How to Repond to the NOIP’s Office Action against

an applied-for Design in Vietnam due to Lack of Novelty?

Email to: vinh@bross.vn

(A perspective view of a bottle design initially rejected

then protected under Patent No. 18591 after successful appeal)

Loss of novelty is a disaster for applicant for industrial design

As we mentioned previously in several general articles^[1] regarding intellectual property right law of Vietnam, an industrial design (design) may be protected as a design exclusive right if it is the external appearance of the product expressed in cubes or lines strokes, colors or a combination of these factors and simultaneously satisfy all 3 protection conditions: novelty (new), creativity (non-obviousness), and industrial applicability.

In Vietnam, the practice has shown that the reason for rejection of applied-for designs mostly falls into non-compliance with the first legal standard of novelty, ie. novelty had been disclosed prior to the filing date or priority date of the design application like an example of a bottle design rejected by the NOIP we briefed below.

On March 21, 2012, the Applicant, Can Tho Beer and Beverage Joint Stock Company, submitted an application for a design registration (bottle for beverage) whose view is depicted above under app. no. 3-2012 -00318. In its 44377/SHTT-KDCN of December 26, 2012, the National Office of Intellectual Property of Vietnam (“NOIP”) refused the applied-for design, stating that it does not satisfy the standards for patentability, particularly the design sought for protection is considered as insignificantly different from a prior art document, ie. non-patent literature existed in the form of a salty lemonade bottle publicly disclosed on the Applicant's own website that the NOIP assumed it was published prior to March 21, 2012. The applied-for design (right column) and the cited design (left column) are as below:

As provided by the Vietnamese IP Law, a design shall be patented only when it still ensures the novelty by the time whose application for registration is lodged, whereby the novelty would be deemed lost in any of two circummstances: (a) any cited design as prior art found that is identical with the applied-for design, or (b) any cited design found that is immaterial different from the applied-for design, and any of these cited designs under (a) and (b) said above has been revealed publicly in the form of use, display, offer for sale, written description or other forms in Vietnam or anywhere in the world before the filing date (or priority date) of the applied-for design. Accordingly, Vietnam is the country that adopts the rule of absolute novelty.

“Saving Private Ryan” successfully appealing in favor of the Applicant

Bross & Partners representing the Applicant in its response to the office action contended that the prior art (cited design) invoked by the NOIP did neither belong to (a)- nor (b)-based novelty loss circummstance as provided for by Article 65 of the Intellectual Property Law by reason of their differences in terms of the characteristic features or shaping characteristics:

1. The characteristic features of the designs in question embodied in the section of bottle mouth are different, ie. no twisted grooves are available on the applied-for design (as the bottle is made of glass, no need to have these grooves due to the fact that the bottle cap would be functioned to press down so as to cover the bottle up). However, unlike the applied-for design, twisted grooves included in the cited design (made of plastic so it is practically in need of twisted grooves).
2. On the bottle shoulder, the embossed word Kook Max in white appears on the bottle shoulder under the applied-for design while the cited design has decorative ribs, no embossing details on it.
3. The shaping features on the lower-half section of the designs in question are also different, ie. while the applied-for design has big, small stylized water bubbles and a chilli-shaped device placed on the oblique and next to the water bubbles, the cited design is labeled containing such details as a stylized teardrop shape, yellow slices of lemon, and the words Kook Max.

In view of the significant differences presented in the response by Bross & Partners,  on 7 October 2013, the NOIP withdrew the office action and granted a patent no. 18591 in favor of the Applicant.

Our Recommendations

1. Do not use, display, publicly disclose or perform any form of dissemination of an industrial design that you have created until the actual date on which you have filed an application for patent for design in Vietnam.
2. Where you have filed a design application abroad (a member of the Paris Convention), you should pay attention to have it submitted immediately in Vietnam before the date of publication of design application by that foreign country's patent office, or it is best to claim the priority date for your Vietnamese design application based on abroad-filed same application not later than 6 months from the date of filing the application abroad.
3. Where your product bearing the design unluckily belonged to the circumstance (1) above while you intend to export abroad, such as in the United States or the European Union, you should be happy because you can still obtain patents for the design there, if you have filed an application for design in the United States and the European Union no later than 12 months from the date of public disclosure since both the US and EU allow a 12-month grace period of novelty (relative novelty)^[2].

Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.