1. What is a patent specification?

An invention's method of creation and application is specified in a patent specification, a legal document. The National Office of Intellectual Property (NOIP) publishes patent specifications, which are available via their website's patent search portal. The fundamental tenet of patents is that the state gives the inventor a limited-term monopoly over their invention in exchange for the inventor disclosing it to the public. The specification contains a description of the invention to meet the disclosure requirement. The inventor's actual monopoly right is delineated in the claims. As a result, the patent specification is essentially an agreement between the state and the inventor.

A "person of skill in the art" is someone who has a solid technical understanding of the invention's field and is meant to read and comprehend patent specifications. This "person" is well-versed in the technical background of the invention and is familiar with the jargon and standard operating procedures.

Patent specifications are split into the following parts

Background
Summary of the Invention
Detailed description of the invention
Claims
Figure

2. When can a patent specification be amended?

A patent specification may be changed in Vietnam in three different situations: during the filing process, during the prosecution of a patent application, and following the issuance of a patent.

When filing: The applicant may revise the specification and submit it with the patent application for foreign applications filed in Vietnam that advance to the national phase.
Throughout the patent application procedure, the applicant may, or IP VIETNAM may request that the applicant file a request for an amendment to the patent application before IP VIETNAM issues a decision to accept a patent application, a decision to refuse to grant a protection title, or a decision to grant a protection title. There are three types of amendments: voluntary, in response to IP VIETNAM’s notice of deficiencies, or to conform to a counterpart patent at the suggestion of the examiner.
- Voluntary amendment: The applicant can actively make amendments to the patent specification on issues such as correcting translation errors, correcting the content of the specification, conforming to the counterpart application, etc.
- Revision in response to the notice of deficiencies issued by IP VIETNAM: IP VIETNAM will notify the applicant of any deficiencies in the patent application, detailing the inaccuracies in the specification and the subject matter, and providing them with a fortnight to address the issues. After that, the applicant can modify the specification to address the found flaws.
- At the examiner's recommendation, the counterpart patent was amended to conform: the examiner may recommend that the applicant amend their application to conform with the counterpart application within a set time limit of three years if, during the search and/or submission of documents by the applicant, the examiner finds that the technical requirements for considering the possibility of patentability in major overseas patent offices are relevant to the application filed in Vietnam. Although it is not required, this suggestion could speed up the Vietnamese patent application progress if the applicant agrees to modify the application to match the counterpart patent.
Following the issuance of a utility solution patent by IP VIETNAM: According to the statute, the holder of a protection title may delete one or more independent or dependent claims from the patent specification to reduce the scope of patent protection. Usually, this entails the removal of one or more independent or dependent claims that are covered by the protection title's scope of protection. When a third party tries to invalidate the owner's patent, the applicant typically requests these changes. This is usually because the invention was granted a protection title that extends beyond what was disclosed in the original patent specification, or because the claim does not meet the necessary standard for protection.

3. Conditions must be met to amend the patent specification in Vietnam.

To amend a patent specification in Vietnam, the amendment must adhere to the core principle of not expanding the disclosed scope of protection or changing the nature of the claimed subject matter in the application. Additionally, the amendment must ensure consistency with the application.

If the request to amend is made after a notice of intent to grant a protection title has been issued, the application will be re-examined. Any additional or revised documents submitted by the applicant to IP VIETNAM must be in Vietnamese.

4. What would happen if the amendment broadens the coverage of protection?

IP VIETNAM will send out a notice in one of the following categories if the amendment modifies the nature of the object specified in the application or broadens the scope (volume) of protection beyond what is disclosed in the specification:

• Notice of refusal to accept an amendment request: This notice will state the reasons for refusal and provide instructions for the applicant to submit a new application for the new subject matter if the applicant fails to combine the amendment with a response to any notice from IP VIETNAM;

• Notice of termination of substantive examination ahead of time: This notice will clearly state the reason for termination and provide instructions for the applicant to submit a new application for a new subject matter if the amendment is made at the request of IP VIETNAM under Point 15.3Circular;

• Notice of refusal to grant a protection title: This notice will clearly state the reason for refusal and guide the applicant to file a new application for a new object if the amendment is combined with a written response to IP Vietnam’s notice, as provided for in Points 15.4.a (i), (ii), (iii), 15.7.a (i) and 15.7.a (ii) Circular 01/2007/TT-BKHCN.

