In the patent prosecution, responding to IP VIETNAM’s Office Action (i.e., notification of refusal) is one of vital events. The accurate and persuasive response to overcome the objection requires a mixed range of skills and knowledge, including that 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).
Again, this peace serves to further provide another typical case where our expert, thanks to his skills and specialized technical knowledge, has asisted and advised the applicant succesfully in the patent prosecution.
1. Notification of refusal no 13550/SHTT-SC, dated 28th June 2020 (‘550)
On 28th June 2020, IPVIETNAM issued the notification of refusal ‘550 concluding that the present claimed subject-matters do not meet the requirements with respect to novelty and inventive step.
Particularly, the present subject-matters do not fulfill the requirements of novelty and inventive step in ligh of prior arts D1-D7 as cited below:
- D1= US2006/0198800 A1 (07/09/2006)
- D2= Alginate/chitosan film loading golden flower tea (Camellia chrysantha) extract: preparation and characterization (Luong Phu Hoang et al, 2018)
- D3= Synthesis, characterization of catechin-loaded folate-conjugated chitosan nanoparticles and their anti-proliferative effect (Buyun Liu et al, 2018)
- D4= Chemical Constituents and Anticancer Activity of Yellow Camellias against MDA-MB-231 Human Breast Cancer Cells (Jia-Ni Lin et al, 2013)
- D5= Ginsenosides as anticancer agents: in vitro and in vivo activities, structure–activity relationships, and molecular mechanisms of action (Subhasree Ashok Nag et al, 2012)
- D6= Enhanced cytotoxic and apoptotic potential in hepatic carcinoma cells of chitosan nanoparticles loaded with ginsenoside compound K (Jianmei Zhang et al, 2018)
- D7= Construction and evaluation of fibrillar composite hydrogel of collagen/konjac glucomannan for potential biomedical applications (Jiayuan Tang et al, 2018)
2. IPHOUSE expert consultant
A number (7) of citations cited in the notificaton of ‘550 requires the response to the ‘550 to be clear, comprehesive, logical and persuasive by which the objection would be withdrawn. This is however no small task.
On the basis of reviewing, interpreting and summarizing the examiner’s opinion and disclosure of prior art citations, our expert consulted and assisted applicant to draft the response to the ‘550.
In particular, the expert established “so-called” novelty table to make “technical features” comparison of the present invention vs prior arts.
The novelty table by IPHOUSE expert
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 resull, the different and/or new features of the claimed invention vs each of the cited prior arts D1-D7 shall be highlighted (as shown in the novelty table above) in such a manner that it has made it easier for the examiner to make a decision, thereby accelerating the examination process.
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.
Please stay tuned for our further update.
Dao Danh Phuoc (Mr.)
Head of Patent and Design Department – IPHOUSE & ASSOCIATES
Phone: (+84) 967 742 458