Following the amended Law on Intellectual Property (“IP Law”) effective on 1 January 2023 issued by the National Assembly, the Vietnam Government issued Decree 65/2023/ND-CP (“Decree”) effective on 23 August 2023. Subsequently, the Ministry of Science and Technology issued Circular 23/2023/TT-BKHCN (“Circular”) on 30 November 2023, which took effect on the same day. The purpose of this Circular is to provide specific regulations that correspond to several provisions of the amended IP Law and Decree and to replace Circular 01/2007/TT-BKHCN. Consequently, the Circular introduces changes and additions to the IP system.
The following are some changes and additions to the patent and design aspects of the IP system, resulting from the issuance of the Circular.
I. BOTH PATENT AND DESIGN
1. Priority document
A Vietnamese application will be examined as to formalities, published and substantively examined. One of the tasks during formalities examination is to determine the proper filing date. An issue arose regarding whether the Intellectual Property Office of Vietnam (“IPVN”) would issue a priority document if the application had not yet passed the formalities examination (i.e., if a proper filing date had not yet been determined).
Article 46.2 of the Circular clearly states that the IPVN will issue a priority document even if the application has not passed the formalities examination or the applicant has withdrawn the application. This clarification indicates that the issuance of a priority document is not dependent on the formalities examination. It emphasizes the significance of submitting an application with the minimum documents to establish a filing date under the Paris Convention. Consequently, the priority document can be issued after filing an application with the minimum documents, irrespective of the formalities examination.
2. Power of attorney
As mentioned above, this Circular supersedes Circular 01/2007/TT-BKHCN, which had previously specified a one-month deadline for submitting an original power of attorney (“POA”), a timeframe that was considered quite short. In the current Circular, this provision for the one-month deadline is no longer present.
Article 9 of the Circular could be interpreted as not stipulating a fixed deadline for the submission of a POA. When examining as to formalities for an application without a POA, the IPVN would issue an office action requiring the submission of a POA within two months from the date of the office action (with the possibility of extending the deadline once for an additional two months). If the applicant proactively submits the POA, the IPVN would not issue such an office action, resulting in a faster processing of the application.
3. Opposition
Under previous regulations, an opposition essentially served as a reference source of information for the IPVN. The nature of oppositions has changed under the Circular. Specifically, according to Article 11.4 of the Circular, the IPVN will now process the opposition and inform the opposer of the processing result together with the examination result of the application.
Therefore, rather than being considered solely as a reference information source, oppositions are now thoroughly examined, and the examination results are communicated to the opposer.
4. Published information
Under previous regulations, the published data of pending applications and granted patents would contain the bibliographic information of the applications and granted patents, but not the information regarding the Decision on formality acceptance or Decision on granting the patent. Consequently, any party with rights and obligations related to the applications/patents, who have the right to appeal the decisions but have not received the Decisions, will not have the information on such Decisions. In the event that such a party wishes to make a complaint, they must ask the IPVN for information about these decisions to fill out their petitions. This process often takes time and can sometimes cause difficulties for the appellant.
Articles 10 and 33 of the Circular specify that the publications of pending applications/granted patents will include the number and date of the related decisions. In particular, the number and date of the Decision on formality acceptance will appear in the publication of a pending application, and the number and date of the Decision on granting the patent will appear in the publication of a granted patent. This new regulation will help everyone have access to more complete information about the case. In case a person finds that the application/patent affects their rights and obligations, they can more easily identify the subject of the complaint.
II. PATENT
5. Ground for patent invalidation – Going beyond the original disclosure
One of the amendments to the IP Law mentioned above was the introduction of several grounds for patent invalidation. One of them is when the patented invention went beyond the original disclosure in the application.
Article 34 of the Circular clarifies what is meant by going beyond the original disclosure. Accordingly, a patent can be invalidated if, in comparison with the original specification (description and claims) and for a person skilled in the art, the specification had changed, and the changes bring about information that does not originate directly and unambiguously from the original specification.
