Lost novelty in patent registration in Vietnam

Patents are a type of intellectual property that can contribute greatly to the country’s industry. That is why the State always encourages the granting of protection titles to inventions that are novelty, capable of industrial application, and have a creative level. So how is the novelty of an invention demonstrated and what is the invention that loses its novelty by itself? The following article Viet An Law will present the regime on lost novelty in patent registration in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.

What is the novelty of a patent in Vietnam?

Under Clause 1, Article 60 of the Intellectual Property Law, which stipulates the novelty of an invention, an invention is considered new if it does not fall into 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.

Lost novelty in patent registration in Vietnam

According to the provisions on novelty in the Intellectual Property Law, it can be seen that inventions have lost their novelty because they are:

• Has been publicly exposed; and
• Not included in exceptional cases (i.e. regulation on the invention is considered not to have lost its novelty).

Form of public disclosure

According to Article 60.1 of the Intellectual Property Law stipulated above, an invention is publicly disclosed when used, described in writing or in any other form and meets:

• Spatial scope: domestic or abroad;
• Time range: before the patent application filing date or before the priority date in case the patent application enjoys priority rights.

For example, if an invention mentioned in the applicant’s patent application has a previous filing date, the invention filed later is considered to have lost its novelty and does not meet the conditions for registration of protection.

• The amended Intellectual Property Law in 2022 does not stipulate in the form of a list of specific cases of invention disclosure as in the old law, for example in the form of scientific reports, displayed at Vietnam’s national exhibitions or an official or recognized official international exhibition;
• To determine whether an invention is a novelty or not, it is necessary to compare and contrast it with specific references. These controls are not only limited to domestic and foreign patent registrations and protection titles but must also be searched in scientific works and research documents in the field. When using reference documents, documents must be evaluated as a whole instead of each separate part of the protection claim.

Note: In cases where the invention has been disclosed in a previous application, it should be noted that there may still be an exception that will not be considered a loss of novelty under the new regulation in 2022. Specifically, in cases where the invention is disclosed in the other patent application with an earlier filing date or priority date that is published on or after the filing date or priority date of that patent application is not considered to lose novelty. This is an additional case according to the provisions of the Intellectual Property Law amended in 2022.

For example: Invention 1 was filed on December 1, 2021, and published on March 5, 2023; Patent 2 is similar to Patent 1, which was filed on May 4, 2022. When examining the patent application, the novelty of invention 2 is not lost even though it was published in an application with a previous filing date, but that application was published after the filing date of patent application 2.

Exceptions are not considered as a loss of novelty of patent in Vietnam

According to Clauses 2,3,4, Article 60, and Article 86 of the Intellectual Property Law 2005 as amended in 2022, cases that have been previously disclosed but have not been considered to have lost novelty include:

• Only a limited number of people know and are obligated to keep the invention a secret;
• Patents are not considered to lose its novelty when announced by the person with the right to register or informed by the person with the right to register directly or indirectly provided that the patent application is filed within twelve months(12) months from the date of publication. It can be seen that the Intellectual Property Law 2022 has amended the period from the date of disclosure but still allows for filing applications to be increased from 6 months to 12 months with the condition that the patent application must be filed in Vietnam;
• The invention is disclosed in the industrial property registration application or industrial property protection certificate 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. This is a new regulation in the Intellectual Property Law 2022.

For an invention to be protected, the consideration of novelty is extremely important and is also a relatively complicated process. Therefore, before deciding to register an invention, the patent owner needs to check the novelty of the invention he owns, to make sure that the invention has not yet been publicly disclosed and is significantly different from previously protected inventions.

An example of the exception

On January 1, 2023, Mr. A created invention B and showed his results to some friends (only limited to these people). 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 to keep the invention secret within 12 months from the date of disclosure.

Some questions related to the novelty of the invention

What are the conditions for patent protection in Vietnam?

A patent is protected in Vietnam when it simultaneously meets the following three conditions:

Be novelty

Specifically stipulated in Article 60 of the Intellectual Property Law 2005, amended and supplemented by Clause 2, Article 2 of the Amended Intellectual Property Law 2019, Clause 19, Point c Clause 82, Amended Intellectual Property Law 2022 as analyzed above.

Be creative

According to Article 61 of the Intellectual Property Law, an invention is considered to have an inventive step if it is based on established technical solutions be publicly disclosed in the form of use, written description, or any other form domestically or abroad before the filing date or before the priority date of the patent application in the case of a patent enjoys priority, the invention is an innovative step, which cannot be easily created by a person with average knowledge of the relevant technical field.

Note: Technical solutions that are inventions disclosed according to the provisions of Clauses 3 and 4, Article 60 of the Intellectual Property Law cannot be used as a basis for assessing the creative level of that invention.

Capable of industrial application

Specifically, according to Article 62 of the Intellectual Property Law, an invention is considered capable of industrial application if it can be manufactured, mass-produced products, or applied repeatedly is the content of the invention and stable results are obtained.

Clients who need advice or learn more about legal issues related to patent registration, utility solution patent registration, industrial design, and trademark registration, please contact Viet An Law Firm for the best support.