only be considered as a reference document capable of excluding the novelty of the later invention, if the content of the two technical solutions is completely identical. However, if an application with an earlier priority date or filing date is withdrawn or considered to have been withdrawn during the formal examination stage, the technical status will no longer be considered to be sufficient to consider the ability of applications in the same field with a later priority date to satisfy the novelty requirement. Clause 3, Article 116 of the 2006 Intellectual Property Law clearly stipulates: Any patent application... that has been withdrawn or is considered to have been withdrawn if it has not been published... shall be considered to have never been filed, except in cases where it is used as a basis for a request for priority rights.

Through the above analysis, it can be seen that the provisions on novelty conditions in the 2006 Intellectual Property Law have made new developments that are worth noting. However, there are still some limitations, especially in determining the popularity of patent information when it is published to serve the assessment and testing of the ability to meet the requirements of the novelty condition of the invention.

2.3. Conditions for having creative level

2.3.1. Concept

From a linguistic perspective, creativity is understood as the result of an idea, which may originate from a registered or patented invention, but does not arise obviously from the current technical level for those with ordinary skills (average level) in the corresponding technical field [35, p. 139]. The creative level of an invention is shown in that based on known technical solutions, the invention requested for protection is different from existing ones, and this difference must be creative (i.e. the result of a creative idea), a step forward (i.e. worthy of attention) and at the same time create a clear “non-obvious” gap between the prior art and the invention requested for protection.

To assess whether an invention is “non-obvious” or not, the examiner must have ordinary skill in the profession (or “average skill in the field”); the skill applied during the examination must be ordinary; and the assessment must be made by comparing the claimed invention with the prior art corresponding to the time of filing. The inventive step of an invention is demonstrated in three aspects: the problem to be solved, the solution to that problem, and the advantages of the invention compared to the prior art.

From the perspective of positive law, the 2005 Intellectual Property Law, amended and supplemented

supplemented in 2009, defined the level of creativity as follows: An invention is considered to have a creative level if, based on technical solutions that have been publicly disclosed in the form of use, written description or in any other form domestically or abroad before the filing date or before the priority date of the patent application in case the patent application enjoys priority, the invention is an innovative step, which cannot be easily created by people with average knowledge in the corresponding technical field.

For a solution to be granted a patent, assessing novelty is not enough, the technical solution must also create a difference from all other known technical solutions in two characteristics:

First , it must be creative, that is, the technical solution created must have a significant gap with existing technical solutions, must be a leap forward containing new elements, new perceptions of material objects that no technical solution has yet addressed.

Second , the technical solution created is not obvious, meaning that the technical solution cannot be created easily by people with average knowledge in the respective technical field. Regarding the concept of “person with average knowledge”, Point 23.6 of Circular 01/2007/TT-BKHCN clearly states: “The concept of a person with average knowledge in the respective scientific field is understood as a person with normal technical practice skills, which is an understanding of common general knowledge in the respective technical field” [6, Point 23.6].

Thus, the issue of the level of creativity of an invention is raised to encourage research and promote the development of science and technology. An invention is considered to have a level of creativity if, compared to published technical solutions, the invention is a creative step forward that a person with average knowledge in that field cannot easily create.

From the above perception, it can be understood that the level of creativity of an invention is understood as the level of creativity of a technical solution recognized as an inventive step and until the priority date of the application compared to the domestic and foreign technical level, that solution cannot be easily created by a person with average level in the corresponding technical field.

2.3.2. How to determine

Another important condition that must be determined during the examination of the ability to meet the patent protection standards is the level of creativity. According to the provisions of Vietnamese law, a technical solution is considered to have achieved the level of creativity if, based on the technical solutions that have been publicly disclosed in the form of use, written description or in any other form domestically or abroad before the filing date or before the priority date of the patent application in case the patent application enjoys priority, the invention is an inventive step, which cannot be easily created by a person with average knowledge in the relevant technical field.

With a relatively strict level of requirements and typical qualitative nature, as in any other country in the world, the condition of the creative level of an invention under Vietnamese law can be considered the most difficult to determine in the process of examining the content. Although based on the same technical foundation (before the filing date or before the priority date of the patent application), however, the requirement of the creative level of the technical solution is a much higher development step than the requirement of the novelty condition. Accordingly, a protected invention must not only be different from previously publicly disclosed knowledge, but must also be a real development step compared to common understanding.

People with average knowledge of the relevant technical field here

Conditions for patent protection under Vietnamese law - 7

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