Vietnam – Specific points in Patent prosecution

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By Nguyen Duc Thang, Director of Patent Department

nguyenducthang@investip.vn

  

As Vietnam is a socialist country, the Vietnam patent system has somewhat been affected by other socialist countries. This is a factor making the patent system have specific points as discussed below.

Patent fees

In many countries, claim fees are often charged for claims in excess of 10, regardless of independent claims or dependent claims.

In Vietnam, claim fees are charged based on the number of independent claims only. Dependent claims are not related to fees. And, there is no limit such as 10 claims as above, all independent claims involve fees. Besides, the claim fees are charged in multiple stages, including filing an application, requesting examination, paying annuities, etc.

This mainly affects biological patent applications which often have a lot of independent claims.

It also affects applicants’ strategy of drafting claims to file globally. Applicants tend to reduce the number of claims to save fees; but the factor to save fees in Vietnam is the number of independent claims only, while a lot of dependent claims could be introduced to the set of claims without an increase of fees.

Filing stage

Nationality of inventor: Information on the nationalities of inventors is required in a Vietnamese application. While many countries do not require the information, applicants would not be prepared to gather the information in advance for filing in Vietnam. In turn, a lack of the information in the application results in an office action requiring the information which relates to preparations and fees for the response.

International Patent Classification (IPC) symbols of invention: Although a fee for prior art search in the examination after filing an application is payable, and then, patent examiners should determine such IPC symbols for search work after filing; an indication of IPC symbols of an invention is required at the time of filing the application so that the Intellectual Property Office of Vietnam (IPVN) could assign new applications to its respective examination divisions based on the IPC symbols.

Vietnamese translation of patent specification: The translations are required at the time of filing the applications. There is no mechanism to file a specification in a foreign language first, and then, submit the Vietnamese translation or to request an extension of time for filing the Vietnamese translation. Accordingly, a plan to file applications in Vietnam should always take the time-consuming factor for translation into consideration.

Formalities examination

Scope of examination: in Vietnam, some “substantive” matters such as clarity of claims are also considered in the formalities examination stage. It is advisable to amend applications at filing to avoid office actions relating to such matters. However, this may be contrary to applicants’ normal intention which amendments should be made when requesting examination.

Name and address of inventor/applicant: This information is reviewed quite strictly by examiners. For example, a small discrepancy of an address among application documents may result in an office action. Therefore, for PCT applications, applicants are recommended to make requests under PCT Rule 92bis to avoid such discrepancies.

Title of invention/abstract: Titles and abstracts are often required even in formalities examination to recite the designations of subject-matters of main claims and do not include statements of use or method of treatment which are excluded from patent protection. The requirements are not common in the world, resulting in amendments at filing to avoid the office action issued shortly after filing. Applications are also usually amended in the substantive examination stage, and therefore, multiple amendments are likely be required in Vietnam.

Function/purpose in designation of subject-matter of claim: It could be anticipated that a claim like “1. An apparatus comprising …” would be objected to as unclarity for the reason: what the function/purpose of the apparatus is. An insertion like “1. A communication apparatus comprising …” could overcome the objection. It seems that such a change, from current legal documents, would not affect the scope of protection. However, in the future when a lot of enforcement/litigation cases occur and this issue is considered deeper, it would be difficult to predict the consequence of the change.

Computer-readable medium claim: In general, the claims would be objected to if they refer to multiple independent claims. However, the reason for the objection has been unclear.

Form or contents of national phase applications of PCT applications: Under Article 27.1 of the PCT, no national law shall require compliance with requirements relating to form or contents of an international application which is different from or additional to those which are provided for in this Treaty and the Regulations. In Vietnam, in some cases, applicants would experience office actions referring to local requirements to object to the form or contents of the application.

Substantive examination

Like many patent systems, the IPVN often relies on examination results of corresponding foreign applications in examining Vietnamese patent applications, but with specific characters below.

Such examination results are not widely used through agreements like Patent Prosecution Highway (PPH) programs. The IPVN has signed two PPH (pilot) agreements with the Japanese Patent Office and the Korean Patent Office; however, the number of PPH requests is limited to only 100-200 per year. The IPVN is also a member of the ASEAN Patent Examination Co-operation (ASPEC), but the program has not yet been used widely for some reasons.

In practice, examiners will decide which corresponding patent to be appropriate for conforming. If an examiner finds a corresponding patent appropriate, the examiner would suggest the applicant to conform the Vietnamese application to that patent, then a patent will soon be granted. In general, the Vietnamese examiners often suggest using corresponding patents granted by the EPO, USPTO, JPO.

Others

– Voluntary amendments and divisional applications can be filed at any time during the prosecution (before the granting date). Besides, Vietnam does not apply those like the doctrine of estoppel. For example, it is possible to delete some claims and then re-introduce the deleted claims by amendments.

– Although Vietnam is a member of the WTO, new uses of a substance such as first medical uses are not patentable. Therefore, applicants should pay attention to inventions based on such new uses when considering to file the same in Vietnam.

For example, for a patent application all the claims of which are method of treatment claims. If we file the application as it is, the IPVN will object to the application because method of medical treatment is not patentable in Vietnam. As use claims (claims commencing with “use of”) are not accepted, if we convert the claims into substance claims, then the converted claims will not be considered novel because features of use are not considered to be limiting features (they are ignored when assessing novelty), while the substance per se is known.

– In Vietnam, the quality of Vietnamese translations of patent specifications is not only controlled by IP agents, but also by the IPVN. The IPVN often checks the translation and objects to the application if the quality of the translation is considered to be not good. Therefore, translations by translators who are not familiar with terms that the IPVN accepts would be objected to.

– Recordal of change/amendment in Vietnam is too complicated. For example, to record an assignment, the assignment document should be signed on each of its pages.

– Original documents are required. In general, the IPVN does not accept scanned copies of documents. Also, a digital signature is not permitted and Digital Access Service (DAS) for priority documents is not available.

– Utility model is called utility solution in Vietnam. There is no restriction on the fields of utility solution applications. Applicants can file utility solution applications in all the fields as covered by inventions. All utility solution applications will be substantively examined.

– Unlike many other countries, domestic patents are not a lot. In 2019, according to statistics of the IPVN, 720 domestic invention applications were filed, occupying about 10% of all invention applications filed (7,520 applications) and 395 utility solution applications were filed, occupying about 65% of all utility solution applications filed (600 applications).

Industrial designs

Views of design application: For a normal industrial design application, it must comprise all seven basic views. A lack of one or more views would result in an objection. Because of the requirement of seven basic views, the design is nearly fixed and the scope of protection is quite narrow.

Quality of design drawings: Lines in the drawings of a design should be quite sharp. Otherwise, an office action would be issued. In many cases, it seems that a set of drawings will be accepted in other jurisdictions, but be objected to in Vietnam for this reason.

Multiple application: A multiple application is possible for a set of articles (such as a set of cups and pot) or similar designs (embodiments). For embodiments to be included in an application, they should not be significantly different from each other. This requirement is different from the requirement in some countries that embodiments belonging to the same Locarno Classification could be included in an application.

Partial design: The partial design is not patentable in Vietnam. However, a Vietnamese design application could claim priority to a foreign partial design application.