Patent Infringement Assessment Principles in Vietnam

1. Legislation

(i)Law on Intellectual Property No. 50/2005/QH11 ratified on 29 November 2005 and entered into force on 1 July 2006, which was amended and supplemented under the Law No. 36/2009/QH12 of 19 June 2009 (Vietnam IP Law).

(ii) Decree No. 103/2006/ND-CP of 22 September 2006 detailing and guiding the implementation of a number of articles of the law on intellectual property regarding industrial property (Decree 103).

(iii) Circular No. 11/2015/TT-BKHCN of 26 June 2015 guiding the implementation of a number of articles of Decree No. 99/2013/ND-CP on sanctioning of administrative violations in industrial property (Circular 11)

2. Relevant provisions for the patent infringement assessment in Vietnam

Per Article 102.3, Vietnam IP Law, the essential technical features of a claim are determined based on the following principles:

[The scope of protection of an invention shall be expressed in the form of a combination of technical features which are necessary and sufficient to identify the scope of the rights to such invention and should be compatible with the description of invention and attached drawings].

Article 16.1, Decree 103 specifies that the scope of rights to an invention is determined according to the scope of protection stated in the Letters Patent.

Per Rule 11, Circular 11, comparison of the accused product with the claim covering the patented product is made on the following principles:

1. An accused product/product part/process shall be regarded as identical or equivalent to the product/product part/process being protected by a claim (either independent or dependent) in a patent if all essential technical features (elements) claimed in the claim are present in the identical or equivalent form in the accused product/product part/process, wherein:

a. two technical features (elements) shall be considered as identical to each other if they have the same nature, the same purpose, the same manner of achieving purpose, and are in the same relationship with other features stated in the claim;

b. two technical features (elements) shall be considered as equivalent to each other if they have the equivalent or interchangeable nature, the substantially identical purpose, and the substantially identical manner of achieving purpose.

2. If the accused product/product part/process does not contain at least one essential technical feature (element) claimed in a claim, then the accused product/product part/process shall be regarded as not identical or not equivalent to the product/product part/process being protected by the claim.

In conclusion, the Assessed Object shall be regarded as identical/equivalent to the object within the scope of protection of the invention only if the following condition is fully met: all essential technical features as set forth in a given claim of the patent exists in the identical or equivalent form in the Assessed Object.

On the contrary, the Assessed Object shall not be regarded as identical/equivalent to the object within the scope of protection of the invention if the set of essential technical features of the Assessed Object does not contain at least 01 essential technical feature set forth in the claim, regardless of whether there is any further feature contained in the Assessed Object.

3. Differentiating inventions, patents and patent rights

Invention means a technical solution in the form of a product or a process which is intended to solve a problem by application of laws of nature.

Patent means a document granted by a competent state agency to an organization or individual in order to establish industrial property rights to an invention.

Patent Rights: Patent holder is entitled to (i) use or authorize others to use the invention; (ii) prevent others from using the invention.

Use of the invention means performs the following acts in Vietnam: (i) manufacturing the protected product; (ii) applying the protected process; (iii) exploiting utilities of the protected product or the product manufactured under the protected process; (iv) circulating, advertising, offering, stocking for circulation the product mentioned at (iii); (v) importing the product mentioned at (iii).

Scope of a Patent Right: (Vietnam IP Law, Decree 103; Circular 01/2007)

In principle, the scope of a patent right is defined by claims as provided for in the Patent.

• Claims: The combination of all essential elements. Claims must be in conformity with and construed in the context of the specification and drawings in the Patent.
• Essential Element: a characteristic of the technical solution, e.g. function, utility, disposition, structure, ingredient…, which defines, in combination with other essential elements, the nature of the solution.

4. Infringement of Patent Rights

4.1. Protected Inventions

• Novel
• Non-obvious
• Industrial Applicable

4.2. Scope of Claims

– The combination of all essential elements identifying the subject matter, achieving its purpose and characterized them from a known object in the context of Prior-art (published applications, other materials…)

– Intrinsic Evidence: a specification, a drawings in the Patent; the Prosecution history (file wrapper).

