Would “Use claims” patent be accepted in Vietnam through TPP Agreement?

In practice of patent an examination patent since Vietnamese Intellectual Property Law coming into effect (1^st July, 2006), the Patent Attorneys in Vietnam and National Office of Intellectual property (NOIP) has extended debate on the issue of protection required to “use claims” in application for patent protection.

Specific problems came from the NOIP that patents related to use of known substances or processes to implement new functionality will not be considered as subjects to be protected under Intellectual Property Law, because under the Article 4.12 of Intellectual Property Law “invention is a technical solution as a product or a process in order to address a problem identified by the application of the natural law”. And in the opinion of the NOIP, the “use” is not a “product” or “process”, so that the NOIP has refused to grant or extend the examination of the application for patent protection request for “use claims”.

Contrary to the views of the NOIP, the Patent Attorneys as well as the applicants have repeatedly opinion, by in writing, with the discussions, or presentations in the conferences, that “use” in specific cases must be recognized as a form of “process” or “product”. We should not interpret the wording in the law that rigidly to understand the nature of a patent. Moreover, none of sub-law documents or guiding documents of laws do specify that a form of “use claims” patent is unpatentable.

However, the TPP Agreement, which Vietnam has signed, in part related to Intellectual Property Rights, specifically Article 18.37 TPP, this issue was addressed as follows: “…each Party confirms that patents are available for inventions claimed as at least one of the following: new uses of a known product, new methods of using a known product, or new processes of using a known product”. Therefore, under the provisions, Vietnam which is a TPP member, will have to accept the patent protection for “use” which is presented in the claims as “product” or “process”.

Thus, in future, the Patent Attorneys of Vietnam hopes to end the dispute with the NOIP on this matter and the NOIP will have some changes in examination of patent applications to fit on this commitment of Vietnam when joining the TPP Agreement.