New regulations on procedure for acquisition of patent rights – Circular No. 01/2007/TT-BKHCN

On February 14, 2007 the Ministry of Science and Technology (MOST) issued Circular No. 01/2007/TT-BKHCN («Circular 1/2007») guiding the implementation of Decree No. 103 of the government dated September 22, 2006 on implementation of several articles of the Intellectual Property Law 2005 with respect to industrial property (IP). Circular 1/2007 contains 5 chapters but four-fifths of its volume is dedicated to Chapter I which includes general provisions on procedure for establishment of IPRs and particular provisions on registration of Patent, Circuit Design, Industrial Design, Trademark and Geographical Indication. Circular 1/2007 replaces three (3) former circulars of the MOST on IPR establishment, namely Circular 3055 dated December 31, 1996 and Circulars 29 and 30 dated November 5, 2003.

Thus, less than one year after the IP Law became effective on July 1, 2006, Vietnam has promulgated a complete range of implementing instruments. Circular 1/2007 is a comprehensive guide on procedure for acquisition of IPRs. It brings together provisions previously scattered in different legal documents, inludes several new provisions and formally adopts some current examination practices of the National Office of Intellectual Property («the NOIP»). D&N International will publish a series of articles explaining the new regulations with regard to each type of IPRs.

To date, procedure for acquisition of IPRs in inventions was previously provided for in Circular No. 30/2003/TT-BKHCN of the MOST dated November 5, 2003 replacing the relevent parts of Circular 3055/TT-SHCN dated December 31, 1996. Circular 1/2007 contains the following new points:

Circular 30 did not specify procedure for acquisition of IPRs in drug-related inventions, nor inventions relating to genetic resources or traditional knowledge. Circular 1/2007 provides for the first time for complementary requirements for obtaining patents in such fields. According to it, the specification of a drug-related patent application must not only meet general requirements applied to all technical fields, but must also include clinical test results and pharmacological effects of the drug. It must contain at least the following information: (i) active ingredient/combination of active ingredients; (ii) test method; (iii) test results; (iv) correlation between the results of pharmacological effects obtained in experiments and practical use in disease prevention, prognostic and treatment (article 23.10).

Application for patents relating to genetic resources and/or traditional knowledge should include documents illustrating the orgin of the concerned genetic resources and/or traditional knowledge. In case where the inventor or applicant is unable to determine the origin, he/she should make a declaration about that (article 23.11).

Requirements for biotechnology patent application under Circular 1-2007 remain essentielly the same as under Circular 30. There is only a small change relating to biological material deposit for patent purpose. To date, Circular 30 requires merely that the biological material be deposited in a Vietnamese or foreign depository institution recognised by the MOST. According to Circular 1/2007, the NOIP may request that a biological material be deposited in Vietnam even though it has already been deposited abroad, if that is necessary to clarify the nature of the claimed subject matter or to meet a resquest by a third party seeking access to the material (article 23.9e).

According to Circular 1/2007, the subject matter contained in a patent application shalle be considered as ineligible for protection if it is not a technical solution (i.e. a product or a process). An invention is not a technical solution if: (i) it is an idea; it merely raises a problem, but does not propose a solution; it does not give an answer to such questions as «how»/ «by which means»; (ii) the problem to be resolved is not a technical problem and can not be resolved by technical means; (iii) the product is a natural product, but not a thing created by men (article 25.3).

Circular 1/2007 provides detailed guidelines on assessment of patentability criteria as below :

a) Assessing novelty: Search shall be conducted within the minimum obligatory documentation which includes: (i) applications filed with the NOIP corresponding to the same class/subclass code and having a prior filing date; (ii) applications for patent and issued patents published by other countries/organisations within 25 years before the filing/priority date; (iii) where necessary, search shall cover also scientific reports archived in the National Science and Technology Information Center. The objective of the search is to discover prior art. Search report must include the relevent technical art, scope of search, search results, examiner’s name and search finding. The essential features of the claimed subject matter shall then be compared with prior art references found during the search. The invention is considered to be novel if : (i) it contains at least one essential feature which is not found in the cited reference or (ii) no cited reference has been found (article 25.5).

b) Assessing incentive step: Search shall be conducted within the minimum obligatory documentation (the same as for novelty). Incentive step is determined by assessment of distint essential features of the claimed subject matter. An invention is considered as not involving an incentive step if (but not limited to): (i) the combinaison of distinct essential features is obvious to a person of ordinary skill or identical/equivalent to a known technical solution or (ii) the invention is a simple combination of known technical solutions (article 25.6).