5. What are the required documents for amending the patent application?

In Vietnam, the requester of a patent amendment must provide a copy of the corresponding document that has been revised and expanded upon, as well as a thorough justification of the modifications made concerning the document that was originally submitted.

The applicant must submit a Vietnamese translation of the application's specification, which includes the description, claims, drawings, and abstract if Vietnam is designated in an international patent application. If the application has not been published, this holds for both the publication and the initial submission versions. A revised specification and an explanation of the amendment must be submitted by the applicant if the international application has been modified following Article 19 and/or Article 34(2)(b) of the Treaty.

In case the applicant submits a voluntary amendment request or submits a specification of the amendment in response to IP VIETNAM’s notice of deficiencies, an additional fee for amending the content of the application must be paid.

6. Other Practices for Registering Patents in Vietnam

“Use” claims are presently regarded as non-patentable subject matters.

During Vietnam's formality examination for patent applications, the Intellectual Property Office (IPO) consistently objects to specific claim formats like "Use" claims, "Swiss-type" claims, and "second or further medical use" claims. The IPO bases these objections on Section 4(12) of the IP Law, which stipulates that patentable inventions must be technical solutions in the form of products or processes. As claims like "use of product X for..." do not represent either a product or a process, they are deemed unpatentable.

To secure approval, applicants may proactively modify such claims within the initial application or during Vietnamese IPO office actions before entering the national phase. One feasible approach could be revising these claims to "the composition, product... for use as..." while acknowledging that such acceptance is merely provisional at the formality stage. These claim types remain vulnerable to rejection during the substantive examination as per Circular 16/2016/TT-BKHCN. This Circular establishes that functions or utilities of the subject matter seeking protection do not constitute essential technical characteristics but simply represent the intended purpose or resultant effect. Consequently, applicants are advised to carefully evaluate the retention or omission of such claims in the initial application.

Computer programs including software non-patentable subject matters

Besides other subject matters ineligible under Section 59. However, according to the Vietnamese IPO’s patent examination guideline, computer program-based invention may be patentable if such a program that runs in a particular computer can generate technical effects apart from the common interactive communication between the computer and program/software.

First-time novelty disclosure accepted with a 12-month grace period.

Viet Nam only accepted very few cases of loss of novelty before the filling date, so disclosure of novelty before the filling date would have been disastrous for the applicant before the CPTPP's implementation. However, the above novelty rule has been significantly altered by Article 18.38[1], which came into force with the CPTPP. Specifically, information that the person with the right to register the invention discloses to the public or that person receives directly or indirectly from the person with the right to register the invention, should not be regarded as a reference document. This means that the information does not constitute "prior art" or "state of the art" when assessing the novelty or non-obviousness of the patent that is being applied for. However, since a 12-month grace period bars any invention from claiming a priority date, patent applications subject to beneficiaries must be non-conventional, per the Vietnamese IPO Guidelines.

7. Conclusion

Amending a patent specification is not simply a matter of pen strokes and edits; it's a strategic ballet between safeguarding your invention's essence and adapting to the ever-shifting landscape of Vietnamese intellectual property law. By understanding the key moments for revision, the potential outcomes of grant decisions, and the essential conditions that pave the way for a successful amendment, you can ensure your invention receives the robust legal protection it deserves. Remember, a well-timed revision can be the bridge between an ordinary invention and a game-changing innovation, forever altering the trajectory of your intellectual property journey.