What Are Legal Requirements of Patent Description?

When patent owner registers for their patent, one of the most important documents included in the dossiers is the patent’s description. Patent is a technical solution in the form of a product or process which is intended to solve a problem by application of natural laws. Patent description is very important which is aimed to reveal the nature of a patent for examiner to consider its ability if satisfying the protected conditions. Specifically, patent description must include the description and protection scope.

Register patent in Vietnam

The description must completely disclose the nature of the technical solution sought to be registered. It must contain sufficient information based on which any person with average skill in the art can deduce the solution and also clarify the novelty, inventive steps and susceptibility of industrial application of the technical solution.

The description includes the following contents:

-Title of the invention, which briefly expresses the object or objects sought to be registered and must be brief and must not be of a promoting or advertising purpose;

-Use field of the patent: the field in which the object is utilized or to which the object is relevant;

-Technical state of the use field of the patent: The technical state of the above mentioned file at the time of;

-Technical nature of the patent: The nature of the object, in which clearly state the signs (characteristics) featuring the object and clearly indicate the signs (characteristics) which is new to those of known similar technical solutions;

-Brief description of attached drawings (if any);

-Detailed description of invention operating variations;

-Detailed description of invention operating variations;

-Benefits (effects) expected to be achieved.

Protection scope or protection claim of the patent:

The protection scope is used for determination the scope of industrial property rights to patent. The protection scope must be presented briefly and clearly in conformity with the description and drawings, making clear signs of novelty of the object sought to be protected and comply with the following regulations:

-The protection scope (claim) must be adequately demonstrated by the description, including prerequisite and sufficient substantial technical signs to identify the object, achieve the set objective and distinguish the object from a known object;

-Technical signs within the protection scope (claim) must be clear, precise and recognizable in the similar art;

-The protection scope (claim) should not invoke the description and drawings, except for invocation to parts that cannot be accurately described with words;

-If the application contains drawings illustrating the protection claim, signs presented in the protection scope (claim) may be accompanied with indication numbers put in brackets. Those indication numbers are not considered confining the protection scope (claim).

-The protection scope (claim) should (is not required to) be expressed in two sections: Restriction and Distinction. The section Restriction covers the title of the object and signs of the object that are identical to those of the latest known object and is connected to the section Distinction by the phrase distinguishable by or characterized by or equivalent expressions. The section Distinction covers signs that distinguish the object from the latest known object and are combined with signs of the section Restriction to constitute the object of protection claim.

-The protection scope (claim) may include one or more than one points. A multi-point protection scope (claim) may be used to present an object sought to be protected, with the first point (called independent point) and subsequent point(s) used to concretize the independent point (called dependent point(s)); or to present a group of objects sought to be protected, with several independent points, each presenting an object sought to be protected in the group. Such an independent point may have dependent point(s);

-A multi-point protection scope (claim) used to present a group of objects must satisfy the following requirements: Independent points presenting different objects must not invoke other points of the protection scope(claim), unless the invocation helps avoid total repetition of the content of another point; dependent points must immediately follow the independent point on which they are dependent.

Besides the description and protection scope, the patent abstract is also a compelled part in the dossier for patent registration. Accordingly, the patent abstract is used to concisely describe (with no more than 150 words) the nature of the patent. The abstract must disclose principal details of the nature of the technical solution for the informatory purpose and may contain typical drawings or formulas.

If the client needs any other information or requires for further advice, our IP attorney in Vietnam at ANT Lawyers, the IP agent in Vietnam will be available for service.

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Four Steps of Patent Application Processing Procedures

After submitting patent application at National Office of Intellectual Property in Vietnam (NOIP), the applicant will concern on how their application will be processed.

Specifically, patent application will be gone through the following phases: receipt of application; formality examination of application; substantive (ex-officio) examination of application; grant of or refusal to grant protection titles; official registration and publication of decisions on the grant of protection titles.

Vietnam patent

Firstly, receipt of patent application:

When receiving the application in this first phase, the NOIP will check and prepare with the documents listed in the declaration to consider whether to receive the dossiers. In case of sufficient dossiers according to the law, the receiving officer shall receive the dossiers and stamp the submitting date in the dossiers and send back a declaration to the applicant. In case of insufficient dossiers, the NOIP shall decline to receive the dossiers.

