Granting a patent for an invention loses its novelty

Novelty is an important factor when registering for a protection title for industrial property rights in general and inventions in particular. However, this is also an issue that individuals and organizations often do not pay attention to or do not clearly understand the provisions of the law when registering. Below, Viet An Law Firm will present cases of granting a patent for an invention loses its novelty.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022;
• Decree 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and housing management intellectual property country.

General overview of the invention

An invention is a technical solution in the form of a product or process that aims to solve a defined problem by applying natural laws. According to the provisions of Article 58 of the Intellectual Property Law, when registering for protection, the following conditions must be met:

Conditions for an invention to be protected in the form of a patent are when all of the following factors are met:

• Novelty;
• Have a creative level;
• Capable of industrial application.

Conditions for an invention to be protected in the form of a utility solution patent if it is not common knowledge must satisfy all of the following factors:

• Novelty;
• Capable of industrial application.

It can be seen that novelty is the first and prerequisite factor when wanting to register for patent protection, whether in the form of an invention patent or a utility solution patent.

Novelty of the invention

An invention is considered new if it does not fall into one of the following cases:

• Being publicly disclosed in the form of use, written description, or any other form domestically or abroad before the filing date of a patent application or before the priority date in the case of a patent application mechanism to enjoy priority rights;
• Disclosed in another patent application that has an earlier filing or priority date but is published on or after the filing or priority date of that patent application.

Note: An invention is considered not to have been publicly disclosed if only a limited number of people know and are obligated to keep the invention secret.

Granting a patent for an invention loses its novelty in Vietnam

According to the Intellectual Property Law, cases that have been previously disclosed but have not yet been considered to lose novelty include:

• Only a limited number of people know and are obligated to keep the invention a secret;
  • Be publicly disclosed by the person who has the right to register as prescribed in Article 86 of the Intellectual Property Law or the person who obtains information about the invention directly or indirectly from that person, provided that the invention registration application is filed in Vietnam within 12 (twelve) months from the date of disclosure;
  • The invention is disclosed in the industrial property registration application or industrial property protection title announced by the state management agency on industrial property in case the publication is not by the provisions of law or an application filed by a person who does not have the right to register.

It can be seen that the current regulations have many changes regarding cases where inventions are not considered to lose novelty compared to the Intellectual Property Law 2005 as follows:

• Increase the period from the date of disclosure to still be able to file a registration application from 6 months to 12 months with the condition that the patent application must be filed in Vietnam;
• Do not stipulate in the form of a list of specific cases of invention disclosure such as in the form of scientific reports, displayed at Vietnam’s national exhibitions or official or recognized international exhibitions;
• Additional regulations: An invention does not lose its novelty in case the state management agency in charge of industrial property rights announces it in case the publication is not by the provisions of law or the application is filed by an unauthorized person who has the right to register and pay.

An example of a situation where it is not considered a loss of novelty

On January 1, 2023, Mr. A created invention B and showed his results to some friends (these people must ensure Mr. A’s obligation to keep secrets). After a long time, Mr. A learned that an invention needs to be registered to receive long-term protection. Hesitating about whether your invention will be registered for protection due to loss of novelty or not. On November 1, 2023, Mr. A filed a patent application in Vietnam and was accepted because it belongs to the case where the invention has not lost its novelty when only a limited number of people know and have obligations. keep the invention secret for 12 months from the date of disclosure.

Patent registration dossier

The dossier includes the following documents:

• 02 invention registration declarations according to Form No. 01 Appendix 1 of Decree 65/2023/ND-CP;
• 02 invention descriptions;
• Document confirming registration rights (in case the applicant benefits from another person’s registration rights;
• Documents proving the basis for enjoying priority rights (in case there is a request for priority rights);
• Copy of fee payment voucher;
• Power of attorney for Viet An Law (in case of application through authorization).

Validity of patent protection title

• In the case of protection in the form of a patent, the protection period begins from the date of grant of the patent. Once granted, the invention will be protected for 20 years. This means that during this period, the patent owner has the exclusive right to manufacture, use, and license production to others. These 20 years are calculated from the date of application, marking the beginning of the process of creating and developing ideas until acceptance.
• In the case of protection in the form of a utility solution patent, the protection period also begins from the date of grant of the patent. However, the protection period for this type will be shorter, only lasting 10 years from the date of application.

Patent registration procedures

Step 1: Prepare necessary documents for patent registration

We have detailed the patent registration dossier according to the content above, clients can refer to it.

Step 2: Classify the invention that needs to be registered

International patent classification serves the following main goals:

• It is a tool to organize patent documents, creating conditions for searchers to easily access them.
• A tool to selectively disseminate information to those who need to use patent documents.
• It is the basis for determining the technical level in each specific industry and field.
• It is the basis for statistics on the patent protection situation, thereby assessing the situation and forecasting the development trend of each specific production technical field.

Step 3: Search to evaluate the possibility of registration of the invention

The search will help the author/invention owner evaluate the possibility of registration of the invention before deciding whether or not to continue filing a patent application.

Note: Looking up the possibility of patent registration is very important but not a mandatory procedure, customers can consider looking up. However, as a patent registration consulting unit, we recommend that customers conduct patent search procedures before officially applying.

Step 4: Submit the patent application and registration fee

After having the results of the patent search and the results showing that the invention is capable of registration, customers should apply as soon as possible to have the earliest priority date for registration. In Vietnam, the priority date principle is applied, so whoever applies first will receive priority first.

Step 5: Formality examination of the registration application

The time limit for the formality examination of an invention registration application is 01 month from the filing date.

Step 6: Publish the patent application

Step 7: Substantive examination of the registration application

Substantive examination: no more than eighteen months from the date of publication of the application if the request for substantive examination is submitted before the date of publication of the application or from the date of receipt of the request for substantive examination if the request is submitted after the application publication date.

After completing the substantive examination, the National Office of Intellectual Property will issue a Notice of intention to grant a patent or a notice of refusal to grant a patent and the reason.

Patent registration consulting service of Viet An Law

• Consulting, researching, evaluating usability, and registering for protection of inventions/useful solutions in Vietnam and abroad;
• Complete the application file for an Invention protection title (translate documents or write an invention description and protection request;
• Prepare drawings, make declarations, represents for clients in filing applications for protection titles in Vietnam and abroad;
• Monitor the application testing process at the National Office of Intellectual Property, draft documents and documents for transactions with the National Office of Intellectual Property;
• Representing customers throughout the entire process of establishing rights and responding to official correspondence with the National Office of Intellectual Property on patent registration;
• Exchange and provide information to customers during the process of registering for patent/utility solution protection.
• Consulting and implementing services to maintain the validity of patent protection titles granted in Vietnam and abroad;
• Evaluate the validity of patent protection titles granted in Vietnam and abroad;
• Negotiate, draft, examine, and register contracts to transfer use rights or ownership of inventions in Vietnam and abroad.