While patent application regulations tend to be fairly consistent across different countries, the rules for industrial design applications varies significantly. For instance, some countries allow for partial designs, while others do not. Additionally, the number of views required to represent a design may vary—some countries mandate seven basic views, while others require only three. Consequently, it’s crucial to understand the specific regulations for industrial designs in each country to ensure proper registration and protection. In Vietnam, the most fundamental regulation is the definition of industrial design, which is as follows:
“Industrial design is the external appearance of a product or a component part for assembly to constitute a complex product, is expressed in shapes, lines, colors, or any combination thereof and is visible during the exploitation of utility of the product or complex product.“
Generally, there are two essential factors to be considered for industrial design applications. The first factor is how the legal regulations require the design to be depicted, such as the number of necessary photos/figures. The second factor involves assessing whether the design satisfies the requirement of novelty, inventive step, and industrial applicability. This assessment is generally determined by the Intellectual Property Office of Vietnam (IPVN) after conducting searches to identify related designs and evaluating them based on such requirement. However, the depiction of the design should be proactive on the applicant side. It is crucial to proactively prepare a set of photos/figures that meet legal requirements to avoid rejection by the IPVN at the time of filing the design application. If rejected, the applicant must prepare a new set of figures/photos, which incurs additional costs and time for responses, delays the issuance of the patent, even in some cases, makes it impossible to amend the photos/drawings, potentially leading to the abandonment of the application.
This article outlines the most common deficiencies related to photos/drawings that lead to rejection of design applications by IPVN in the formalities examination stage. It aims to help applicants pay more attention to these issues while researching legal regulations to prepare their photos/drawings.
1. Drawings in broken lines
This is the most common deficiency related to drawings. Some countries, such as the United States and Japan, allow for partial design protection, which covers only a part of a product that cannot be separated from the product. Under this type of protection, the part of the design for which protection is sought may be shown in different lines or colors in order to identify protected and non-protected parts. In the illustrative example, Design 1 seeks protection only for the tube cap, while Design 2 seeks protection only for the bottle body – parts that the applicant believes, if included alone, would be sufficient to meet the requirements of novelty and inventive step.
However, in Vietnam, the design of a product is accepted if the product can independently be circulated. If a part of a product cannot be separated from the product and thus cannot be used independently, it shall be excluded from protection.
If applicants are not familiar with the legal framework and regulations in Vietnam, they often use drawings with broken lines filed in other countries for filing the application in Vietnam, which will lead to rejection by the IPVN. In such cases, applicants should revise their drawings before filing the application in Vietnam by converting the broken lines to solid lines to avoid this deficiency.
For more information, while partial designs are not patentable in Vietnam, a Vietnamese application could claim priority to a foreign partial design application. In this case, please ensure that the photos/drawings to be filed for the Vietnamese design application are amended as mentioned above and the design will be then protected as a whole in Vietnam.
2. Unclear or blurry photos/drawings
Another common deficiency is when photos are overexposed and glossy or lack clarity (due to camera shake or blurriness), or when drawings are of poor quality, resulting in jagged lines.
It is important to ensure that the resolution the photos or the quality of the drawings is such that they are sharp and clear when printed.
3. Lack of contrast between the background and the design
The next deficiency relates to designs with bright colors. As indicated in the above illustration, if a design is in light gray, it may appear blending to the white background of the paper when printed, making the design unclear. In such cases, the photos/drawings of the design should be placed against a background with a contrasting color, such as a dark background, to highlight the design and make it more distinct.
4. Inclusion of objects not part of the claimed design
The set of photos/drawings to be filed should only include images of the claimed design, which is the ‘cosmetic tube”, the images of hands must be removed from this example.
5. Inadequacy of photos/drawings
The regulations regarding the number of photos/drawings required for each type of product are as follows:
In general, for a 3D product, the minimum number of photos/drawings is seven basic views, comprising one perspective view and six orthogonal views.
For 3D products that can be unfolded or deployed (e.g., packaging boxes, etc.), the orthogonal views of the design can be replaced by photos/drawings of the design in its deployed state. In this case, the set of drawings only needs to comprise two views: the perspective view and the view showing the deployed state.
For 2D products, such as labels used to paste on packaging, only one photo/drawing showing the label is required.
There is no limit on the number of drawings. Additional photos/drawings (beyond the seven required photos/drawings) may be included in the set of photos/drawings to be filed as reference views, such as views showing the use state of the design, cross-section views, enlarged views, etc. However, please note that these additional views are for illustrative purposes only and do not fall within the scope of design protection. The scope of protection is defined solely by the required set of photos/drawings.
Illustrative examples of this deficiency is shown below.
Additionally, it is important to note and consider some cases where it may be optional to omit certain drawings to save on publication costs, as follows:
– It is possible to omit a bottom view of a product with a large size and weight (for example, design of a car). However, if the design is depicted (e.g., a car) in drawings (not in photos), a bottom view is still required.
– It is possible to omit one or more of the seven views above if the omitted views would show very thin depths of the product (for instance, for design of paper sheet).
– If in a set of figures/photos, a view is the same as or symmetrical to another view, the set may comprise only one of the two views (for example, for design of a symmetrical product, some orthogonal views are identical).
6. Non-compliance with principles of orthogonal views
According to regulations, the orthogonal views of the design should show the design from different projection views (from the front, rear, left side, right side, top, and bottom). According to the principles of orthogonal views, all orthogonal views must depict the object (in this case, the design) at the same scale, in the same direction, and with the same frontal projection angle.
In practice, there are quite a few deficiencies related to this issue, as illustrated by the examples below.
- Orthogonal views not in same scale
- The orthogonal view is not depicted in same direction
The rear view is shown in the wrong direction – it needs to be rotated 180 degrees to match the direction of the front view.
- The orthogonal view is not shown in a frontal view
It can be seen that the front view and the right view are not in orthogonal state.
- The depiction of the views is not accurate
As shown in the front view, there are three recesses; however, the right view is inaccurate because it shows only two recesses.
7. Inconsistent depiction of the design
According to regulations, the design must be depicted consistently, meaning it should be represented either by photos or by drawings, but not both. In this example, the design is depicted using both photos and drawings, which is contrary to the regulations.
However, please note that if the set of photos/drawings includes additional photos/drawings as reference, they may differ in form from the primary set. For example, if the design is represented in drawing form (all seven basic views are in drawings), any reference views can be optionally either drawings or photos.
Comments
It is evident that the regulations regarding the set of photos/drawings in Vietnam are relatively strict compared to other countries. Therefore, preparing the set of photos/drawings often takes a considerable amount of time and requires a thorough understanding of the current regulations as well as the practical examination practices of the IPVN. INVESTIP, with over 36 years of experience in the field of intellectual property, is committed to providing maximum support to clients in preparing their photos/drawings to ensure compliance with the aforementioned regulations.
By Nguyen Minh Phuong and Dinh Thi Thuy Trang
Patent Department