Secondly, formality examination of patent application:

The purpose of formality examination is for examination of observance of regulations on formalities applicable to applications, serving as a basis for concluding whether applications are valid or invalid. If the application is valid, it will be proceeded to the next step, otherwise, it will be denied. The formality is considered related to the language in the application, application presentation, word size; the declaration must ensure the compulsory information and be uniformed; regarding the documents required to have the confirmation of competent authority then those documents must have that seal. Besides, the NOIP also check the filing date and priority date (if any). If there are any errors in the dossiers, the NOIP will send a notification to applicant of intention to refuse the valid application and set a period so as the applicant can correct the errors. In case applicant does not reply to the notification, the NOIP will issue the refusal notification of the application; if the application is valid, the NOIP will issue the acceptance notification of the valid application.

Thirdly, publication of valid application:

After being accepted the validity, the NOIP will publish the valid application on Industrial Gazette in the nineteenth month from the date of priority or the filing date in case the application has no date of priority or within two months after it is accepted as a valid application, whichever is later. If the patent application is under the Patent Cooperation Treaty, it shall be published within two months from the date it is accepted as a valid application and entering the national phase. Regarding the application which request for earlier publication, it shall be published within two months from the date the NOIP receives that request or the date it is accepted as a valid application, whichever is later.

Fourthly, substantive examination of patent application;

The purpose of substantive examination is to assess the protect ability of objects stated in those applications under the protection conditions and corresponding protection coverage. Be noted that during the substantive examination process to the application having the priority, the NOIP may use the searching information result and corresponding substantive examination result of the application submitted abroad. However, the applicant could actively provide the following documents for substantive examination: (i) searching information result and corresponding substantive examination result of the application submitted abroad (ii) the copy of protection title on the basis of similar application submitted abroad (iii) the documents related to technical art of the subject mentioned in the application which provided by oversea competent authority and other documents. The content of substantive examination is to assess the corresponding of the subject in the application to each protection claim. After finishing the substantive examination period, the NOIP will issue one of the following notifications:

-The subject in the application does not satisfy the protected conditions or satisfies the protection conditions and remains some errors. Then, the NOIP will issue a notification of intention of refusal to grant protection title and set a period for applicant to have opinion and correct the errors. If the applicant replies to the notification and the NOIP considers to be suitable, then NOIP then issues the intention of granting protection title and set a period for application to submit the granting fee.

-If the subject in the application satisfies the protected conditions, the NOIP then issues the intention of granting protection title and set a period for application to submit the granting fee.

In both the above cases, if the applicant submits the granting fee, publication of granting decision fee; registration protection title fee and first year remaining validity fee, applicant will then be granted the patent registration certificate. Every year, applicant will have to submit the remaining validity fee, otherwise, the protection title will be invalid.  It is suggested that patent attorney in Vietnam will be assigned to follow up with the authority for effective management of IP properties.

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Condition, Procedures and Period of Patent Registration in Vietnam

Before applying the patent registration, applicant needs to find out the matters related to conditions, procedures and period from the time of submission the application until granting the protection title when registering a patent to avoid the cases that National Office of Intellectual Property in Vietnam (NOIP) may issue the notification on denying examination due to not meeting criterias or non compatible dossiers.

Register invention in Vietnam

According to Law on Intellectual Property in Vietnam, a patent needs to satisfy 03 following criterias to be protected:

-An invention shall be deemed novel if it has not yet been publicly disclosed by use or by means of a written description or any other form either inside or outside Vietnam before the filing date or the priority date, as applicable, of the invention registration application.

-An invention shall be deemed not yet publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret.

-An invention shall not be deemed to have lost its novelty if it is published in the following cases, provided that the invention registration application is filed within six (6) months from the date of publication:

1.It is published by another person without permission from the person having the right to register it;

2.It is published in the form of a scientific presentation by the person having the right to register it;

3.It is displayed at a national exhibition of Vietnam or at an official or officially recognized international exhibition by the person having the right to register it.

