Following the issuance of Annex I to the Guidelines for patent examination, which provided additional guidelines for determining the eligibility for patent protection of computer program-related inventions, the Intellectual Property Office of Vietnam has recently issued Annex II to guide the examination on the sufficiency of disclosure, the identification of features and the assessment of novelty and inventive step of these inventions. The additional contents are to add to Article 5.7 and Chapter III of the Guidelines for patent examination.
For an overview of Annex I, please see our articles at https://investip.vn/vietnam-additional-patent-guidelines-for-inventions-relating-to-computer-programs/ and https://investip.vn/vietnam-patent-guidelines-to-computer-programs
The contents of Annex II are basically similar to those of the Guidelines for Examination in the European Patent Office (EPO). Specifically, below are main points of Annex II.
The sufficiency of disclosure
As guided in the Annex, the computer program-related inventions are quite commonly described and claimed through functional features. In this case, to determine whether the requirements set out in Article 5.7.2 of the Guidelines have been fully met, it is necessary to determine whether the implementation or application of such functionality is disclosed in the specification and/or whether the implementation or application falls within the scope of common knowledge in the art at the time of filing the application.
For example, the claimed subject-matter is a transmitter consisting of an orthogonal multiplexing medium, in this case the orthogonal multiplexing function that can be performed by hardware and/or a combination of hardware and software are considered to be within common knowledge in the field of signal processing and transmitting, so the specification may not need to disclose a specific method/procedure to perform this function.
Annex II also provides examples to illustrate more specifically how to assess the sufficiency of disclosure of the claimed subject-matter.
The identification of features
According to the Annex, the claimed subject-matter is identified by the set of features in the claims. When considering features, in addition to assessing whether the requirements for sufficiency of disclosure of the subject-matter are being met, in some cases, it is important to analyze the implementation method to fully and accurately identify features of the claimed subject-matter.
In the case of a system/device formed by a combination of two or more systems/devices or a process formed by a combination of two or more component processes, each system/device or process may be called a subset that constitutes the overall system/device or process. For example, a system of application of Internet of Things (IoT) technology usually includes several devices connected to each other via the Internet, and in which one or a few devices will be a subset of the whole system.
Because there is a relationship between subsets to form a whole, in many cases, an element of one subset can be presented through elements of another subset. Therefore, if a claimed subject-matter relates to a subset, to accurately identify the technical features of this subject-matter, it is necessary to consider both elements having the corresponding relationship of other subsets according to the aspects of shape, properties, structure, operation, function, etc. based on the disclosed contents and common knowledge in the technical field at the time of filing the application.
Examples are also provided in Annex II to illustrate more specific cases where other subset-related elements may or may not play a role in identifying the structure and/or function of the claimed subset.
The assessment of novelty and the inventive step of inventions with combinations of technical and non-technical features
Annex II guides that when assessing the novelty and the inventive step of an invention involving a combination of technical and non-technical features, all features that contribute to the technical characteristics of the invention must be taken into account. Such features also include those which are individually considered non-technical, but in the context of the invention, contribute to a technical effect serving a technical purpose, thereby contributing to a technical effect of the specification of the invention. However, the features that do not contribute to the technical characteristics of the invention also do not contribute to the novelty and the inventive step.
Thus, in the process of assessing a subject-matter that has a combination of technical and non-technical features, it is necessary to first analyze the part identified by non-technical features that do not contribute to the constitution of the technical characteristic, therefore, do not contribute to the novelty and the inventive step of the invention.
Next, the claimed subject-matter will be assessed to identify whether it differs from the most recent prior art. Even if the claimed subject-matter has features that are different from the nearest prior art, but these features are those that do not contribute to the technical characteristics of the invention, the claimed subject-matter still be considered not novel.
In case the claimed subject-matter has technical features that are not disclosed in the closest prior art, the claimed subject-matter will be assessed as meeting the requirement of novelty, and in the next step, it is necessary to identify whether the features are considered obvious to the person skilled in the art to draw conclusions about the inventive step of the invention.
Similarly, Annex II also provide examples to illustrate how the above steps are taken to assess the novelty and the inventive step of claims of an invention.
Before the issuance of Annex II, assessing the novelty and inventive step of the computer program-related inventions presented difficulties when non-technical features were included in claims. With the introduction of the Annex, these difficulties seem to have been overcome. Should you require any further information or assistance, please contact us at email@example.com
By Dao Thu Trang, Dinh Thi Thuy Trang and Dang Anh Minh