1. Legal Framework

Per Article 102.3, Vietnam IP Law, the essential technical features of a claim are determined based on the following principles:

[The scope of protection of an invention shall be expressed in the form of a combination of technical features which are necessary and sufficient to identify the scope of the rights to such invention and should be compatible with the description of the invention and attached drawings].

Article 16.1, Decree 103 specifies that the scope of rights to an invention is determined according to the scope of protection stated in the Letters Patent.

Per Rule 11, Circular 11, a comparison of the accused product with the claim covering the patented product is made on the following principles:

1. An accused product/product part/process shall be regarded as identical or equivalent to the product/product part/process being protected by a claim (either independent or dependent) in a patent if all essential technical features (elements) claimed in the claim are present in the identical or equivalent form in the accused product/product part/process, wherein:

a. two technical features (elements) shall be considered identical to each other if they have the same nature, the same purpose, the same manner of achieving the purpose, and are in the same relationship with other features stated in the claim;

b. two technical features (elements) shall be considered equivalent to each other if they have the equivalent or interchangeable nature, the substantially identical purpose, and the substantially identical manner of achieving the purpose.

2. If the accused product/product part/process does not contain at least one essential technical feature (element) claimed in a claim, then the accused product/product part/process shall be regarded as not identical or not equivalent to the product/product part/process being protected by the claim.

In conclusion, the Assessed Object shall be regarded as identical/equivalent to the object within the scope of protection of the invention only if the following condition is fully met. All essential technical features as outlined in a given claim of the patent exist in the identical or equivalent form in the Assessed Object.

On the contrary, the Assessed Object shall not be regarded as identical/equivalent to the object within the scope of protection of the invention if the set of essential technical features of the Assessed Object does not contain at least 01 essential technical feature outlined in the claim, regardless of whether there is any further feature contained in the Assessed Object.

Scope of a Patent Right: (Vietnam IP Law, Decree 103; Circular 01/2007)

In principle, the scope of a patent right is defined by claims as provided for in the Patent.

Claims: The combination of all essential elements. Claims must be in conformity with and construed in the context of the specification and drawings in the Patent.
Essential Element: a characteristic of the technical solution, e.g. function, utility, disposition, structure, or ingredient…, which defines, in combination with other essential elements, the nature of the solution.

2. Procedures for Infringement Assessment

Step 1: Construction of the scope of protection (Claim Construction)

Before diving into the specifics of infringement, the National Office of Intellectual Property (NOIP) first meticulously defines the protective boundary of the patent, a process known as claim construction. Imagine this as drawing a fence around the patented invention, determining which elements are essential and how broadly they can be interpreted. Three key tools guide this construction: the all-elements rule, demanding every claim element be present in the accused product, the element-by-element rule, examining each element individually, and the tripartite test, focusing on whether the accused product achieves the same function, in the same way, with the same outcome. To assess this, the NOIP adopts the perspective of a hypothetical "person skilled in the art," someone with average technical expertise and knowledge in the relevant field.

Finally, the doctrine of equivalence provides flexibility, allowing infringement even if the accused product doesn't perfectly match the claims, as long as it essentially operates in the same way to achieve the same result. This comprehensive construction lays the groundwork for determining whether any fence-hopping has occurred, paving the way for the actual infringement assessment.

Step 2: Determination if the accused product/process infringes the construed scope

With the protective fence meticulously constructed, the NOIP embarks on the next stage: meticulously examining the accused product or process to uncover any potential trespassing. This involves thoroughly investigating the accused product's characteristics, carefully dissecting its essential elements to understand its inner workings. A meticulous comparison then ensues, pitting the accused product's features against the defined claims of the patent. Like a detective seeking fingerprints at a crime scene, the NOIP searches for evidence of overlap, employing three levels of scrutiny:

Literal Infringement: This represents a direct match, where the accused product seamlessly mirrors the patent claims, leaving no room for doubt. It's as if someone has brazenly walked through the front gate of the protected invention.
Equivalent Infringement: Even in the absence of a perfect copy, infringement can still occur if the accused product achieves the same purpose through substantially similar means. Think of it as someone tunneling beneath the fence to reach the same destination.
Non-Infringement: If any essential element of the patented invention is absent in the accused product, it's declared "different," akin to someone respectfully staying outside the fence's perimeter.

Through this rigorous comparison, the NOIP meticulously probes for any unauthorized crossings, ensuring that the patent's boundaries are respected and innovation remains safeguarded.

