Newsletter about use claim and TPP

On 29 November 2005 Vietnam National Assembly passed the first Vietnam Intellectual Property Law, which became effective from 1 July 2006. Article 4.11 of the IP Law provides that “invention is a technical solution, in form of a product or a process, to resolve a specific problem by utilizing laws of nature”.

In an effort to construe this provision of IP Law, Vietnam National Office of Intellectual Property (NOIP) has decided that the inventions relating to new uses of a known product or process shall no longer be regarded as a patent-eligible subject-matter under the new law, reasoning that “use” is neither a “product” nor “process”. In applying this construction of Article 4, the NOIP has rejected, or delayed issuance of patents for, the patent applications, mostly in the pharmaceutical field, containing the claims relating to new uses of a known product or process. This point of view has caused a fierce debate among the IP professionals, which does not cease until today.

In many discussions with the NOIP officers, our patent attorneys have repeatedly emphasized that when defining inventions as “product” or “process”, the lawmakers do not mean that “use” inventions should be excluded from patent protection. Instead, “use” can be regarded as covering either a product or a process as the case may be. In fact, nowhere in the law and the subordinate regulations, the exclusion of use-type inventions is explicitly provided. Moreover, in accordance with Article 25.5.d.(i) Circular 01/2007/TT-BKHCN, “function, utility, structure, interrelation, composition, and so forth” should be regarded as essential technical features of an invention. Therefore, the objections raised by the Office to the use inventions are merely relied on the misunderstanding of the law.

Recently Vietnam has completed negotiation on participation to Trans-Pacific Partnership Agreement, the most important trade agreement in the whole history of the country, which will be signed by 11 countries, including the United States, Japan and Australia. Article 18.37 of TPP requests that each Party “confirm[s] that patents are available for inventions claimed as at least one of the following: new uses of a known product, new methods of using a known product, or new processes of using a known product.” In the other words, under Article 18.37,Vietnam is obliged to accept the “use” inventions as presented in the form of either “product” or “process” claims, which would rebut the wrong assumption that “use” cannot be a statutory subject-matter as not being a “product” or “process”.

We expect that after signing TPP, supposedly in the next month, the NOIP will issue a new guide for examination, which is in compliance with the commitments of Vietnam Government in TPP, accepting at least one of the types of claims for the use inventions. We will inform you of such changes in our patent practice in due course.

Pham & Associates is a largest local intellectual property law firm in Vietnam. We provide counsel and representation in every area of patents, trademarks, copyrights, enforcement of intellectual property rights as well as their representation in arbitration and litigation proceedings etc. For further information about our organization and services, please visit our website: www.pham.com.vn