-An invention shall be deemed to be of an inventive nature if, based on technical solutions already publicly disclosed by use or by means of a written description or any other form either inside or outside Vietnam prior to the filing date or the priority date as applicable of the application for registration of the invention, the invention constitutes inventive progress and cannot be easily created by a person with average knowledge in the art;

-An invention shall be deemed to be susceptible of industrial application if it is possible to realize mass manufacture or production of products or repeated application of the process which is the subject matter of the invention, and to achieve stable results.

For registration procedurds, after the application was filing, it will go through 02 phases of examination:

-The application will be examined formality from 1-3 months. If the application meets the formality criteria according to the law, NOIP will issue the decision on accepting the formality of the application. Then, it will be published on Industrial Property Official Gazette within 02 months from the date of issuing the above decision.

-Then, when having the request, the application will go through a substantial examination within 12-16 months. If meeting the protection criteria as mentioned above, NOIP will issue the Patent to applicant.

However, the actual examining period will be shorter or longer than as regulated.

In case of authorizing ANT Lawyers as IP agent in Vietnam, the client needs to provide the following documents:

-Name and address of the applicant;

-Name and address of inventor(s);

-POA to ANT Lawyers;

-Specification, Figures and Claims of the patent;

-Priority documents (if any);

-Other related documents.

ANT Lawyers - A Law firm in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property rights in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

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Why does Coca Cola Company fail to protect their receipe with patents?

We shall remember that, at any time, choices of IP protection shall always rest on profitability. If the patent protection make people lose money, then people would choose to avoid that.

By patenting the receipe of coke, Coca Cola company have to DISCLOSE the receipe to the world. In return, the receipe MAY be protected for a max of 20 years. After the protecting period expires, Coca Cola receipe falls into public knowledge, and anyone may use it anywhere.

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It is not so easy to crack the coke receipe. Why would Coca Cola disclose their receipe to exchange for a short protection?

Surely, if the receipe is disclosed accidentally, anyone in the world may begin to use this receipe, and numberous competitors appear. In order to minimize the harm brought by the possible competitors, Coca Cola has invested a lot of money on their Trademarks and Scale of Production.

Now Coca Cola have a famous brand. Even two coke products taste the same, you would still choose Coca Cola.

By holding huge scale of production, Coca Cola is able to produce coke at a very very low cost. Even when another company begin to produce the same coke, they can never make coke this cheap.

Even when it is profitable to patent your product, you may still see no “patent” directly linked to a particular “product model”. See iPhone. Thousand of patents may be linked to the product, and there is no patent to protect “iPhone X”. We may need such strategies to mislead competitors, max the protection range, …

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What is the process to apply for a patent?

1.The application is drafted. There are two major sections: the claims, and the support for the claims in the form of drawings and description of the drawings.

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The claims are what you will actually have patented if your patent is allowed; something like “1. A method for teleporting a person from a first location to a second location, comprising: determining a layout of atoms of a person, creating a wormhole between the first location and second location using a nuclear fusion flux capacitor, sending the atoms of the person through the wormhole, and reassembling the person using an electronic atom manipulator and the determined layout.” “2. The method of claim 1, wherein the layout is determined by a portable electron microscope.” and so on. The description and drawings have to illustrate and provide sufficient technical detail that an ordinary engineer or specialist in the relevant field would be able to recreate your invention from the information provided.

2.The application is filed, along with various administrative forms where the inventor affirms they are the true inventor, the inventor/attorney disclose any relevant prior art they are aware of, and initial filing and search fees are paid.

3.The patent office will do a preliminary check to ensure that the formal requirements have all been met, like paying all fees and having legible text and drawings, and will let you know if anything is missing.

4.Within about a year to a year and a half, an examiner will determine if your claims are valid, patent-eligible, and aren’t already done by or obvious in light of what exists in the prior art.

5.If the examiner does reject your claims, you’ll have an opportunity to change the claims and/or argue why the claims should be allowed.

6.If the examiner is not convinced, you’ll have to decide whether to pay fees to reopen examination and repeat step 5, appeal the rejection to a review board (which can take several years), or abandon the application.

