[Vietnam] Lack of Inventive Step? Don’t Worry, Get a Utility Solution Patent Instead

By Linh Nguyen

Numerous resources – time, money and effort – are invested when creating an invention, in the hopes of getting a successful patent and thereafter using it as springboard for further innovation and growth. But when your patent application is rejected because the invention is found to lack the inventive step criteria upon substantive examination by the National Intellectual Property office, what happens then?

Do you respond with arguments? Do you make amendments or modifications? What if you’ve exhausted these options? You surely do not want to say, “never mind, forget about it”. After such a long journey, you don’t want to give up on securing a patent for your invention.

Fortunately, there is another way to protect an invention that does not fulfill this patentability requirement. Introducing: utility solutions. 

What is a utility solution? 

A utility solution is a form of intellectual property that protects what is often referred to as “minor inventions” and provides protection similar to patent law. What’s known as a utility solution in Vietnam is also known as petty patent, innovation patent, utility certificate, and utility model in other countries. Unlike a standard invention, a utility solution does not require the “inventive step” criteria to be fulfilled. Thus, it is considered to be less stringent in terms of patentability criteria which makes it suitable to protect inventions that create minor improvements to existing products.

The definition of utility solution can be challenging as the legal system and practice of this patent type varies in various countries. In some countries, applications for utility solutions can be filed in the same fields of technology as patent applications. In other countries, protection under a utility solution may only be available with respect to the shape or structure of products in certain fields—for example, mechanical devices and apparatus.

Under the Vietnamese jurisdiction, patents are available for both inventions and utility solutions. As such, similar to inventions, utility solutions are defined as technical solutions whereby any product or process can be granted a patent. 

How to benefit from utility solution protection? 

A utility solution provides leeway to restore a rejected patent application that lacks the “inventive step” criteria. In other words, a standard invention patent application can be converted to a utility solution to enjoy patent protection. You may think of it as a “Plan B” to obtain patent rights for your innovative technical solution.

Here’s what you should consider if you wish to take advantage of this alternative patent route:

  • To distinguish the patent types, the filing number format for utility solution application is 2-202x-xxxxx whereas for invention application is 1-202x-xxxxx. Nevertheless, the official fees for filing, prosecuting and registering these two applications under the Vietnamese jurisdiction are the same.
  • It is possible to file a utility solution application claiming priority from an invention application under the Paris Convention, and vice versa;
  • A Patent Cooperation Treaty (PCT) application is able to enter into Vietnamese national phase as a utility solution application;
  • During prosecution, a patent application may be converted into a utility solution application, and vice versa (though rarely), in the form of voluntary conversion or as a response to an office action that challenges the inventive step of the invention.
  • The deadline for substantive examination request of utility solution applications is 36 months from the filing date or priority date in case of priority claim, compared to 42 months for invention applications. Other legal timelines apart from that remain the same.
  • Although the validity of a utility solution patent is shorter (10 years compared to 20 years for an invention patent), the scope of protection is the same.

A case study on a granted Vietnamese utility solution

On 4 March 2019, Hanoi University of Technology (the applicant), filed an invention application No. 1-2019-01079 titled “Salt-Tolerant Lactic Bacterium sp. Tetragenococcus Halophilus V7-3”.

The invention is a fish sauce made by fermenting seafood in salt. It aims to improve the obsolete traditional method of making this popular Vietnamese condiment which takes 12 months and is thus not economically efficient. Industrial companies speed up this process by adding protease enzymes but they sacrifice taste in the process.

The claimed subject matter is a potent strain of bacteria sp. Tetragenococcus Halophilus V7-3. It is a technical solution in the form of biological material that is eligible for patent protection in Vietnam. This new strain of bacteria enhances the flavour and aroma of fish sauce more effectively than other commonly used strains, such as Bacillus, Lactobacillus, Clostridium Lactococcus and Staphylococcus, thanks to its higher capacity for producing aroma compounds and tolerating high salt levels.

Under substantive examination, the application was examined to be novel (a new way of isolating Tetragenococcus Halophilus V7-3 from brined fishes) and industrially applicable. However, it did not meet the inventive step criteria as it was assessed to be obvious to the skilled person in the light of the state of the art about the utility of Tetragenococcus Halophilus in the manufacturing process of fish sauce. The applicant then converted it to a utility solution by submitting a request and paying the amendment fees.

As a result, the application was assigned a utility solution application No. 2-2021-00103 by the Vietnamese Patent Office while the filing date remained the same (4 March 2019). Subsequently, the application was granted Patent of Utility Solution No. 2-0002670 on 25 July 2021. Thus, the applicant successfully pursued legal patent protection in the form of a utility solution for their invention.

If your work involves the continuous improvement of processes and products in any field of technology, and you seek patent protection in Vietnam, Southeast Asia or other countries, please reach out to us at kass@kass.asia for support and advice.

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