Grace period for novelty – a guide for patent examination
Following the introduction of the amended Intellectual Property (IP) Law in Vietnam that came into effect as of 1 January 2010, the National Office of Intellectual Property of Vietnam (NOIP) just launched the detailed Guidelines for Patent Examination (the Guidelines). In the Guidelines, among a number of significant points, the grace period for novelty matter has been clarified in every detail with reference to some examples.
Firstly, it is widely recognized that the grant of a patent to a subject matter which has already been known to the public is against the public interest. That is why the novelty requirement is a prerequisite of any patent system. However, in some cases, the disclosure of invention by inventor himself before filing his patent application was necessary at scientific level, like he must report the results of his research in a scientific presentation or even publish the experimental results. In other cases, the disclosure may happen without permission of inventor. In both circumstances, it seems unfair to penalize the inventor by depriving him of the right to file his patent application just because the invention has been disclosed unintentionally or for a scientific purpose. Therefore, a grace period has been given in several countries to excuse such a disclosure if it was made within that grace period. This is the law in the United States where the grace period is twelve months. In Cambodia, the grace period is twelve months as well. Two year grace period is provided under Canadian patent system and six months are given in Japan.
According to Vietnam IP Law, there are three circumstances, in which the disclosure of an invention shall not anticipate the invention claimed in a Vietnamese patent application if Vietnamese patent application for such invention has been filed with the NOIP no later than six months computed from the date of disclosure. Specifically, the disclosure of an invention shall not anticipate the invention claimed in a Vietnamese patent application if (i) the disclosure is made by a third person in an abusive way without permission of the authorized applicant; (ii) the applicant him/herself has disclosed the invention in a scientific report; and (iii) the applicant has displayed the invention at a Vietnam national exhibition or an official international exhibition or so-recognized one.
This six month period is called a grace period for novelty, which is different from a priority period. The disclosure of an invention within the grace period for novelty in one of three above-mentioned cases shall not anticipate the invention claimed in a patent application if it has been filed with the NOIP within the grace period. However, the date of disclosure is not the priority date. Therefore, if any third party has independently invented exactly the same invention within the period from the date of disclosure to the filing date of the above-mentioned patent application, and this third party has filed his application prior to it, then according to the first-to-file principle of the IP Law, it shall not be patentable. At the same time, the third party’s application is neither patentable because its content has been disclosed in one of three above-mentioned cases. In brief, no patent shall be granted to either patent application.
There is another case that should be taken into account as outlined below. Within six months counted from the date of disclosure and prior to the filing date, if the invention is disclosed again in a manner which is not included in three above-mentioned cases, such a second time disclosure shall attack the novelty of the invention. If the second time disclosure is included in three above-mentioned cases, then the invention is not regarded as being anticipated by the second time disclosure, however the grace period is still counted from the first time disclosure.
Hereunder is one example to illustrate the above-cited situation. Assuming that the inventor of a newly invented toy presented his research results on 1 March 2007 in a report before the Technical Board specializing in manufacture of toys. Three months later, on 1 June 2007, he dropped by the toy counter at an international exhibition on children’s toys and found out that the kind of toy invented by himself has been exhibited there. In that situation, if the inventor files his patent application for the toy after the date of 1 June 2007, then even if the filing is made prior to the date of 1 September 2007 which is the expiration date of the six month grace period, the technical solution claimed in his application shall be regarded as lacking of the novelty. That is because the second time disclosure of his toy invention at the international exhibition was not made by himself, therefore the disclosure does not belong to any of three exclusion cases mentioned above. As a result, the toy invention is not novel since it has been disclosed to the public at that international exhibition.
It should be noted that for the first time in the history of IP development in Vietnam, such detailed provisions on examination of patent applications have ever been seen. Those provisions are regarded as a positive step of the NOIP in struggling with the huge backlog of patent application. From now on, not only the NOIP’s examiners have some consistent guidelines to follow, but also applicants can save their time and money during the prosecution process due to certain ambiguous rejections. Inventors now also know what elements of his invention could be disclosed and in what manner in order to save his invention’s novelty.
Vision & Associates