Computer programs are generally known as a set of instructions expressed in the form of source codes, and when being executed by a computer device, are capable of performing a task or achieving a result. In Vietnam, computer programs are recognized as literary works and are protected under the copyright regime. Therefore, computer programs are excluded from being considered as an eligible subject matter for patent protection according to Article 59.2 of the Vietnam IP Law (hereinafter referred as “IP Law”).
Over the years, the software industry has grown exponentially and mobile applications have become inseparable from our daily lives in the digital world. In an effort to keeping pace with the times, Intellectual Property Office of Vietnam (NOIP) has reconsidered the possibility of patenting computer programs, allowing a computer-implemented invention or an invention related to a computer program to be considered as patent eligible subject matter as long as the claimed subject matter has technical features that provide a further technical effect going beyond the workings of a standard operation between the computer program and the computer. This approach is provided and set out in the Article 220.127.116.11 of the Guidelines on examination of patent application issued on 31 March 2010, as amended on 31 December 2021 (hereinafter referred as “Guidelines 2010”).
However, Guidelines 2010 remain unclear and vague to most patent practitioners including patent examiners in Vietnam where patentability of an invention involving a computer program is concerned. Specifically, patent practitioners are uncertain as to in what circumstances a patent application involving a computer program would be considered as patent eligible subject matter according to the Article 18.104.22.168 of the Guidelines 2010.
In response, NOIP issued further clarification by way of an Annex to Guidelines 2010 on 31 December 2021. The Annex does not introduce significant changes to the provision of Article 22.214.171.124, rather, it provides more details by way of inquiries to help assess if a patent application involving a computer program is eligible for patent protection, during both formality and substantive examination processes.
Formality Examination Process
In the formality examination stage, the patent examiner will have to preliminarily inquire based on the following Question 1 and Question 2 if an application involves a computer program is excluded for patent protection.
Question 1: Does the subject matter contain technical features (hardware, data processing representing physical entities)? If the Question 1 is answered in the negative, then the claimed subject matter is not patent eligible and will be rejected according to Article 59.2 of the IP Law.
Question 2: Is the subject matter named with a term like “computer program”, “computer program product” or “signal-carrying program”? If the Question 2 is answered in the negative, then the claimed subject matter is not patent eligible and will be rejected according to Article 126.96.36.199 of the Guidelines 2010.
The Annex further prescribes that the following claim formats for computer programs patent application could be accepted during formality examination: –
(1) a method performed by a computer for a purpose;
(2) a processing apparatus adapted to perform the method; or
(3) a computer-readable storage medium containing a computer program to perform the method.
Substantive Examination Process
Despite having cleared the formality requirements in the formality examination stage, the patent examiner will need to consider Question 3 as set forth below during the substantive examination process so as to ensure that the claimed subject matter is truly eligible for patent protection.
Question 3: Does the subject matter contain technical features producing a further technical effect? If Question 3 is answered in the negative, then the claimed subject matter is not eligible for patent protection and hence will be rejected according to Article 188.8.131.52 of the Guidelines 2010.
In view of foregoing, applicants should be mindful that:
(1) Claims that are ppatent application involving a computer program resented as “computer program”, “computer software”, “computer program/software product” or “signal-carrying program” will be objected to during formality examination, and should be avoided.
(2) In order for an invention relating to computer programs to be considered as patent eligible subject matter during substantive examination stage, the computer program should show that it attains a further technical effect beyond “normal interaction” between the computer program (software) and the computer (hardware). Currently, no further clarifications or guidelines are provided in the Annex as to how to interpret “further technical effect” attained by the computer program. However, if the invention merely involves the use of generic computer or computer system to perform a pure business method or a calculation method, then such invention is unlikely to be considered as patentable subject matter in Vietnam.
Patent examiners in Vietnam have started applying Guidelines 2010 and the Annex thereto from April 2022 and it is expected that further clarity will become available as more and more such applications go through the assessment and examination processes.