Table Of Contents

1. Your Product:

 

Does your product contain any features or processes that are similar to those claimed in the Vietnamese patent?

You must compare the patented innovation with the product that is meant to be commercialized in Vietnam to ascertain the identity or equivalency between the two to assess the likelihood of infringing on someone else's idea. You can decide whether your product has a high or low risk of copying the currently protected invention based on this comparison.

 

On what basis should the possibility of patent infringement in Vietnam be compared and evaluated?

The basis for comparing and evaluating the probability of patent infringement is the extent of patent protection, which is established by the Patent of Utility Solution claims. Since they define the extent of the innovation's industrial property rights, a patent's claims, which are often displayed right after the patent specification, are the foundation of any invention. Patent infringement will happen if your product is covered by a patented invention, and vice versa.

Based on the extent of protection or claims of the patent specification, the Vietnamese enforcement agency will investigate and evaluate the identity or equivalency of the protected invention and the suspected infringing product/process.
Thus, it is necessary to carefully review the patent's claim to identify the extent of protection granted to the patented invention to determine the likelihood of patent infringement in Viet Nam. Note that a patent claim normally consists of one or more claims that are divided into independent and dependent claims. Every claim must provide evidence of the technical aspects of the subject matter being claimed, including fundamental technical characteristics that together are required and sufficient to identify the claimed subject matter, accomplish the intended goals, and set the claimed subject matter apart from previously recognized ones.
 

Are there any significant differences between your product and the patented invention?

You must compare your product to a protected invention to ascertain if it is the same as or equivalent to the protected invention. Article 11, Circular 11/2015/TT-BKHCN, provides the comparison principle. It states that: If all of the basic technical specifications (features) listed in that point are present in the product, product part, or process in question in the same or comparable form, then the product, product part, or process in question shall be regarded as identical or similar to a protected product, product part, or process in a certain (independent and dependent) point of the protection request in an invention patent/utility solution patent.
Without basic technical features, claimed technical solutions cannot be assembled, cannot accomplish their stated goals, and cannot resolve the problems mentioned. Basic technical features are all those technical features (characteristics) that influence the nature of the technical solutions.
 

Whether or not there is an element of patent infringement?

Determining if the topic under consideration contains an infringing element is the most important step in determining whether an infringement has taken place. Article 8 of Decree 105/2006/ND-CP stated that an invention's infringing element may be in any of the following forms: (i) A product or part of a product that is identical or equivalent to a product or part of a product that is protected as an invention; (ii) a process that is the same as or equivalent to a process that is protected as an invention; and (iii) a product or part of the product that is produced through a process that is the same as or equivalent to a process that is protected as an invention are the first three categories.

Moreover, to determine the degree of identity or equivalence between the suspected product and the patented invention, it is necessary to rely on Article 11 of Circular 11 issued by the Ministry of Science & Technology in 2015, specifically:

 

 

How would a Vietnamese court likely interpret the scope of the patent and compare it to your product?

A general approach Vietnamese courts take in such cases and offer some factors they might consider include, but not limited to:

1. Literal Interpretation: Vietnamese courts typically apply a literal interpretation to patent claims, focusing on the plain meaning of the words used within the claim's language. This means they would closely examine the technical features and limitations expressed in the claims to determine whether your product falls within their scope.

2. Doctrine of Equivalents: However, they also recognize the doctrine of equivalents, which prevents someone from evading infringement by making insubstantial changes to a patented invention. This means even if your product doesn't meet every element of a claim, a court might still find infringement if it achieves the same result using equivalent means. They would consider factors like:

  • Function and Results: Do your product and the patented invention achieve the same function or result?
  • Alternatives and Equivalence: Do the differences between your product and the invention represent merely colorable variations or true equivalents?
  • Range of Equivalents: How broad is the range of equivalents under the specific patent and the relevant technology field?

3. Expert Testimony: Vietnamese courts often rely on expert testimony from technical professionals to understand the nuances of the technology and the claims of the patent. This expert advice can be crucial in interpreting the scope of the patent and assessing whether your product falls within its reach.

4. Burden of Proof: The burden of proof in patent infringement cases in Vietnam typically lies with the patent owner to demonstrate that your product infringes the patent. However, you may need to present evidence to support any defenses you claim.

5. Recent Precedents: Vietnamese courts also consider recent precedents from similar cases, particularly those involving the same patent or technology field. Observing how courts have interpreted comparable patents in the past can offer valuable insights into how they might approach your case.

Furthermore, the approach of determining the likelihood of patent infringement can be generalized based on the following formula, where a, b, c, d, and e are the basic technical features, A is the protected invention, and B is the suspected product:

Figure 1: B DOES NOT INFRINGE A. The protected invention (A) includes 04 basic technical features (that is, a; b; c, and d). The suspected infringing product (B) has only 03 features (that is, a, b and c). In this case, product B is not an infringing element of the rights to the protected invention A.

