Clause 1 – Article 60 of the amended Law on Intellectual Property (IP) 2022 is amended as follows:
Article 60. Novelty of inventions
1. An invention is considered novel if it does not fall into one of the following cases:
a) Being publicly disclosed in the form of use, written description, or any other form inside or outside the country before the filing date of a patent application or before the priority date in case a patent application claims priority right.
b) Being disclosed in another patent application having an earlier filing date or priority date but published on or after the filing date, or priority date of that patent application.”
Back to the provisions of the IP Law 2005, it is found that documents (non-patent literature and patent) are only considered as prior art to assess novelty when they are published before the filing date (or priority date) of the patent application being examined.
According to the patent examination process, after a patent application is concluded to meet patentability criteria (novelty, inventiveness and applicability), the application shall continue to be examined whether it meets the “first to file” principle specified in Article 90.1 and Article 90.3 of the IP Law 2005. If the application does not meet this principle, it cannot be granted a patent. In order to examine the “first to file” principle, IP Vietnam will have to continue searching for patent applications whose filing date (or priority date) is earlier but published on or after the filing date (priority date) of the application being examined. That can be the cause of the increase in the backlog of applications at IP Vietnam. Accordingly, Article 60.1 is amended in 2022 to solve this problem.
The amended Article 60.1 further adds a type of patent documents used as prior art to assess the novelty. Those are patent applications, which have an earlier filing date (or priority date) but are published on or after the filing date (or priority date) of the application being examined and disclose the subject matter(s) of that application, are also considered as prior art to assess the novelty of the patent application filed later.
Therefore, we think this amendment is reasonable, more comprehensive to assess the novelty and contributes to solving the above problems while still meeting the “first to file” principle.
Accordingly, under Article 60.1 of the IP Law amended in 2022, we note that
* Prior art considered to assess the novelty includes:
– Documents (non-patent literature and patent) published before the filing date (or priority date) of the application being examined; and
– Patent documents having an earlier filing date (or priority date) but published on or after the filing date (or priority date) of the application being examined.
* Patent documents under Article 60.1b) are not applied to assess an inventive step.
Should you have any further questions, please do not hesitate to contact us at winco@winco.vn; patent@winco.com.vn.
