On 16 May 2022, the Intellectual Property Office of Vietnam (IPVN) issued new Guidelines for design examination which were to replace the old Guidelines of 8 December 2009. Improvements have been found in the new Guidelines and a number of them have been discussed below.
Effect of guidelines improved
Guidelines of examination, in general, aim at two purposes: to guide examiners and for applicants to refer in preparing and prosecuting their applications. A lot of examples and figures/photos have been presented in the new Guidelines. This helps applicants, who would not be conversant with design work like examiners, to easily understand the guided contents. Accordingly, the new Guidelines improve significantly its second function: for applicants to refer.
Presentation of contents improved
The presentation of contents of the new Guidelines has been made convenient for readers. For example, Article 13 of the old Guidelines guides the checking of requirements for a priority claim to be accepted; a fee payment for claiming priority is one of the requirements, but it stays in Article 14 which guides the checking of fees in general. In the new Guidelines, the fee requirement is also listed in Article 13. Along with other requirements, readers could easily see all the requirements for a priority claim to be accepted in a single article – Article 13.
As another example, as mentioned above, Article 14 in the old Guidelines guides the checking of fees. Article 14 in the new Guidelines, in addition to fees payable indicated, also states fees that are not payable; for example, for a normal divisional application, a fee for claiming priority is not required. Accordingly, the amended Article provides readers with a piece of the whole information.
In light of the old Guidelines, the application will still pass the formalities examination if it contains typing errors in the names and addresses of applicants and inventors that do not affect the determination of the applicants and inventors; in such cases, the errors are to be corrected in the substantive examination stage.
This guide has been removed, and the removal seems to make the new Guidelines more consistent with general legal requirements.
While Circular 01/2007/TT-BKHCN (Circular) provides for regulations for the case: request for withdrawal of application; the new Guidelines also list cases to be processed similarly: request for termination of examination of application and request for abandonment of application. Such additions seem to reflect actual different wordings of applicants. Accordingly, the new Guidelines seem to be providing guides that better reflect actual practices.
Similarly, in assessing the industrial applicability of an industrial design, the new Guidelines include an additional case (this reflects seemingly an actual case that the law does not envisage to list the same, but the case should be considered as being covered by the general provision of the law): If the design is the shape of a product of nature or of living organisms, even if the shape is corrected by using molds, such as designs of molded watermelons, the design does not satisfy the requirement of industrial applicability.
For the first time, the explanation of a set of articles to be included in a single application has been made clear under the new Guidelines with respect to the assessment of unity of design requirements. Accordingly, a set of articles in a single application should be understood as a collection of finished products the use purposes of which are independent and the use in combination is complementary, not required that they must be used together to be able to achieve a common purpose. Also, the new Guidelines give cases that are not considered as a set of articles to be included in a single application:
– Products that are not used together or for the same purpose
– The industrial design of products does not comprise at least one new basic appearance-forming feature (a single general inventive concept) applying commonly to the products
– Parts of a complex product, for example, parts of a motorcycle cannot be filed in a single application as a set of articles
– Embodiments of the same design like a right headphone and a left headphone different from each other in symmetry only.
Updates have been introduced into the new Guidelines. For example, the period of time of one month for the applicant to respond to an office action in the formalities examination stage has been updated to two months to reflect the change in the law.
New tasks guided
Due to arrangements of the IPVN, now the design examination center of the IPVN also examines requests for recordal such as requests for recordal of applicant name change, requests for recordal of assignment. Before the end of 2018, another department of the IPVN handled the matters. Accordingly, a new chapter (Chapter IV) with a lot of guidelines for handling such recordals has been introduced into the new Guidelines.
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By Dinh Thi Thuy Trang, Tran Ha Giang and Nguyen Huyen Trang