MENU

  • INTRODUCE
  • PRACTICES
    • Patent/Utility Solution (Model)
    • Trademarks
    • Industrial Design
    • Copyrights & Related Rights
    • Plant Variety Protection
    • Enforcement & Litigation
  • OUR PEOPLE
    • Partners
    • Patent & Design Department
    • Trademark Department
    • Litigation Department
    • Translation Department
    • IP Consultation & Strategy Department
  • NEWS & EVENTS
    • General Information
    • Legal news
    • Vietnam Intellectual Property Issues
    • Recruiment
  • CONTACT
  • English

IPHouse

Công ty TNHH Sở hữu trí tuệ IPHouse và Cộng sự

  • INTRODUCE
  • PRACTICES
    • Patent/Utility Solution (Model)
    • Trademarks
    • Industrial Design
    • Copyrights & Related Rights
    • Plant Variety Protection
    • Enforcement & Litigation
  • OUR PEOPLE
    • Partners
    • Patent & Design Department
    • Trademark Department
    • Litigation Department
    • Translation Department
    • IP Consultation & Strategy Department
  • NEWS & EVENTS
    • General Information
    • Legal news
    • Vietnam Intellectual Property Issues
    • Recruiment
  • CONTACT
  • English
Home » Applicant guide for filing a patent application in Vietnam – Part VIII: “Use” claims

Applicant guide for filing a patent application in Vietnam – Part VIII: “Use” claims

8:10 am 26/05/2021 501 views

Following on from our previous article on new/further medical use invention (http://iphouse.vn/best-practice-guide-for-filing-a-patent-application-in-vietnam-part-i-new-medical-use-inventions-2/), this piece serves to specifically address the issue of “use” claim format, one of the most common, typical formats of claims in PCT applications.

On 15 January 2018, the long-awaited Circular No. 16/2016/TT-BKHCN, revising Circular No. 01/2017/TT-BKHCN, one of the key regulations in the Vietnam IP system, took effect with extensive changes, including supplementation with respect to essential features of technical solution, to which it has alleged that function or purpose of a claimed subject matter is not regarded as essential technical feature. That is to say, the supplementation implies “use” claim are NOT patent-eligible in Vietnam, basically on the ground that it was not patentable subject-matter as such. This is an unfavourable point for applicants, especially for the ones owning inventions in the pharmaceutical field.

1. Format of “use” claims

Typical “use” claims are in format such as:

“1. Use of subtance X […].”

For example:

Claims

1. Use of a 2,3-dihydroimidazol[1,2,c]quinazoline compound of general formula (I) for the preparation of a medicament for the treatment or prophylaxis of breast cancer:

(claims of PCT application number: PCT/EP2012/005595).

In accordance with the PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/10), in some International Searching and Preliminary Examining Authorities, for purposes of international search and examination, a “use” claim of the above-mentioned form such as “Use of substance X as an insecticide” should be regarded as equivalent to a (misguided) “process” claim of the form “a process of killing insects using substance X.”

However, it should be noted that in certain designated/elected States of the PCT treaty, US for instance, “use” claims are considered by the United States Patent and Trademark Office (USPTO) to be improper process claims which lack clarity and constitute excluded subject matter on the ground that the claim above provides for the use of substance X, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass (i.e, attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112, second paragraph).

2. Legal basis in Vietnam

  • Law No. 50/2005/QH11 of November 29, 2005, on Intellectual Property
  • Circular No. 01/2007/TT-BKHCN of February 14, 2007 guiding the implementation of The Governments Decree No. 103/2006/ ND-CP of September 22, 2006, revised by Circular No. 16/2016/TT-BKHCN of 15 January 2018 (Circular)

3. Practice in Vietnam

3.1. “Use” claims as such used to be patentable subject-matter until the 2006 amendment of Law. At present, “use” claims as such are NOT permitted.

“Use” claim is NOT allowed based on the following:

  • “Invention is a technical solution, in form of a product or a process, to resolve a specific problem by utilizing laws of nature.” (Article 4, Item 12, the Law on Intellectual Property)
  • “The object stated in an invention registration application shall be considered incompatible with the type of invention protection title applied for by the applicant (invention patent/utility solution patent) if it is not a technical solution, particularlynot a product or a process […]” (Article 25.3a, the Circular)

3.2. In the light of the above, the claim format “Use of […]” as such shall not pass formality check and be rejected by the IP VIETNAM (on the ground of “Use of […]”as such is not a technical solution,  in particular failing to be either a product or a process which is patent-eligible.

An amendment is thus required.

To overcome the refusal, “Use of a compound” for example can be normally amended/rephrased to “A compound for use” to just pass the formality check. Such invention will however be refused by IPVIETNAM on the ground of lack of patentability in principle.

3.3. Interpretation of the claim format

In practice, as indicated above, a claim of the form “Use of a compound“ as such shall not pass formality check and be rejected by the IP VIETNAM. One of the common proposed amendments is to rephrase “Use of a compound“ to “A compound for use” in an attempt to over come the formality rejection.

The claim format of “A compound for use“ shall normally be interpreted as directed to the compound per sei which is in fact suitable for the stated use (Article 25.5d(ii) of the Circular*, Article 22.2.2.5(2) of the Examination Guidelines for Patent and Utility Model in Vietnam, and point 5.21 of PCT/GL/ISPE/10). Furthermore, a known compound same as defined in the claim, though it has never been described for that use, would deprive the claim of novelty.

