How are subject matters related to computer programs evaluated in the patent examination stages in Vietnam?

Ngày cập nhật: 05/05/2022 lúc 4:20:21

patent examination stages in Vietnam

Computer programs are excluded from patentability under Clause 2 – Article 59 of the Vietnam IP Law.

However, from Point 5.8.2.5 and Annex I of the Patent Examination Guideline, it is recognized that the exclusion does not apply to computer programs that have a technical character (it means that it is to solve a technical problem through technical means) and must produce a technical effect going beyond the “normal” physical interactions between the program (software) and the computer (hardware) on which it is run.

Annex I of the Patent Examination Guideline has been issued on December 31, 2021, being an additional guideline for determining subject matters related to computer programs protected as Patent.

Point 5.8.2.5 and Annex I provide more explicit guidelines for evaluating computer program-related subject matters in the formality and substantive examination stages. Namely that:

  • In the formality examination stage:

Subject matters (that) are related to computer programs and contain technical features related to hardware, namely computers and databases, will be accepted in the formality examination stage.

Therefore, a computer program-related subject matter may be temporarily acceptable in the formality examination stage if it contains at least one technical feature (for example, features are related to hardware or the processing of data and represent physical entities). Annex I provides examples of claims referring to subject-mattes acceptable as valid in the stage of formality examination, that is:

  1. A method for a purpose performed by a computer consisting of steps: step A, step B, step C.
  2. Apparatus for data processing is adapted to perform the method according to claim 1.
  3. A readable medium by the computer that stores the program to execute the method according to claim 1.

Accordingly, subject mattes whose names are represented by phrases such as “computer program”, “computer software”, “computer program/software product”, “program carrying signals”, and other equivalent terms are not acceptable. Examiners still issue a notice requesting the removal of such subject mattes as regulated at Point 5.8.2.5 of the Patent Examination Guideline.

Tips:

In practice, depending on the nature of a subject matter, IP Vietnam can accept the change of the name of unpatentable subject matters (such as “computer program”, “computer software”, “computer program/software product”, “program carrying signals”) into acceptable formats (such as “storage medium containing computer program”, “the non-transitory computer-readable medium”, “computer-readable medium”, “storage medium”, “a method of operating a data processing system” or “apparatus for data processing”), providing that original disclosure of all computer-implemented inventions has relevant features to support any possible amendments.

For example:

A computer program product comprising computer-executable instructions for storage on a non-transitory computer-readable medium that…” should be amended to read as

A non-transitory computer-readable medium for storing computer-executable instructions that…”

Therefore, it is advisable that we can change the name of unacceptable computer program-related subject-matters into acceptable formats.

  • In the substantive examination stage:

As aforementioned, computer programs (that) have a technical character and simultaneously produce another technical effect are not excluded from patentability.

Therefore, during this stage, the examiners from IP Vietnam must carefully consider whether the claimed subject matter has a technical character as a whole. In particular, whether the combination of technical and non-technical features creates another technical effect going beyond the “normal” physical interactions between the program (software) and the computer (hardware) on which it is run.

Accordingly, Annex I further provides:

– Examples of another technical effect;

– Seven invention forms related to computer programs, in which a computer program is related to (1) Mathematical methods, (2) Artificial intelligence and machine learning, (3) Simulation, design or modelling, (4) Performing schemes, rules and methods for playing games, (5) Performing methods for doing business, (6) Presentations of information, and (7) User interfaces. For each form, there are explicit instructions on how to determine whether features performed by the program make a technical contribution and provide another technical effect.

Please do not hesitate to contact us at winco@fpt.vn or patent@winco.com.vn to have further information relating to the examination of Computer-Implemented Inventions in Vietnam.

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