– Extrinsic Evidence: expert testimony, dictionaries, technical writings, textbooks…

4.3. Infringement Constituents

• A result of the infringement activities
• A part of/a whole of the accused product/process that:
• is identical or equivalent to a protected product;
• is identical or equivalent to a protected process;
• is a product or part (component) of the product produced by the accused process that is identical or similar to a protected process.
• Literal infringement and Equivalent infringement

4.4 Exceptional circumstances of the Infringement

• The accused product/process is protected and the right holder is the accused person/entity;
• The accused product/process is the object of a legal licence in which the licensor is the patent holder and the licensee is the accused person/entity;
• Using the accused product/process for the personal needs or for noncommercial purposes, or for purpose of evaluation, analysis, research, teaching, testing, trial production or information collection for approval procedures of production, importation or circulation of products (Article 125.2(a) Vietnam IP Law);
• Using the accused product/process for the purpose of maintaining the operation of foreign means of transport in transit or temporarily in the Vietnamese territory (Article 125.2 (c), Vietnam IP Law);
• Using the accused product/process by a person/entity having the prior use right (Article 125.2(d), Article 134, Vietnam IP Law);
• Using the accused product/process by the person/entity authorized by competent state agencies (Article 125.2.c, Article 145, Article 146, Vietnam IP Law).

5. Three-step Test for Patent Infringement Assessment

The Patent Infringement Assessment in Vietnam is carried out in conformity with 03 steps, i.e.

– Step 1: Construction of the scope of protection (Claim Construction)

– Step 2: Determination if the accused product/process infringes the construed scope

– Step 3: Determination if the accused activities being infringement

Step 1: Construction of the scope of protection (Claim Construction)

• Define the essential elements of the claim.
• The “all-elements” Rule.
• The “element-by-element” Rule.
• The tripartite Test, or the “function-way-result” Test  .
• In the views of the person of ordinary skilled in the art: who has ordinary technical practice skills and is acquainted with publicly available general knowledge in the art
• Doctrine of Equivalence: the accused product/process and the claimed invention perform substantially the same function in substantially the same way to yield substantially the same result.

Step 2: Determination if the accused product/process infringes the construed scope

• Define the nature of the accused product/process (all essential elements)
• Compare all and individual essential elements of the patented invention (claim) and those of the accused product/process

Equivalent determination:

• Identical (literal): if a claim, as properly interpreted, reads on the alleged product/process
• Equivalent: the differences between the claimed and accused product/process are insubstantial
• Different: any essential element of the claimed product/process is not appeared on the accused product/process.

Step 3: Determination if the accused activities being infringement

• Define accused infringing activities
• Define the person/entity engaged in accused activities
• Define if the accused activities are permitted or authorized by the patent holder
• Define if the accused activities are permitted by laws (exceptional cases)

6. VIPRI’s Expert Evidences on Patent Infringement Determination

6.1. VIPRI’s Expert Evidences on Inventions

• On scope of patented inventions
• On similarity between inventions
• On infringement of protected inventions
• On value and/or damages caused by patent infringement

6.2. Validity of VIPRI’s Expert Evidences

– Unique Governmental Expert Evidences on Industrial Property

– Source of evidence for:

+ Disputes settled by parties

+ Adjudication performed by enforcement agencies (courts, customs, market controls, inspectorates, polices,..)

+ IP Right acquisition

– Non-binding legal validity (not administrative decisions)

– Objective validity

7. Some Statistics

Table 1: Number of IP Cases (2009-2018)

Table 2: Purposes of the requests for VIPRI’s expert evidences (2009-2018)

Table 3: Enforcement Agencies (2009.2018)

Table 4: Purposes of using VIPRI’s expert evidences (2009-2018)

Table 5. Results of IP infringement Determinations by VIPRI (2009-2017)