Some important amendments and supplements related to Patent practice under Circular No. 16/2016/TT-BKHCN
Th1 10, 2018

Some important amendments and supplements related to Patent practice under Circular No. 16/2016/TT-BKHCN

Recently, in order to make Vietnamese IP legislation closer to the international practice, the Ministry of Science and Technology of Vietnam issued Circular No. 16/2016/TT-BKHCN amending and supplementing a number of articles of Circular No. 01/2007/TT-BKHCN which come into force as of January 15, 2018.

The Circular applies for all patent, design and trademark procedures conducted by the National Office of Intellectual Property of Vietnam (NOIP) wherein there are some important amendments and supplements related to patent practice as follows:

1. Amending and supplementing Clause 25.5.d (i) related to essential technical feature

This Clause specifies that an essential technical feature of a technical solution may be its special characteristics regarding structure of the object (element, assembly, linking,…), or constitution of substance (component (appearance, ratios) state of elements) which together with other essential technical features create a necessary and complete collection in order to determine the nature (content) of the object.

The essential technical feature may be expressed as technical function of one constitutional element in structure or constitution of product (so-called functional feature), provided that the expression is sufficient for person having ordinary skill in the art easily understanding technical mean or manner of performing this function without exercising inventive skill. Functions, utilizations of claimed subject matter are purposes, results to be achieved of the subject matter but not essential technical features.

(This amendment is for purpose of providing statutory basic for excluding “use claims” and their modifications, e.g. “compound/composition for use” from patentable subject matters).

2. Amending the time periods for responding to office actions

The time limit for responding to notice of the formality examination results is within 2 months from the issue date (1 month under Circular No. 01/2007/TT-BKHCN), except for providing documents evidencing basic of priority rights which the time limit is 3 months.

The time limit for responding to notice of the substantive examination is within 3 months from the issue date (2 months under Circular No. 01/2007/TT-BKHCN).

3. Cancelling Clause 27.4.b and 27.5.b related to restoration of the time limit for a PCT national phase entry

Under Circular No. 01/2007/TT-BKHCN, applicants have a possibility to enter PCT national phase within 31 months from the earliest priority date, or within additional 6 months provided that the applicants pay a the surcharge fee. However, these Clauses have been cancelled in Circular No. 16/2016/TT-BKHCN, thus these option will be no longer available when the Circular comes into force.

4. Supplementing Clause 13.2.h related tosecurity control of inventions before filing for protection overseas

An application shall be deemed improper if the application has filed contrary to provision regarding to security control of inventions before filing overseas indicated in Clause 2, Article 23b of Decree No. 103/2006/NĐ-CP, including international application filed directly into International Bureau.

(Clause 2, Article 23b of Decree No. 103/2006/NĐ-CP specified that inventions of Vietnamese organizations and individuals and inventions created in Vietnam shall not be protected by Viet Nam if the applications of those inventions have been filed for industrial property protection overseas in contravention of the following provisions on security control;

  1. Applications for industrial property protection shall only be filed overseas when patent applications have been filed in Vietnam and the time limit of 6 months from the filing date has expired, except cases specified at Point b of this Clause;
  2. The filing of applications for industrial property protection overseas is not allowed if inventions are classified confidential under laws and regulations on protection of state secrets and is communicated by competent agencies about that.)

5. Amending Clause 23.7 related to abstract of invention

An abstract of invention, to be filed in two copies, shall be used to describe briefly the nature of the invention (not to exceed one hundred and fifty (150) words). The abstract must express the main contents of the technical solution only for the purpose of information. The abstract may contain drawings and special formulae. All drawings and special formulae (if any) are only presented in a half of A4 page and must be clear.

6. Amending Article 4 related to authorization for representative

It can be authorized for one or more representatives to conduct registration procedures provided that all representatives are registered in NOIP. NOIP may transact with the first representative in the power of authorization.

If the authorizing party permits by written document, the authorized party can re-authorized for another representative provided that the re-authorized is a registered representative.

7. Supplementing Clause 9.4 and 9.5 related to force majeure circumstance and objective hindrance

The time period during an event of force majeure or objective hindrance, which causes affected applicants or parties not meet the specified time limit, occurs shall be excluded from limitation periods. In this circumstance, the applicants or parties have to submit extension request and provide supported evidences.

An event of force majeure means an event which occurs in an objective manner which is not able to be foreseen (e.g., natural disasters, epidemic,…) and which is not able to be remedied by all possible necessary and admissible measures being taken.

An objective hindrance means a hindrance which in an objective context (e.g., diseases,…) results in a person with rights or obligations not knowing that his or her lawful rights and interests have been infringed or not being able to exercise his or her rights or fulfill his or her obligations.

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