By Nguyen Nguyet Dzung

An important question in examination for novelty and inventiveness is the position of earlier filed patent applications, which were not published at the priority date of a later application for the same invention. Before 1 July 2006 in Vietnam, the earlier filed but unpublished patent applications were used as prior art for novelty consideration. Both double patenting and patenting already disclosed invention therefore were successfully dealt with. Under the terms of the Intellectual Property Law 50/2005 of Vietnam (IP Law 50/2005), which came into effect as of 1 July 2006, such secret prior art can no longer be utilized as prior art both against third-party applicants and the later-filing applicant himself. Instead, the secret prior art now shall be taken as a ground to refuse the issuance of patent to later applications filed for the same invention in accordance with the first-to-file principle.

In different parts of the world, such secret prior art has been applied in different ways. However, different approaches should aim at two main purposes: first, to avoid granting two patents to the same invention, and second, to avoid patenting an already disclosed invention. The approach that National Office of Intellectual Property of Vietnam (NOIP) is now using cannot in certain circumstances eliminate patenting two patents to the same or slightly diferrent invention either to different parties or the same applicant. It may not prevent the granting a patent to an already known invention in some exceptional case as discussed below.

What is secret prior arts?

Secret prior arts means previously filed, unpublished patent applications, which are not yet published at the filing of a later filed application that is being examined. Since they are obviously not available to the public as they have not yet been published, the later inventor may not have known of such an unpublished earlier application. No one, except the applicant of the earlier filed application could access that secret information. On this basic, it seems little unfair to expect they should be regarded as part of the state of the art. However, neither is it just if more than one patent should be granted for the same or indistinct inventions either to different parties or the same applicant. It is also against the basic principle of patent laws that a patent may be granted to an already disclosed invention. Secret prior art is an evidence that someone else invented the invention, disclosed it to the patent office in an patent specification in accordance with the requirement of patent laws, and got certain filing date. Therefore, it seems unfair to disregard it as prior art for the later filed application against which it may be cited.

Current Applications of Secret Prior Art

Generally, there are two different views to utilize secret prior art against all third parties as well as against the applicant. The first way is the "prior claim approach" and another one is the "full content approach". The former one only compares the claims of the earlier filed patent application against those of the later-filed application. Its basis is that patents shall be granted to inventions claimed in the claims, therefore the claims of two applications should be compared to each other no matter if the invention claimed in the later application has been disclosed (but not claimed) in the earlier application. The more widely accepted approach is the "whole contents approach". In this case, the entire text of the first patent application is utilized as prior art to be applied against what is being claimed in the second application. Its philosophy is that it is unfair to grant a patent to an invention already disclosed in the earlier application though secretly disclosed only.

The EPC adopted the whole content approach under which the prior art is defined to comprise unpublished earlier filed applications. This simple expedient greatly simplifies the situation although is inequitable in the sense that undisclosed matter should not be counted as prior art. Japan and the United States have also applied the same manner of entering earlier applications into the state of the art, with the exception of applications filed by the same applicant. Lightly diverging from the EPC system, in the US, unpublished earlier applications are used to attack both novelty and inventiveness. And both the US and Japan patent laws make it clear that the prior applications must be owned by "another".

Under the terms of Vietnam IP Law, earlier filed applications now shall be taken as a ground to refuse the issuance of patent to later applications filed for the same invention in accordance with the first-to-file principle, not as the prior art. However, the NOIP of Vietnam follows the prior claim view when comparing the earlier and later filed applications. That is, the NOIP's examiners shall compare the claims of two applications with each other in order to find out if two applications are for the same invention. There are, for example, two circumstances under which either a patent may have been granted to an already disclosed invention, or two patents may have been granted to the same invention as discussed below.

In the first circumstance, assuming that applicant A generated the description disclosing new compound X and method Y for the preparation of compound X. However, in the patent application that A filed to the NOIP entitled "new compound X," A claimed only new compound X (hereinafter referred to as "A's Invention"). One month later, applicant B somehow learned about A's invention and filed another application comprising exactly the same description and a single claim, claiming solely method Y (hereinafter referred to as "B's Invention").

Thus, although B's Invention was already disclosed in the compound application, the NOIP's examiner shall potentially regard B's Invention as new since the earlier compound application is no longer used as the prior art to anticipate the method claimed in the later filed method application (Art. 60, IP Law 50/2005). Also, the examiner cannot reject the later method application for B's Invention in light of the earlier compound application based on the first-to-file principle because according to the NOIP's Guidelines on Patent Examinations (GPE), they are not the same applications. According to Vietnam patent laws and regulations, two applications are the same if they contain the same claims (Item 24, GPE). That is, the first-to-file principle is applied to the same invention while compound X invention and method Y invention are different from each other. Thus, the new IP Law fails to prevent granting patent for already known invention.

Next, the granting two patents for the same invention to two different applicants may happen in the following situation. Further to the situation specified in the above paragraph, we assume that the NOIP issued a compound patent A1 to inventor A for his compound invention fifteen months after A's filing date, and a method patent B1 to inventor B ten months after B's filing date (that is, eleven months after A's filing date, supposing that inventor B filed a request for early publication and expedited examination to get patent B1 for his method invention.. Let us also assume that eleven and a half months after the filing date of his first compound application, inventor A decided to file a second application as an divisional one claiming method Y. Since A's method application has the priority date as the filing date of A's compound application, the method invention claimed therein is novel over the prior art (as the prior art does not comprise B's method application). The NOIP shall potentially issue a method patent A2 to A. Thus, two method patents B1 and A2 were granted to inventor B and A, respectively for the same method Y for manufacture of composition X. This hypothetical situation when it occurs shall contravene Art. 90 of the IP Law.

Apart from two above cited examples, the conflict may even occur in the following situation. Assuming the earlier filed application claims invention 1 having technical features A, B, and C. The later filed application claims invention 2 having technical feature A and B only. Since the earlier application was not published yet, its content shall be kept secret according to Art. 111, IP Law 50/2005. The examiner may not be able either to refer to or to use its content including claims therein as ground to refuse the later application. And since invention 1 and invention 2 are not the same, invention 2 shall not be rejected in accordance with the first-to-file principle. If the situation arose, the later application would mature into patent though sooner or later it would come out to have already been disclosed in the earlier application (as soon as it is published).

Conclusion

It is therefore seen that Vietnam patent system, in the first place, may use some compromised novelty approach for applying secret prior art, both against other applicants and in connection with the applicant himself. Alternatively, if it wants to rely on the first-to-file rejection, should it consider a new compromise type of the first-to-file examination: to compare the claims of the later filed application with the whole content of the earlier application, not only with its claims as presently applied.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.