1.Can patent examination procedures in Vietnam be expedited when the applicant proactively provides the documents under Rule Point 15.2.b/(i), Circular 01/2007/TT-BKHCN? How much the examination procedures can be accelerated?
The examination procedures of patent applications in Vietnam can be accelerated when the applicant furnishes the IP Office of Vietnam with documents as provided in Rule Point 15.2.b/(i), Circular 01/2007/TT-BKHCN, including: Results of information search or examination of the application filed overseas for the object stated in the application; copies of the protection title granted on the basis of a similar application filed overseas; documents on technical conditions of the object stated in the invention registration application supplied by a competent foreign authority to the applicant and other documents. The duration of examination for patent applications in Vietnam may be shortened depending on different factors such as, for example, positive results of examination for the corresponding application(s) issued by patent office(s) in other countries such as, US, CA, JP, RU, UK, SE, AT, ES, AU, CN, KR, DE, EPO, EAPO.
2.Upon submitting the documents per Rule Point 15.2.(a, b), Circular 01/2007/TT-BKHCN, will the examiners at the IP Office of Vietnam request to amend claims to be same as the applications filed overseas? Is it possible for the applicant reject such an amendment request? In other words, whether the claims broader than the applications filed overseas can be granted?
Once documents are submitted in conformity with Rule Point 15.2.(a, b), Circular 01/2007/TT-BKHCN, in practice, the examiners at the IP Office of Vietnam often request the patent applicants to amend claims to be same as the applications filed overseas (that is, to comply with the corresponding application(s)). The applicant is entitled to refuse the amendment request made by the examiner. However, the claims broader than the claims allowed in the corresponding applications filed overseas cannot be granted in compliance with the claims of the applications filed overseas. They shall be separately examined by the examiners as usual.
3.Upon amending claims to be same as the applications filed overseas, should the claims have to be same dependencies or same claim type (one part or two parts)?
Firstly, in Vietnam, multiple dependent claims are allowable. Further, there is no provision on claim type under Vietnam IP Law and Regulations. It is provided under Rule 23.6(i), Circular 01/2007/TT-BKHCN that “Claims are recommended (but not obliged) to be drafted in two-part type: Restriction and Distinction…”. Thus, when the applicant amends the claims under the patent application filed in Vietnam in compliance with the claims allowed in the corresponding applications filed overseas, it is up to him/her to amend claims to be same as the applications filed overseas.
4.What should be taken into account concerning specifications or claims when entering to Vietnam national phase of PCT application?
There are several points that the applicant should take into consideration when entering Vietnam national phase as follows:
Per Rule 23.6 (a), Circular No. 01/2007/TT-BKHCN, the specification of a patent application filed in Vietnam must completely disclose the nature of the technical solution sought to be registered. It must contain sufficient information based on which any person with average skill in the art can deduce the solution. It must clarify the novelty, inventive steps and industrial applicability of the technical solution (if the protection title applied for is an invention patent); clarify the novelty and industrial applicability of the technical solution (if the protection title applied for is a utility solution patent). Further, per Vietnam IP Law and Regulations, the specification of a patent application should contain the following sections: title of invention, technical field, background, summary of invention, brief description of the drawings, detailed description of embodiments and examples. Further, the title of invention should reflect main subject matters claimed in the claims. Also, the subject matters claimed in the claims, title of invention and abstract should be consistent to each other. Second, regarding the claims, in addition to omnibus claims, kindly note that use claims are now no longer accepted at the IP Office of Vietnam.
5.Whether patent examination can be expedited in Vietnam under Rule 9.3, Circular 01/2007/TT-BKHCN?
An expedited examination is allowed upon submission of a request for examination acceleration to the IP Office of Vietnam as Rule 9.3, Circular 01/2007/TT-BKHCN reads. However, the IP Office of Vietnam does not always accept to proceed with expedited examination for patent applications, unless in exceptional cases due to backlog of pending patent applications at the IP Office of Vietnam. We have requested the IP Office of Vietnam to conduct the expedited examination several times. In order to do so, we submitted an official letter with appropriate reasons therein for requesting expedited examinations of our client’s application. For expedited examination for patent applications in Vietnam, it is pre-requisite that prior approval from both the responsible examiner and the Manager of Patent Department of IP Office of Vietnam must be obtained.
