Summary Report on Determination of Inventive step in Vietnam
Item 1:
What are the elements or conditions for determining an inventive step or obviousness in your country?
Under Article 61 of Intellectual Property Law of Vietnam:
An invention shall be considered to involve an inventive step if, based on all technical solutions already disclosed by use or means of a written or oral description or any other form inside or outside the country, prior to the filing date or the priority date, as applicable, of the invention registration application, it constitutes an inventive progress and cannot be easily created by a person with ordinary skill in the art.
Circular 01/2007/TT-BKHCN, providing detailed guidelines for the implementation of Intellectual Property Law, in Section 25 Item 6, provides that the prior art relevant for the purposes of considering an inventive step shall includeall the publications or uses that are publicly available anywhere in the world prior to the filing or the priority date of the patent application under examination.In assessment of an inventive step, the examiner will define whether i) the essential technical features defining the invention in question have been disclosed in the prior art; and whether ii) the combination of the essential technical features of the invention would have been obvious to a person with ordinary skill in the art. An invention shall be regarded as involving an inventive step if it is a result of an inventive activity and is not common general knowledge in the relevant art.
Item 2:
How is the way of creating the invention (e.g. “flash of genius”) evaluated regarding an assertion of an inventive step or obviousness in your country?
As a matter of fact, the patent law and other subordinate regulations do notimpose any restriction on the way of creating the invention. Therefore, the patentability shall not be negatived by the manner in which the inventor arrives at the invention. That is to say, “flash of creative genius” is not required.
Item 3:
How is the effect or function of an invention evaluated regarding an assertion of an inventive step or obviousness in your country?
In the substantive examination process, the effect of the invention is regarded as a pointer to an inventive step if the combination (synergistic) effect of the invention goes beyond what would have been expected from a mere juxtaposition of the known elements. In other words, an invention would involve an inventive step if it has a surprising effect.
Item 4:
How is the commercial success evaluated regarding an assertion of an inventive step or obviousness in your country?
Under the practice of the Vietnamese Patent Office, the commercial success cannot normally be used as an argumentfor supportingan inventive step. As of now, there is no case law in which the inventive step has been asserted by showing that the invention has a commercial success.
Item 5:
Is there any measure under your patent practice that can be taken to prevent hindsight from being applied?
Officially, the Vietnamese Patent Office does not adopt any measure to avoid ex-post facto analysis. However, in practice the problem-solution approach is accepted by the examinersto prevent hindsight from being applied.