Following formality examination stage is substantive examination stage. A written opinion of the examiner on this stage is called substantive Office Aciton.
A substantive Office Action is issued by the examiner to conclude the patentability of application based on protection criteria such as novelty, inventive step and industrial applicability. Under Vietnamese IP law, a substantive OA will be issued within 18 months from the date of requesting substantive examination or publication date, whichever date is the later (Article 119, the amended IP Law 2005). The time limit for the applicant providing with the written response to the substantive OA is 02 months from the signing date of the OA (Rule 15.7,Circular 01/2007/TT-BKHCN). And if the applicant needs more time to respond, he is entitled to request for further 02 months by a written request once. In practice, a request for the second extension of time can be acceptable if it has been approved by the Vice Director of the NOIP. Failure to timely respond or the response does not satisfy the requirements of the OA, the NOIP may issue a decision of refusal to end the substantive examination.
The substantive examination obey the procedure in Rule 15.6 of Circular No. 01/2007/TT-BKHCN such as assessment of whether subject matters is suitable for the type of certificate of protection, a check on the first to file principle. However, in this article, we mainly concentrate on the examiner’s opinions on the protection criteria under the terms of Vietnam IP Law & Regulation and in current Vietnam patent practice.
Details of Office Action
In Vietnam patent practice, the main content of Office Action usually relates to the following matters: assessment on novelty, inventive step of application; requesting to amend the patent application in conformity with the corresponding patent filed in foreign countries; assessment on unity of invention.
1. Assessment on novelty, inventive step of application:
In order to determine whether claimed subject matters meet the requirements of novelty and inventive step or not, the NOIP’s examiners do usually refer to the International Preliminary Report on Patentability (IPRP) and International Search Report (ISR) prepared in the international phase for the PCT application; or refer to examination results of corresponding application (counterpart) filed in foreign countries. The examination result of IPRP or counterpart is usually used for the first substantive OA. However, these examination results do not have large impact on the final decision of examiners on patentability of examination.
There are three countermeasures which are usually used to rebut this kind of OA as follows:
- Providing with argument for novelty and inventive step of claimed subject matters;
- Amending the claim set and explaining novelty and inventive step for the amendment;
- Conforming the present claim set to the claim set of corresponding patent granted in foreign countries, preferably, EPO, JPO and USPTO. The amendment according to corresponding patents granted in CN, AU, RU, KR, EAPO, DE may be considered for the patentability.
For the patent application which does not have any corresponding application, the NOIP’s examiners themselves will carry out the substantive examination based on searching prior art. Prior art includes all inventions and information had published before the filing date of the application. An invention shall be considered as novel if it is not publicly disclosed by use or means of a written or oral description or any other form, inside or outside the country, before the filing date or the priority date, as applicable, of the invention registration application (Article 60, Vietnam IP Law and Rule 25.5, Circular 01-2007/BKHCN). If the claimed subject-maters of invention is the same as those of the prior art, the claimed subject matters will be rejected for novelty. To overcome the rejection over novelty, the applicant has to find out the distinctive technical features of invention in comparison with the prior art and attempt to argue that the invention is novel. Otherwise, the applicant can delete or amend objected claims so that the claim set do not conflict with the prior art.
In light of inventive step, Article 61 of IP Law and Rule 25.6 of Circular 01-2007/BKHCN state that an invention shall be considered to involve an inventive step, based on all technical solutions already disclosed by use or means of a written or oral description or any other form inside or outside the country, prior to the filing date or the priority date, as applicable, of the invention registration application, it constitutes an inventive progress and cannot be easily created by a person with ordinary skill in the art. Although the invention has the distinctive features with citations (prior art), the NOIP’s examiner concludes that it is easy to conceive the invention by combining the citations, thereby an Office Action will be issued. The opinion on inventive step is often subjective feeling because the obviousness concept is different from person to person. Therefore, the success of argument for inventive step cannot be predicted. To convince examiner about inventive step, commonly, the applicant must prove non-obviousness of claimed subject-matters by focusing/analysing the unexpected effect of invention and proving that the new advantageous technical effect is brought about by technical features of claimed subject matters. Otherwise, the applicant can provide with some amendments on claim set to make the same non-obvious.
However, in fact, it is noted that the quality of examination on the applications which do not have corresponding applications will vary and depend on technical field and the experience of each examiner. In addition, the applications belonging to chemical and pharmaceutical fields shall take more time for examination because the assessment on claimed subject-matters and chemical test or clinical test to make sure the invention meet novelty and inventive step is more difficult for Vietnamese examiners. In this case, the Vietnamese examiners usually require support/assistance from prestigious Patent Offices in foreign countries.
Requesting to amend the patent application in conformity with the corresponding patent filed in foreign countries:
If a Vietnamese patent application has the corresponding application granted in foreign countries, the NOIP’s examiners usually invite the applicant to conform the claim set of present application to that of corresponding patent granted in foreign countries to accelerate examination process. However, Vietnamese examiners usually prefer patents granted by EPO, JPO and USPTO. In this case, if the applicant wishes to expedite the examination, particularly, if they want to have a patent granted ealier, the amendment to conform to corresponding granted patent in foreign countries is necessary. In the meantime, the un-patentable subject-matters under Vietnam IP Law, particularly, the subject-matters relating to use and method for treating disease must be removed from the applications. Commonly, the Vietnamese examiners only consider the claim set granted in foreign countries whose protection scope is narrower or identical to current claim set. The amendment to restrict protection scope of claim set is undesired thing, in such circumstance, the applicant may not to carry out the amendment and wait for another suitable corresponding granted claim set in the future.
2. Assessment on unity of invention:
Requirements as to the unity of patent applications as stipulated in Article 101 of Vietnam IP Law and Rule 23.3 of Circular 01/2007-BKHCN. The invention is deemed to satisfy the requirements unity when it requests protection of a single object; or requests protection of a group of objects which are related technically, expressing a single creative intention.
Assessment on unity of invention in the substantive examination stage is usually carried out in parallel with the assessment on novelty of invention. The assessment of unity depends on whether or not the common distinctive technical features of claimed subject-matters are novel. If the common distinctive features are novel, the invention meets the requirement of novelty. In some rare cases, non-unity occurred in a subject-matter itself because common distinctive feature(s) between the groups of the subject-matter is not novel. This lead to the invention includes different technical solutions. For such a case, the best way to resolve this problem is to divide invention into divisional applications.
- National Office of Intellectual Property website:
- Vietnamese Intellectual Property Law 2005 (amended some Articles in 2009):
- Circular 01/2007/TT/BKHCN of Ministry of Science and Technology on February 14, 2007 for providing guidelines for implements the law on IP with respect to Industrial Property Rights (amended some Rules in 2010, 2011 and 2013):
By Ms. Dao Thu Trang
DEPUTY DIRECTOR OF PATENT DEPARTMENT OF INVESTIP