7.If the examiner is convinced, your patent will be granted, and you’ll pay some issuance fees and have an official copy of the patent mailed to you. You’ll be able to license the patent or keep competitors from practicing the invention

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How do I write a good provisional patent application?

A provisional patent - as you may already know - helps you buy some time (up to a year ) as you market and possibly develop your idea. This way, if the idea gains traction at some point during the year, you can convert this provisional patent to a fully-fledged utility patent. If not this, you can simply let it expire or lapse after testing the waters and realizing that it wasn't such a good idea to invest hundred of hours and thousands of dollars paying for a utility patent.

Nationalize PCT Patent Application in Vietnam

That being said, here is a quick primer on how to craft a provisional patent:

1. Research Thoroughly

Even before of thinking of filing for a provisional patent, you should first of all do a comprehensive patent search to know whether or not the idea you are interested in has already received another patent protection. Apart from that, conducting a separate search to ascertain that there haven't been any similar inventions that are patented is also a good way of avoiding a corporate lawsuit later. At the same time, you are also likely to come across suggestions of many available unpatented ideas that are in case yours is already taken. Either way, doing a thorough patent search is inevitable as long as you are considering to copyright your innovation.

2. Be Simple, Focused but Thorough

The provisional patent application ought to paint the picture of a unique innovation by listing the specific features/benefits that prove its novelty. In other words, a well-thought and thorough profile is likely to increase the chances of your application getting approved.

3. The Application Package

The full application package ought to tie in the following;

a. The specification of the innovation

b. A drawing of the innovation

c. The filing fee

d. The USPTO Cover

As far as the main body goes, it should consist of the Description of the Innovation, Tittle, Abstract, and the Claim.

Nowadays, you also have to include the drawings of the invention. These can be scanned into the main text area, sketched by hand or designed by CAD, manuals, design software or Powerpoint. Next up is the Claims that describe in detail what the patent seeks to protect. You don't have to include this, but it is recommended that you have them on your provisional patent application.

Lastly, you will have to paste an abstract that summarizes your invention. For this part, it is easier to re-state ( in a few words ) what you had described in the Claims.

The best way to draft a provisional patent application? Ideally, it’s with the assistance of a patentattorney. Patent lawyers do this stuff for a living and will maneuver the application process so that your utility patent application will be a seamless experience. Feel free to visit ANTLawyers.vn. Our legal marketplace is competitively priced, easy-to-use, and backed by a satisfaction guarantee. We offer free consultations to help make sure you’re hiring an attorney that will help you grow your vision. Good luck!

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Can an inventor and a company share patent rights?

Patent rights can certainly be shared between a company and an inventor. In fact, patent rights can be shared by any combination of people and/or entities you can imagine. I’ve attempted to answer.

Who initially owns patent rights?

Under United States patent law, the inventor (or inventors) of a patent own the patent rights unless and until they assign the patent to another person or entity. This means that in the absence of a transfer of rights, the inventor/inventors are the sole owner of the patent rights.

How are patent rights transferred?

Patent rights can only be transferred through a written document. In other words, an oral agreement will not transfer any rights. This requirement means that it is critical to create written agreements for all transfers of patent rights.

How can an inventor transfer some rights to a company?

A patent owner (including an inventor) can transfer some or all of the rights that come with a patent. A patent creates a number of rights, and you can transfer some or all of them via a license or assignment of rights. You also can create a contract that is separate from a patent transfer that entitles someone else to a portion of any revenue created through an invention.

Are there risks of joint ownership?

One issue to consider is that having multiple owners of a patent creates a number of potential risks. One of the rights that comes with a patent is the right to prevent other people from making, using, selling, offering to sell, or import the invention. If a patent is owned by multiple parties, ANY of the owners can provide a license to a third party that provides this right. In other words, a single owner could grant rights to a third party to make, use, sell, offer to sell, or import the invention.

Before you decide how patent rights will be owned and before agreeing to any transfers, you should consult with an intellectual property lawyer who can help you create an overall intellectual property plan. If you’re interested in learning how to create an intellectual property plan, you can contact our IP lawyers in Vietnam for advice via email ant@antlawyers.vn or call our office at (+84) 24 32 23 27 71

Source: Quora

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