The question how much the examination procedures can be accelerated by such an expedited examination request largely depends on the examiner in charge of the case. In some cases, patents have been granted within 12-18 months from the date of filing in Vietnam. In other cases, the corresponding figures are 24 – 30 months. From our experience, an expedited examination may be easier to be accepted if a corresponding application in at least one of other jurisdictions such as, for example, US, CA, JP, RU, UK, SE, AT, ES, AU, CN, KR, DE, EPO, EAPO, has been allowed for a patent grant, and the claims of the Vietnam patent application are the same as the claims of the granted patent in the above-mentioned jurisdictions.
Office Action for patent applications in Vietnam
1.Is it possible to amend claims, under patent regulations of Vietnam, to newly incorporate a feature which is not described in the original specification, but only shown in Drawings or in Abstract?
It is possible for patent applicants to amend claims to newly incorporate a feature which is not described in the original specification, but only shown in Drawings or in Abstract.
2.Is it possible,under patent regulations of Vietnam, to argue patent ability of the invention by explaining effects of the present invention which are not described in the specification, in reply to the rejection? Does the Examiner accept such explanation about the effects to make a determination of the patent ability?
It is possible to argue patent ability of the invention by explaining effects of the present invention which are not described in the specification, in reply to the office action issued by the IP Office of Vietnam. However, this explanation might or might not be accepted by Examiner who is in charge of determining the patent ability (Patent Examination Guidelines, Points 23.9.2 &3 and Rule 23.10).
3.When claims are amended based on descriptions of the original specification, should newly incorporated limitation be consistent with expressions as recited in the original specification, or if the newly incorporated limitation is directly and unambiguously derivable from that previously presented by the application, are replacement with or incorporation of modified expressions acceptable? Please let us know whether the Examiner is likely to object the modified expression, even if only slightly, as being lack of support by the original specification.
It depends from case to case. However, Examiner is very likely to object the modified expression, even if only slightly,for “not being literally supported in the original specification”.
4.Is there any inappropriate expression for claim? e.g., relative phrase, “about” “substantially” etc. “preferably” “important” etc. “for example”, “such as” alternative phrases.
The phrases such as “about”, “substantially”, “preferably” “important” etc. “for example”, “such as” should not be incorporated in the claims in the cases these phrases make the features (characteristics) in the claims indefinite and incorrect (Patent Examination Guidelines, Point 188.8.131.52c).
5.Are the phrases such as ”can”, “may”, “capable of” and “suitable for” acceptable? How are such phrases interpreted? Are such phrases affected to construction of claims?
The phrases such as ”can”, “may”, “capable of” and “suitable for” are unacceptable in the cases these phrases make the features (characteristics) in the claims indefinite and incorrect (Patent Examination Guidelines, Point 184.108.40.206c).
6.Is it possible to conduct an interview with the examiner of the IP Office of Vietnam? Does the result of the interview be an official opinion?
In patent applications, we usually conduct interviews with the Examiner either via telephone or in person. After the interview, we may reach a conclusion on the discussed matters in writing in the form of working papers/reports which shall be considered as official opinion. These papers/reports shall be signed by the examiner and applicant and can be submitted directly to the examiners.
Does the Examiner reject or object the application based on “IP Vietnam’s Regulations on examination for invention”?
In practice, the Examiner may reject or object the application based on IP Vietnam’s Patent Examination Guidelines.
Patent amendment in Vietnam
Regarding to the amendments after granted, can we add features to dependent claims based on the specification? Do we have to add features just within the claims like in CN?
Per Article 97, Vietnam IP Law, after a decision to grant a patent is issued, the patent applicant can make a correction or an amendment to the claims contained in the patent application, provided that such a correction or an amendment narrows the scope of the claims. In such a case, the application shall be re-examined and the applicant shall have to pay the fees for substantive re-examination.