Step 3: Determination of the accused activities is an infringement

Having established whether the accused product or process encroaches upon the patent's protected territory, the NOIP shifts its focus to the specific activities that have sparked the infringement claim. This involves a careful dissection of the alleged acts, pinpointing precisely how the accused product or process is being utilized. The spotlight then turns to the individual or entity behind these activities, seeking to identify the responsible party. Are they acting independently? Are they part of a larger organization? Understanding the motivations and connections behind the alleged infringement is crucial for determining appropriate remedies.

Not every act that falls within the patent's scope, however, constitutes an infringement. The NOIP meticulously examines whether the patent holder has granted permission or authorization for the activities in question. Certain exceptional cases, outlined in law, may also permit specific uses of a patented invention without infringing upon its rights. These exceptions, like carefully constructed bridges over the protective fence, allow for a balanced approach that considers both the rights of the inventor and the broader public interest.

By carefully examining the nature of the accused activities, the involved parties, and any potential exemptions, the NOIP ensures that only truly unauthorized acts are deemed infringements, safeguarding the patent's integrity while upholding the nuances of intellectual property law.

3. Key Factors in Infringement Assessment

Determining patent infringement in Vietnam delves deep into the technical intricacies of inventions and requires a meticulous legal balancing act. The National Office of Intellectual Property (NOIP) wields several key factors like trusty tools, carefully dissecting the accused product, and activities against the intricate boundaries of the patent.

First, literal infringement stands as the most straightforward test. Imagine the patent claims as a meticulously drawn map, and the accused product as a traveler navigating its terrain. If every path the traveler takes perfectly aligns with the map's contours, literal infringement has occurred. No detours, no shortcuts – an exact match.

But the law recognizes innovation isn't always linear. The doctrine of equivalence steps in, acknowledging that even deviations can lead to the same destination. Think of it as an alternative route, perhaps slightly longer or winding, but ultimately reaching the same goal. If the accused product, though not an exact replica, performs substantially the same function in substantially the same way to achieve substantially the same result, the NOIP may still find infringement under this doctrine.

However, not all detours are equal. Some veer so far off the map that they enter entirely new territory. This is where the element-by-element rule shines. Each essential element of the patented invention is scrutinized individually, ensuring its presence in the accused product. Missing just one crucial landmark on the map, like a specific gear in a complex machine, renders the accused product non-infringing.

But the journey doesn't end there. Even if the map analysis seems to point towards infringement, legal nuances can still offer safe harbors. The NOIP considers potential authorizations granted by the patent holder, allowing specific actors to traverse certain paths on the map without trespassing. Additionally, legal exceptions carved out in intellectual property law might provide the accused product with a legal bridge, granting it passage through areas that would otherwise be infringements.

4. Challenges and Opportunities

The NOIP's patent infringement assessment system navigates a complex landscape, rife with both challenges and exciting opportunities. One major hurdle lies in the potential lack of specialized technical expertise within the office. Imagine a team of skilled cartographers facing intricate inventions like uncharted islands – misinterpretations of complex mechanisms can occur, potentially leading to inaccurate infringement determinations. Additionally, the system can be plagued by lengthy timelines and procedural complexities, discouraging patent holders from pursuing legal recourse. Think of it as a treacherous mountain path to justice, deterring many from even attempting the climb.

Yet, amidst these challenges lie promising opportunities for improvement. Collaboration with IP experts from universities and research institutions can bolster the NOIP's technical know-how, equipping them with the tools to accurately navigate the uncharted territories of innovation. Imagine skilled guides joining the cartographers, ensuring a precise understanding of the technical landscape. Furthermore, streamlining procedures and adopting alternative dispute resolution mechanisms can expedite infringement cases, transforming the arduous mountain path into a network of well-maintained bridges, and making justice more accessible for all.

By addressing these challenges and capitalizing on these opportunities, NOIP can build a robust and efficient system for assessing patent infringement. This, in turn, will foster a thriving environment for innovation in Vietnam, where inventors can confidently pursue their ideas knowing their rights are well-protected, and accused parties have a fair and accessible path to resolving claims. The future of the NOIP's system holds the potential to be a well-charted map, where both inventors and accused parties can navigate with confidence, propelling Vietnam forward as a beacon of innovation in Southeast Asia.

5. Conclusion

The NOIP is pivotal in ensuring a robust and fair patent system in Vietnam. While facing certain challenges, its approach to patent infringement assessment provides a framework for safeguarding inventor rights and promoting innovation. As Vietnam continues to integrate into the global IP landscape, ongoing efforts to refine and strengthen the NOIP's assessment system will be crucial to fostering a thriving environment for technological advancement.

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.