The Circular delineates a number of illustrative cases, generally drawn from the Vietnam Guidelines for patent examination. For example, one of the cases that illustrates an amendment going beyond the original disclosure is when, during the amendment of an application, the applicant introduces technical feature(s) that could not be determined directly and unambiguously from the original specification to the specification.
6. Use of foreign examination results (search reports, examination reports, and granted patents) for the corresponding applications
Under Article 16.9 of the Circular, the applicant may file a request for using foreign examination result. If the request is improper, the IPVN will issue a notification refusing the request. If the request is proper, the IPVN will examine the application with reference to the foreign examination result and issue the examination result within 12 months from the filing date of the request.
The Ministry of Science and Technology will issue a list of applicable foreign patent offices. To date, the list has not yet been released; however, it is expected that such patent offices at least include the EPO, USPTO, JPO, and CNIPA.
Conditions for eligibility to file such requests:
♦ The application has not yet received an office action regarding substantive examination
♦ In the foreign examination result, there is at least one patentable claim, and
♦ The claims of the Vietnamese application must be the same as the patentable claims in the foreign examination result.
Similar to other procedures for accelerating patent examinations, such as Patent Prosecution Highway (PPH) programs and the ASEAN Patent Examination Co-Operation (ASPEC) program, filing a request for using foreign examination result is free of charge.
However, it is unclear whether this regulation will be applicable to patent applications filed from 23 August 2023 (the effective date of the Decree) or 1 January 2023 (the effective date of the amended IP Law).
III. DESIGN
7. Deferment of publication
For the first time, deferment of publication has become possible as stated in the amended IP Law. According to Article 110, the applicant can request deferment of publication at the time of filing the design application, but the deferment period cannot exceed seven months from the filing date.
The Circular has clarified that in the case an applicant requests a deferment of publication, the following scenarios apply:
♦ If the application passes the formalities examination before the point of time requested for deferment, the application will be published in the month next to the month with the point of time requested for deferment, and
♦ If the application passes the formalities examination after the point of time requested for deferment, the application will be published within two months from the date on which the application passes the formalities examination.
8. Design definitions
To comply with the EU-Vietnam Free Trade Agreement (EVFTA), the definition of design was amended to exclude those that are not visible during the exploitation of utility of the product or complex product. Specifically, design is defined as 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. This definition has introduced several concepts that need clarification.
Accordingly, Article 23.2 of the Circular provides the definition: The exploitation of utility of the product or complex product is understood as placing the product on use in accordance with its correct function, utility, excluding activities related to maintenance, service or repair of the product, complex product.
It is important to note that visibility is not considered for maintenance, service, or repair of the product or complex product, as per the provisions of Article 23.2.
Furthermore, Article 21.2 of the Circular provides the definitions:
♦ Product is understood as an object, tool, apparatus, means, manufactured by industrial or craft industrial methods, with a clear structure and function
♦ Component part for assembly to constitute a complex product is a part that is capable of independent circulation, can be disassembled from the complex product, and
♦ Complex product is a product composed of component parts that are replaceable, disassemblable and reassemblable. Product and Component part for assembly to constitute a complex product are hereafter collectively referred to as the product unless specified otherwise.
Accordingly, products bearing designs in Vietnam consist of “Product” and “Component part for assembly to constitute a complex product“. Clearly, a product can be independently circulated. As noted above, a component part for assembly to constitute a complex product must also be capable of independent circulation. Therefore, partial designs are not patentable in Vietnam. For example, if one were to claim the body of a bottle, the body would not be capable of independent circulation. If the body were to be removed from the bottle, the bottle would be destroyed, thus rendering the body unsuitable for independent circulation and sale.
IV. OUR COMMENTS
The amended IP Law introduced “general” provisions on the granting of electronic certificates and gave applicants the right to choose to receive an electronic certificate or a paper certificate. However, as of now, applicants face a lack of specific provisions regarding the types of certificates to aid in their selection. It is hoped that specific provisions in this regard will be introduced in the Circular. Unfortunately, no such provision is currently included in the Circular.
By Nguyen Duc Thang and Nguyen Thi Le Na
Patent Department
