Expected Changes to Vietnam Computer Program Patent Examination Guidelines – Intellectual Property

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The era of Industry 4.0 has led to a dramatic increase in corresponding computer program invention patent filings in Vietnam. However, current patent examination guidelines for computer program related inventions are quite short and vague, which inevitably leads to difficulties in patent examination. Therefore, in 2021, the Vietnam Intellectual Property Office (Intellectual Property Office) considered the need to amend patent examination guidelines for inventions related to computer programs.

Currently, a computer program is excluded from patentability under Article 59.2 of the Intellectual Property Law (Intellectual Property Law). However, in accordance with Section 5.8.2.5 of the Patent Examination Guidelines issued on March 31, 2010, as amended on December 31, 2020 (hereinafter referred to as the 2010 Guidelines), an invention relating to a program of computer may evolve into a granted patent if the claimed subject matter has technical features and/or produces some other technical effect that goes beyond the normal interactions between software and hardware.

From June 24 to December 31, 2021, the Intellectual Property Office established a working group consisting of members of the Patent Examination Center, the Legal and Policy Department and experts from the Japan International Cooperation Agency ( JICA) to detail the provisions of Article 5.8.2.5. in order to tackle the problem of “Under what circumstances are applications related to computer programs patentable?” In December 2021, draft guidelines for this issue were written as an appendix to the 2010 guidelines. The group also consulted with numerous local intellectual property officers, state agencies, organizations, and individuals to improve the project. On December 18, 2021, the Intellectual Property Office hosted an online meeting with intellectual property agents and organizations to discuss the project.

Basically, the draft does not bring significant changes compared to article 5.8.2.5 of the 2010 guidelines, but it adds more details. The project visualizes the computer program patent application process as follows:

Formality review stage:

Step 1. Does the object contain technical characteristics (hardware, data processing representing physical entities)? Otherwise, it will be rejected (Article 59.2 of the Intellectual Property Law).

Step 2. Is the subject named with a term such as “computer program”, “computer program product” or “signal carrying program”? If so, it will be rejected (Article 5.8.2.5 of the 2010 Guidelines).

Substantive examination stage:

Step 3. Does the object contain technical characteristics producing an additional technical effect? Otherwise, it will be rejected (article 5.8.2.5 of the 2010 Guidelines).

Similar to Section 5.8.2.5 of the 2010 Guidelines, any claim purporting to be “computer program”, “computer software”, “computer program/software product” or “signal carrying program” must be eliminated by the examiners. However, the draft also provides that at the formality examination stage, three types of claims could be accepted: a method executed by a computer for a specific purpose; a treatment device adapted to implement the method; or one computer-readable storage medium containing a computer program for carrying out the method.

In common practice, difficulties often arise when examining inventions combining a computer program with a business method or a calculation method, which necessitates an exhaustive examination of whether the invention has technical or if it produces any other technical effect beyond normal physical interactions between software and hardware. In the draft annex of December 2021, the approach of the IP office at the stage of formal examination has been sufficiently clarified, but the approach at the stage of substantive examination requires even more explanation, especially more interpretation of the “additional technical effect” examples. If the approach at the substantive review stage is resolved, the review process will be expedited.

It is expected that the amended guidelines will be released in the near future.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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