The era of Industry 4.0 has led to a dramatic increase in the filing of patents for invention of corresponding computer programs in Vietnam. However, the current patent examination guidelines for computer program related inventions are quite brief and vague, which inevitably leads to difficulties for patent examination. Therefore, in 2021, the Vietnam Intellectual Property Office (Intellectual Property Office) considered the need to amend the 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 18.104.22.168 of the Patent Examination Guidelines published on March 31, 2010, as amended on December 31, 2020 (hereinafter referred to as the 2010 Guidelines), a program-related invention computer is eligible to become a granted patent if the claimed object exhibits technical characteristics and / or produces an additional technical effect going beyond the normal interactions between software and hardware.
From June 24 to December 31, 2021, the Intellectual Property Office established a working group comprising members of the Patent Examination Center, Legal and Policy Department, and experts from the Japan International Cooperation Agency (JICA ) to detail the provisions of article 22.214.171.124. in order to address the problem of “Under what circumstances are applications relating to computer programs patentable?” In December 2021, the preliminary guidelines for this issue were drafted as an annex to the 2010 Guidelines. The group also consulted many local intellectual property officers, state agencies, organizations and individuals to improve the project. On December 18, 2021, the Intellectual Property Office held an online meeting with intellectual property officers and organizations to discuss the project.
Basically, the draft does not make any significant changes from Article 126.96.36.199 of the 2010 Guidelines, but adds more detail. The project visualizes the process of computer program patent applications as follows:
Formality examination stage:
Step 1. Does the subject contain technical characteristics (equipment, processing of data representing physical entities)? Otherwise, it will be rejected (article 59.2 of the law on intellectual property).
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 188.8.131.52 of the 2010 Guidelines).
Substantive examination stage:
Step 3. Does the subject contain technical characteristics producing an additional technical effect? Otherwise, it will be rejected (article 184.108.40.206 of the 2010 Guidelines).
Similar to section 220.127.116.11 of the 2010 Guidelines, all claims presented as “computer program”, “computer software”, “computer program / software product” or “signal carrier program” should be eliminated by the examiners. However, the draft also foresees that at the stage of the examination of the form, three types of claims could be accepted: a method performed by a computer for a specific purpose; a treatment device suitable for performing the method; or one computer readable storage medium containing a computer program for carrying out the method.
In current practice, problems often arise when examining inventions combining a computer program with a business method or a calculation method, which makes it necessary to consider comprehensively whether the invention has technical characteristics, or if it produces an additional technical effect going beyond the normal physical interactions between software and hardware. In the draft annex of December 2021, the approach of the IP office at the formal examination stage has been sufficiently clarified, but the approach at the substantive examination stage still needs more explanations, in particular more interpretation of the examples of “additional technical effect”. If the approach to the substantive examination stage is resolved, the examination process will be expedited.
It is expected that the amended guidelines will be published in the near future.