Reason: Product B does not contain all four basic technical features of Invention A.

Figure 2: B INFRINGES A (LITERAL INFRINGEMENT). The protected invention (A) includes 04 basic technical features (that is, a; b; c, and d). The suspected infringing product (B) includes 05 characteristics (a; b; c; d and e). In this case, product B is an infringing element of the rights to the protected invention A.

Reason: Despite the addition of the “e” sign, since product B already contains all four basic technical features of Invention A, product B is an infringing element of the rights to the protected invention A.

Figure 3: B INFRINGES A (EQUIVALENT INFRINGEMENT). The protected invention (A) includes 04 basic technical characteristics (that is, a; b; c, and d). The suspected infringing product (B) consists of five characteristics (a; b; c’; d’ and e). In this case, product B is an infringing element of the rights to the protected invention A.

Reason: Despite the addition of sign “e”, since signs c’ and d are similar to signs c and d of the protected invention, product B is an infringing element of the rights to the protected invention A.

The approach of determining the likelihood of patent infringement can be generalized based on the following formula, where a, b, c, d and e are the basic technical features, A is the protected invention, and B is the suspected product:
 

Are there any defenses to patent infringement that might be applicable in your case?

Determining available defenses to potential patent infringement is a complex legal analysis requiring careful consideration of both the specific Vietnamese patent and your product's technology. Here's a detailed examination of key factors to explore:

1. Non-Infringement: This hinges on a meticulous comparison between your product's features and the patent's claims. If your product lacks even one element of a claim, technically or functionally, infringement wouldn't exist. Conduct a thorough side-by-side analysis, scrutinizing every claim element and highlighting significant differences. Focus on technical nuances, material variations, and alternative functionalities present in your product.

2. Invalidity: Challenge the patent's validity itself, potentially invalidating its enforceability. Explore avenues like:

  • Anticipation: Find prior art, documents, or products publicly available before the patent filing date that disclose all elements of the claimed invention. This negates novelty, a key patent requirement.
  • Obviousness: Analyze whether the invention, considering prior art, would have been obvious to a person skilled in the art at the time of filing. Demonstrate the lack of inventive steps and non-patentable subject matter.
  • Non-enablement: Show that the patent description doesn't adequately enable someone skilled in the art to carry out the invention without undue experimentation.
  • Undue breadth: Argue that the patent claims are overly broad, encompassing more than the actual invention, exceeding the inventor's contribution.

3. Legal Defenses: Consider specific legal arguments beyond the technical realm:

  • Experimental Use: If you used the patented technology solely for research and development, not for commercial gain, an experimental use defense might apply. However, the scope and purpose of your experimentation will be closely scrutinized.
  • Patent Misuse: Demonstrate the patent owner engaged in anti-competitive practices like price fixing or patent holdup, rendering the patent unenforceable.
  • Laches or Estoppel: Prove the patent owner unreasonably delayed bringing suit after learning of potential infringement, causing you prejudice, or acting in a way inducing reliance on non-infringement, potentially estopping their infringement claim.
  • Prior Commercial Use: If you commercially used the invention in Vietnam before the patent filing date, you might have a prior use defense. Evidence of public, continuous, and good-faith use is crucial.

4. Procedural Defenses: Consider procedural flaws in the patent application or prosecution process that could invalidate the patent:

  • Inequitable Conduct: If the patent owner withheld material information or made misrepresentations during the application process with intent to deceive the patent office, the patent might be invalidated.
  • Best Mode Concealment: Prove the patent owner intentionally concealed the best way of practicing the invention, violating disclosure requirements.

Remember, each defense has specific legal requirements and evidentiary burdens. Consulting a qualified Vietnamese patent attorney is crucial for a comprehensive evaluation of your case, potential risks, and optimal defense strategies. They can navigate the legal intricacies, assess evidence, and guide you through the complex landscape of patent infringement and available defenses.

 

3. Conclusion

Navigating the complex landscape of patent law can be daunting, but ignoring it isn't an option. While the allure of immediate market entry or personal satisfaction may be tempting, the inventor who chooses convenience over due diligence risks significant damage, both professionally and personally. Ultimately, asking "Does my work infringe?" isn't just a legal imperative; it's a sign of responsible innovation, protecting not only the inventor's own future but also the integrity of the entire innovation ecosystem. By actively engaging with the patent system, inventors contribute to a fairer and more secure environment for all, paving the way for further breakthroughs without fear of infringing shadows.

If you need further explanation on this subject, please don't hesitate to contact us through email at dung@luatminhkhue.vn or phone number: +84986 386 648. Lawyer To Thi Phuong Dzung.