Filing divisional applications is a strategic tool that can significantly enhance the value of an IP portfolio. This article provides some specific points in practicing divisionals in Vietnam, assisting applicants to understand the legal framework, carefully plan the timing, and ensure compliance with the requirements. As a result, the applicants could secure robust patent protection and navigate the complexities of the Vietnamese patent divisionals with confidence.
Divisional of divisional: In practice, it is possible to file a divisional from a previous pending divisional, even when the parent application has been patented.
Unity of invention requirement: This requirement is similar to that of the Patent Cooperation Treaty (“PCT”).
When to file: Voluntary divisionals can be filed at any time before the Intellectual Property Office of Vietnam (“IPVN”) issues a decision on refusal or a decision on grant. As to decisions on refusal, after responding to an office action, the IPVN may issue a notice of allowance, a further office action, or a decision on refusal, on a case by case basic, which could be unpredictable. As to decisions on grant, such a decision will be issued after payment of grant fees in response to a notice of allowance; therefore, it is advisable to file divisionals at the time of payment.
As a result, in response to an office action objecting to an application as not satisfying the unity of invention requirement, the applicant may choose one invention for the parent application and file divisionals for the rest inventions; but the applicant may also choose one invention for the parent application and file divisionals at a later date as long as the parent application has not yet received a decision on refusal or a decision on grant, as noted above.
Filing fees: Fees for filing a divisional are the same as those for filing a normal application, except that there is no fee for claiming priority.
Subject-matter of a divisional: There is no specific limitation on the subject-matter of a divisional, except that the subject-matters of the divisional must already be disclosed in the original specification of the parent application. As a result, the claims of a divisional must be supported by the original specification of the parent application.
Double patenting cases
Under the regulations, for patent applications for inventions/utility models that are identical or equivalent to each other:
(i) If the applications have different earliest priority dates, the application with an earlier priority date would be granted a patent.
(ii) If the applications have the same earliest priority date, the applicants must reach an agreement so that only one application will be patented.
(iii) If the applications have the same earliest priority date and the same applicant, only one application will be patented.
As a result, the relationship between a divisional application and a parent application belongs to Case (iii) above.
Overlap in double patenting practice
The Guidelines for patent examination have noted the overlap issue: If the scopes of protection of the two claims overlap partially, the two inventions will not be considered identical or equivalent. For example, a claim of an application subsequently filed recites a continuous number range, if the range is not identical to a number range recited in a claim of the other application, the two inventions will not be considered identical or equivalent.
Accordingly, there would be certain cases where an overlap in the scope of claims would not raise a double patenting objection. However, the guideline can lead to different interpretations, which may result in varying considerations by the IPVN. This is an issue in divisionals in Vietnam.
CONCLUSION
The above discussion covers some specific points in practicing patent divisionals in Vietnam. The critical point to note may be the overlap issue as mentioned above. An applicant intending to file a divisional for a part of the invention so that a patent will soon be granted for that part, and then, prosecuting the parent application to obtain a patent covering the entire invention, including that part, may face difficulty in Vietnam.
By Nguyen Duc Thang and Nguyen Thi Huyen Trang
Patent Department