In the view of foregoing, IP VIETNAM alleges in the Office Action that novelty of a substance relates to structural and/or compositional features (e.g., the structure of the compound and/or the composition of the compound) but not functional features (new/futher use (the stated use) of the compound). Furthermore, the stated use of the compound does not imply any changes to the structure and/or composition of the claimed compound. Accordingly, the stated use, which is considered to be a functional feature, would not render the substance as novel. In orther words, the novelty of a substance requires structural and/or compositional features in principle under the current practice in Vietnam.

(*) While the legislation might be previously considered to be not really clear in this regard, the Circular No. 16/2016/TT-BKHCN, revising the Circular No. 01/2017/TT-BKHCN, has however supplemented the regulations and the definition with respect to “essential  technical  features” in details: “essential technical features are structural features (parts, linkage etc.) or substance structure (composition, presence, element states, etc.) with other essential features to constitute a necessary and sufficient set to determine the claimed the subject-matter”.

In short, “use” claims as such is currently regarded NOT patent-eligible in Vietnam.

IPHOUSE & ASSOCIATES is incharge of the article development. All rights reserved. Any copying, reproduction or distribution of the article without permission of the author is strictly prohibited.

Any of the above general information is not legal advice. Should clients need any further information on legal IP matters, please contact us at:

Dao Danh Phuoc (Mr.)
Head of Patent and Design Department – IPHOUSE & ASSOCIATES
Phone: (+84)967742458 (Direct)
Email: daodanhphuoc@iphouse.vn
Website: http://iphouse.vn/

Tweet
Next Post Patent Prosecution Highway (PPH) program between IP VIETNAM and KIPO to be extended to 2023
Previous Post Applicant guide for filing a patent application in Vietnam – Part VII: Extensive changes to the IP system of Vietnam

Related posts

  • Applicant guide for filing a patent application in Vietnam – Part II: Filing under the Paris Convention
  • Applicant guide for filing a patent application in Vietnam – Part XI: Methods for non-diagnosis/treatment purposes and patentability thereof
  • Applicant guide for filing a patent application in Vietnam – Part X: Patentability of methods of diagnosis or treatment of disease
  • Applicant guide for filing a patent application in Vietnam – Part IX: Correction of mistranslation
  • Notes for Hague System Users to Designate Vietnam – Part II: Common Notifications of Refusal
  • Applicant guide for filing a patent application in Vietnam – Part VII: Extensive changes to the IP system of Vietnam

LATEST NEWS

  • (Update) Resumption of IP application reception at the IP Vietnam’s headquarter

    (Update) Resumption of IP application reception at the IP Vietnam’s headquarter

    On July 19, 2021, Intellectual Property Office of Vietnam (IP Vietnam) suspended activities of receiving IP applications … Read more

  • (Update) Further Notice of IP Vietnam on extention in statutory compliances due to Covid-19 pandemic

    (Update) Further Notice of IP Vietnam on extention in statutory compliances due to Covid-19 pandemic

    Following up on Notice 7581/TB-SHTT, dated 2 August 2021, the Intellectual Property Office of Vietnam (IP Vietnam) has … Read more

  • Change in IP Vietnam’s domain name

    Change in IP Vietnam’s domain name

    IP Vietnam (Intellectual Property Office of Vietnam), formerly known as  NOIP (National Office of Intellectual Property … Read more

  • Notice of IP VIETNAM on extention in statutory compliances due to Covid-19 pandemic

    Notice of IP VIETNAM on extention in statutory compliances due to Covid-19 pandemic

    On 2 August 2021, the Intellectual Property Office of Vietnam (IP VIETNAM) issued Notice 7581/TB-SHTT (Notice '81) with … Read more

  • (Update) Loose to the requirements of legally eligible person to sign documents

    (Update) Loose to the requirements of legally eligible person to sign documents

    Following up on the Notice No. 13822/TB-SHTT, dated 23 November 2020 (Notice 22'), the Intellectual Property Office of … Read more

  • Temporary suspension of IP application reception at the IP Vietnam’s headquarter

    Temporary suspension of IP application reception at the IP Vietnam’s headquarter

    On July 19, 2021, Intellectual Property Office of Vietnam (IP Vietnam) has announced its reception counter will … Read more

FEATURED IP CASE

  • Handling of notification of refusal of IP VIETNAM

    Handling of notification of refusal of IP VIETNAM

    In the patent prosecution, responding to IP VIETNAM's Office Action (i.e., notification of refusal) is one of vital … Read more

  • Typical case on how to overcome successfully IP VIETNAM’s notification of refusal

    Typical case on how to overcome successfully IP VIETNAM’s notification of refusal

    In the patent procecution, patent drafting is probably the most important aspect of the patent application because the … Read more

  • Nhat Hai New Technology Joint Stock Company (OIC NEW) – Leading nanotechnology from natural medicinal herbs

    Nhat Hai New Technology Joint Stock Company (OIC NEW) – Leading nanotechnology from natural medicinal herbs

    Intellectual Property (IP) is a vital factor to create a driving force for innovation in each country. It also promotes … Read more

ASSOCIATION MEMBER

partner-img
partner-img
partner-img
partner-img
partner-img
partner-img

CONTACT INFORMATION

  • IPHOUSE & Associates
  • Address: No. 60, Lot 2 Long Bien ward, Long Bien district, Hanoi, Vietnam
  • Telephone: 091.555.1198
  • Email: office@iphouse.vn
  • Website: http://iphouse.vn

Service

  • Patent/Utility Solution (Model)
  • Trademarks
  • Industrial Design

GOOGLE MAPS

Copyright © 2021 IPHOUSE.VN