It is worth reminding that previously inventive step did not fall into the scope of substantive examination of industrial design. Circular 1/2007 provides for the first time a guideline on assessment of inventive step of industrial design. According to it, inventive step shall be determined through comparison of the combination of essential features of the subject industrial design with that of each cited design. Conclusion of inventive step shall be made on the basis of negative conditions: An industrial design is considered as involving an incentive step if it is not: (i) a simple combination of already known features (for exemple, by simply replacing or changing position, increasing or reducing quantity etc…); (ii) a full or partial copy/imitation of the natural form of a tree, a fruit, an animal, a geometric form etc… which is widely known; (iii) a simple copy of the form of a product or an architectural work which is well-known in Vietnam or in the world; (iv) an imitation of an industrial design used in other industrial field, if such industrial design is widely known.
As previously reported by D&N International, on February 14, 2007 Ministry of Science and Technology issued Circular 1/2007 providing detailed guidelines on procedure for acquisition of industrial property rights (IPRs). In relation to procedure for registration of industrial designs, Circular 1/2007 replaces the old Circular No. 29/2003/TT-BKHCN dated November 5, 2003. Of particular note, Circular 1/2007 provides for the first time for assessment of patentability criteria of industrial designs, namely industrial application, novelty and incentive step.
1. Industrial application
Circular 1/2007 provides that an industrial design is susceptible of industrial application if based on information provided for in the application for registration, an average skilled person in the corresponding art can manufacture products constituting that industrial design either industrially or by handicraft method (Art. 35.6). According to Circular 1/2007, the average skilled person is a person who has a good general knowledge and ordinary practical skills in the corresponding industry (Art. 23.6, i.e. the same definition of average skilled person for patent). To date, the old Circular 29 ignores the concept of average skilled person and requires simply that products constituting the industrial design can be reproduced in quantity.
2. Assessing novelty
Circular 1/2007 formally adopts some current practice of examination of industrial design by the NOIP. Accordingly, novelty is assessed by way of comparison of essential features of the subject industrial design with those of the identical/closest similar industrial design found during the search (Art. 35.7). An industrial design is new if no cited design is found, or if, in presence of a cited industrial design, at least one essential feature of the subject industrial design is not found in the cited design.
Of particular note, Circular 1/2007 gives a definition of what a design feature is and provides for distinction between essential feature and non-essential feature facilitating the assessment of similarity of an industrial design with cited designs. Under item c) of Art. 37.7, essential feature of industrial design is a feature which is easily recorgnizable and easily memorable and must be necessary and sufficient for determining the subject industrial design and distinguishing it from other designs of the same type of products. Features that do not satisfy the above requirements are considered “non-essential features”.
There are also some changes concerning the assessment of similarity of industrial designs. Under Circular 1/2007, two industrial designs are considered identical if they have the same essential and non-essential features and similar if they have several essential features which are similar (Art. 35.1). To date, Circuler 29 requires that most of the essential features are similar.
3. Assessing inventive step