Patenting inventions contrary to the Government’s requirements in Vietnam
Although the Vietnam Intellectual Property Law No. 50/2005/QH11 (IP Law) provides that inventions which are against the public morality shall not be protected in Vietnam, the Law does not defines which inventions are considered as being against the public morality. Therefore, the issue whether an invention shall be refused on the ground that the use of a patented invention is subject to restrictions of the local law has long been in debate in the National Office of Intellectual Property of Vietnam (NOIP). The practicability of a gaming system is one example.
In 2006, the applicant X filed an application for the invention relating to a gaming system with the NOIP. In 2008, the NOIP refused to grant a patent to that invention on the ground that gambling is prohibited by Vietnamese law, and granting a patent for such invention is considered to encourage gambling and therefore, violate the Vietnamese law.
The applicant tried to argue that according to Paris Convention “The grant of a patent shall not be refused and a patent shall not be invalidated on the grounds that the sale of the patented product or of a product obtained by means of a patented process is subject to restrictions or limitations resulting from the domestic law.” Further, the applicant cited the relevant provision of Agreement on Trade-Related Aspects of Intellectual Property Rights that reads “Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect order public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.”
Also, the applicant opined that although gambling action itself is generally prohibited by Vietnamese law, he does not wish to patent the gambling itself, but the gambling machine. Furthermore, according to Vietnam’s current law and regulations, Vietnam allows trading and importing an electronic game machine installed with prize pay-out programs and specific devices for casino games, and business of electronic games with prizes in Vietnam, such as Circular 48/2006/TT-BVHTT dated 05 May 2006 of Ministry of Culture and Information providing implementation guidelines for Decree 12/2006/ND-CP dated 23 January 2006 of the Government detailing provisions on the implementation of the Commercial Law on international sales of goods and agent for sales, purchase, processing and transit of goods with foreign parties, allows so. Other relevant legal instruments are Decision 32/2003/QD-TTg dated 27 February 2003 of Prime Minister promulgating Regulations on conducting a business of electronic games with prizes for foreigners; Decision 91/2005/QD-BTC dated 08 December 2005 of Minister of Finance Ministry promulgating Regulations on financial management of business activities of games with prizes; and Decision 84/2007/QD-BTC dated 17 October 2007 of Finance Ministry promulgating Regulations on financial management of business activities of games with prizes.
In practice, gambling is still permitted in some restricted areas in Vietnam in accordance with the government’s permission, for example, in Do Son Casino, Haiphong province. Therefore, the gambling machine should not be exempted from patent protection as long as the exploitation of the patented gambling machine should obey the Vietnamese law. It would be fine if the applicant manufactures the patented gambling machine but he is not going to operate it by himself in Vietnam, he may sell it to any authorized person for operating it in Do Son Casino, for example, or somewhere else. However, the NOIP’s examiner did not accept the applicant’s arguments.
To avoid any further argumentation over the patentability of the gambling machine-like inventions, the NOIP has now expressly provided in their guidelines for patent examination that the inventions in relation to means and/or apparatus for gambling, devices for heroin distribution, tools for making fake currency notes, bills, official documents, certificates, stamps, and antiques are regarded as inventions contrary to the government’s requirements. Those inventions are not patentable since gambling, distribution of counterfeit currency notes, bills, official documents, certificates, stamps, and antiques are against the government’s requirements.
The Guidelines also provides that “the meaning of the government’s requirements, public morality and social benefit is rather broad, and it may change from time to time and from place to place. Sometimes, certain regulations may be added or deleted on account of issuance and implementation of new laws or amendment or abrogation of the previous laws. Therefore, examiners should pay special attention to this matter to consider patentable subject matters”. However, the validity term of a patent is limited to 20 years, so that the applicant may suffer from certain loss due to being refused to grant a patent if in the near future the government changes their policy in areas wherein the applicant’s invention was refused.
In the same vein, the NOIP now explicitly provided that the following inventions shall not be patented on the ground of the public morality:
(i) if the publication and exploitation of inventions are against the public morality;
(ii) if the exploitation and/or the use of inventions causes harm to the public or the society, or breaks the proper order of the government and society;
(iii) if the exploitation and/or the use of inventions causes injury or damage to people, or damage to property;
(iv) if the exploitation and/or the use of inventions shall severely pollute the environment, waste the energy or resource source, disrupt the eco-balance, or affect the public health; or
(v) if the use of the patented inventions contain words and/or images which relate to important political events of the government or religion which may hurt the people’s or any ethnic group’s sentiments.
The Guidelines became effective from 31 March 2010 and shall be applied to all pending patent applications. The applicants should take into account this matter when they decide to file patent applications for their inventions relating to gambling machines or the like in Vietnam.
Vision & Associates