In the patent procecution, patent drafting is probably the most important aspect of the patent application because the Intellectual Property Office of Vietnam (IP VIETNAM) makes its determination as to whether or not an invention is patentable based solely on the disclosure provided to it: the patent application. The patent drafting also sets out the scope of protection by which the patent owner(s) will be bound. Nonetheless, responding to IP VIETNAM’s Office Action (i.e. notification of refusal) is no less important. The accurate and persuasive response to overcome the objection requires a variety of skills, including the ones of reviewing, interpreting, summarizing and counter-argument. The reality shows that local vietnamese applicants and representatives thereof encounter difficulties in this particular area of practice, especically in a case where the notifications of refusal is arisen with respect of the patentability requirements (i.e. novelty, inventive step and industrial applicability).
This piece serves to provide a typical case where our expert, thanks to his skills and specialized technical knowledge, has successfully asisted and advised the applicant in the patent prosecution to obtain patent protection.
1. Summary of IP VIETNAM’s notification of refusal
On August 31, 2018, IP VIETNAM issued the notification of refusal ‘587 concluding that the claimed subject-matters do not meet the requirements with respect to novelty and inventive step.
Particularly, the subject-matters do not fulfill the requirements of novelty and inventive step in ligh of prior arts (citations D1-D6) as cited below:
- D1: Ismail Demir* et. al.: “Reuse of waste bricks in the production line”, Building and Environment, Volume 38, Issue 12, December (2003), pages 1451-1455
- D2: P. Muñoz Velasco* et.al.: “Fired clay bricks manufactured by adding wastes as sustainable construction material – A review”, Construction and Building Materials, Volume 63, 30 July 2014, Pages 97-107
- D3: Vivian W. Y. Tam* et. al.: “A review on the viable technology for construction waste recycling”, Volume 47, Issue 3, June 2006, Pages 209-221
- D4: Alaa A. Shakir* et. al.: “Manufacturing of Bricks in the Past, in the Present and in the Future: A state of the Art Review”, International Journal of Advances in Applied Sciences (IJAAS), Vol. 2, No. 3, September 2013, pp. 145-156
- D5: KR 100664567 B1
- D6: CN 104108920 B
In this particular case, a number (6) of citations cited in the notificaton of ‘587 requires a response to the ‘587 to be clear, comprehesive, logical and persuasive by which the objections would be withdrawn. This is however no small task.
3. IPHOUSE expert consultant
On the basis of reviewing, interpreting and summarizing the examiner’s opinion and disclosure of prior art citations, the expert asisted and consulted the applicant with respect of the response to the ‘587 and succeeded in pursuing the examiner to withdraw the objections.
In particular, the expert established “so-called” novelty table to make “technical features” comparison of the present invention vs prior arts.
The novelty table established by IPHOUSE expert
The establishment of the novelty table has never been an easy task as it requires to have a mixed range of relevant skills such as construing the prior art citation (s), defining the level of disclosure, then assessing if all the present essential feature has been disclosed or not and so forth. As a result, by highlighting the different and/or new features of the claimed invention vs each of the cited prior arts (as shown in the novelty table above), it has made it easier for the examiner to make a decision, thereby accelerating the examination process.
The response to the ‘587 has consequently been found persuasive. Eventually, IP VIETNAM and the examiner withdrawn the ‘587 objections and issued a notification of intention to grant a patent.
4. Role of IPHOUSE
It is quite clear handling of notification of refusal of IP VIETNAM is not an easy task in this particular area of practice, espcially for domestic applications where the notifications of refusal are arisen with respect of the patentability requirements (i.e. novelty, inventive step and industrial applicability).
Our team, whose attorneys and partners with 10+ year accumulative experience and technical know-how of former examiners, is proud to be an IP consulting firm that specializes in the field of IP, especially inventions. We are confident to bring clients’ satisfaction with the truly high quality of service, along with the professionalism and enthusiasm of a team of experienced professionals with hands-on experience.
We do know how to extract and describe new features (characteristics) of an invention, on that basis draft the specification in a manner that maximizes patentability with the reasonable scope of protection thank to the solid technical knowledge and practical experience of former examiners.
Please stay tuned for our further featured case updates.
Dao Danh Phuoc (Mr.)
Nguyen Anh Tuan (Mr.)
IPHOUSE & ASSOCIATES