How are subject matters related to computer programs evaluated in the patent examination stages in Vietnam?
In Vietnam, computer programs are expressly excluded from patentable subject matter under Clause 2 – Article 59 of the Vietnam IP Law.
However, under Article 18.104.22.168 of the Patent Examination Guideline issued by IP Vietnam, it is recognized that the exclusion above 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.
On the other hand, the guidelines from Article 22.214.171.124 are not detailed enough to meet the examination practice for inventions related to computer programs. Therefore, IP Vietnam recently issued Annex I of the Patent Examination Guideline containing more guidelines for determining whether or not a subject matter related to computer programs is eligible for patent protection. Annex I come into effect from December 31, 2021. Annex I further provides guidance on the assessment of subject-matters related to computer programs in the fomality and substantive examination stages.
- The assessment of the subject-matter in the formality examination stage:
Annex I provides that a computer program-related subject matter may be temporarily acceptable if it contains at least one technical feature (for example, features related to hardware or data processing that represents physical entities).
Annex I takes examples of claims referring to subject-mattes acceptable as valid in the stage of formality examination, such as:
- A method for a purpose implemented by a computer, including steps: step A, step B, step C.
- A processing device adapted to perform the method according to claim 1.
- A computer-readable storage medium storing a program to execute the method according to claim 1.
However, if the claims contain the subject-matters whose names are represented by phrases such as such as “computer program”, “computer software”, “computer program/software product”, ”program-carrying signal”, and other equivalent terms are not acceptable. The examiner should issue an Office Action to disapprove such subject-matters according to the provisions of Article 126.96.36.199 of the Guidelines for Patent Examination.
- The assessment of the subject-matter in the substantive examination stage
As mentioned from the beginning, computer programs (that) have a technical character and simultaneously produce another technical effect are not excluded from patentability.
Therefore, during this stage, Annex I says that the Vietnamese examiners must carefully consider whether the claimed subject matter has a technical character as a whole. In particular, they consider 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 detailed guidance on:
– Examples of another technical effect;
– Ten 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 modeling, (4) schemes, rules, and methods of playing games, (5) business methods, (6) information modeling, activities of programming, and programming languages, (7) data retrieval, formats and structures, (8) database management systems and information retrieval, (9) presentations of information, and (10) user interfaces; and instructions for each form on how to determine whether features performed by the program make a technical contribution and provide a further technical effect.
From the observation of Annex I, it finds that it is easier than before to pass formality examination stage for a computer program-related claimed subject-matter. Although IP Vietnam has strived their best to give guidance for determining patentable subject matters relating to computer programs, in practice the substantive examination for this kind of claimed subject-matters still faces challenges at present.
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