Doctoral dissertation of law implementing the agreement on trade related aspects

This provision adds to the Paris Convention’s requirements. The Convention recognizes various kinds of industrial patents, such as patents of importation or patents of improvement, but it provides no general definition of patentability. '° In requiring members to grant patents to inventions in the manner stated in the second sentence, when incorporating such TRIPs criteria into their national laws, it is necessary, for example, to define ‘invention’ and to give details to each criterion specified in the definition. This is a TRIPs gap which may lead to problems of ambiguity in the text of the Agreement, determined in Chapter 2.1 Determining Inventions Three conditions, or criteria for conferring a patent on inventions, appear in such TRIPs provision without fully stating what may be an invention.

They are the requirements that the invention be new, involve an inventive step, and be capable of industrial application. How these terms are defined determines how wide or narrow the space of patentability will be as well as, in part, how it will be filled. The width of the concept and its content will also be determined by how ‘invention’ ts defined. There is the initial question of what is an invention.

It is often distinguished from ‘discovery’. Discoveries, in themselves, are not patentable. But discoveries and inventions resemble each other as they both relate to creative or inventive labour working out something new or what has not ever been known before. Discovery is generally defined as the finding out or the bringing to light of what which was previously unknown or the making known something that has not been known, found out, revealed, or brought to light before.'' Invention is something which is devised or contrived and may be the production of a new method, a new art, a new kind of instrument which is 19 See Paris Convention, eg, arts 1, 4, 4bis, 4ter, 4quarter, 5, Sbis, Ster, Squarter, and 11.

'' The Shorter Oxford English Dictionary (Oxford University Press, London, 1973) 563. '“ While establishing chemical elements of a known medicinal plant may be treated as a discovery, combining these chemical entities for a new medical treatment may be considered as an invention with the possibility of a patent for a new pharmaceutical product produced from it. Such TRIPs provision obligates members only to protect inventions by granting patents to them, not discoveries. Some countries, however, give some protection to discoveries so that a new finding may be encouraged and rewarded.

Hence, discoveries may be treated differently between national legal systems. The United States, for example, protects some forms of discoveries.'? Most national patent laws exclude mere discoveries from patentability. '* Vietnam is amongst them. '° Although countries may differ on whether to grant or not grant a patent for a discovery, they often agree on giving no definition of ‘discovery’.

'® Similarly, although defining ‘invention’ is possible, by either reference to characteristics which relate to the inventor’s creative activities or the results that are obtained from such creative activities, most countries choose not to do so in their patent laws. '” In respect of this, the lack of a comprehensive definition of ‘invention’ in TRIPs is understandable.'® National laws often establish the criteria for patentability without further defining ‘invention’ together with lists what is not invention and what is non-patentable. '4 See, eg, Section 1(2)(a) of UK Patents Act 1977, as last amended by the Copyright, Designs and Patents Act 1988; Section 1(1) af Sweden Patent Act 1967, as amended by Act 1158 of 2000; Article 6(a) of Argentina Patent Law Na.481, as amended hy Law Na.572 of 1995; Section 22(1) of Philippines Intellectual Property Code of 6/6/1997 No. 'S Intellectual Property Law 2005 art 59(1).

'* Non-definition of discaveries is found in all patent laws of countries mentioned in notes 14 and L5 above. ' Carlas M Correa, Intellectual Property Rights, the WTO and Developing Countries: The TRIPs Agreement and Policy Options (Zed Books, London, 2000) 51. ' For example, Article 24 of the Poland Industrial Property Law provides that patents shall be ‘granted for any inventions which are new, which invalve an inventive step and which are susceptible of industrial application’. Subsequently, Article 28 of the Law provides a list of non-inventions, including disceveries, 198 But there are some countries which have sought ta define ‘invention’.

They include Argentina, Mexica, and Japan. The definition is aften shart and general to be particularized or detailed in sub-laws, or in administrative and judicial practices.” These cauntries alsa include Vietnam. In particular, Article 4:12 of the 2005 Intellectual Praperty Law defines an invention as: a technical salutian in form of a product ar a process purpasing at handling a determined problem by application af laws af nature This definitian passesses same similarity to that found in the Japanese Patent Act, which defines invention as ‘the highly advanced creation oftechnical ideas utilizing the laws of +21 nature. Except far the ambiguity or vagueness in hoth the Japanese and Vietnamese versions and in the translation ofthase into English,’ the same concept of ‘applying or utilizing the Jaws of nature’ is mentioned.

The highly-advanced technological level and legal system of Japan indicates that Vietnamese drafters of the Intellectual Property Law were assisted by referring to the Japanese law.?? scientific theories and mathematical methods: aesthetic creations; and schemes, rules and methods for performing mental acts, daing business or playing games. Similarities ta these in the Polish Law can be found in patent laws af many ather countries including Spain (WIPO-Lex & IPO). ?° In particular, Article 4(a) of the Argentina Patent Law reads ‘For the purpose of this Law, any human creation that permits material or energy ta he transformed for exploitation hy man shall be considered an invention’. Similar ta this pravision, Article 14 af the Mexica Intellectual Property Law states ‘Any human creation that allaws matter ar energy existing in nature ta be transformed for use by man for the satisfaction of his specific needs shall be cansidered an invention’.

” This is discussed in Subsection /.) Law is Encoded in Language and Language is Ambiguous in Chapter 2 on conceptualizing law’s flexibility. ?3 The details are given in nates 196-199 in Chapter 3 on localizing the WTO/TRIPs Agreement in Vietnam. The drafting course af the 2005 Intellectual Praperty Law with the main responsibilities of the NOIP under the Ministry af Science and Technalagy with substantia! supports by foreign countries including Japan and international organizations including WIPO is discussed. l† shauld be the same from the NOIP’s development at the 1982 establishment (the Patent Office) ta have 27 staff members divided into two divisions of management and information up ta 31 December 2008 being facilitated with 281 professional and supporting staff members dividing inta 19 divisions.

The Office has had bilateral relationships, cooperated with, and received assistance fram foreign projects, including MOIPA (the Industrial Property Administration System ar IPAS), UTIPINFO (the Japan- Vietnam Cooperation Project for Utilization ofIntellectual Property 199 In accordance with a ministerial circular, an application for a patent grant for an invention must represent a technical solution, whether a product or a process.^ A technica] solution is defined as a collection of prerequisite and sufficient information on technical methods and/or technical devices to accomplish a given task or to resolve a given problem.” It may take the form of a tangible object including a tool, machine, equipment, or an electric circuit or be in the form of a process including technological process and method of diagnosing, forecasting, or checking.”° In theory, patents are important and necessary to protect the investment of both local and foreign investors. In practice, a much greater number of patents are in Vietnam granted to foreign individuals or enterprises.”’ As patents can be used as a tool to lock up the development of local technologies, a developing country like Vietnam should not give a wider scope to what is patentable. This can be narrower or widened by the criteria to be met by inventions for the grant of a patent, discussed below.2 Detailing the Patent Criteria The statement in TRIPs that ‘patents shall be available for any inventions. provided that they are new, involve an inventive step and are capable of industrial application’ leaves considerable gaps.

Each of these three criteria needs to be further detailed or particularized Information in Vietnam), ECAP HH (the EC-ASEAN Intellectual Property Rights Co-operation Programs), and SPC (the Vietnam-Switzerland Special Cooperation on Intellectual Property), as well as from the Patent Offices in France, Japan, the United States, Europe, and other countries. See National Office of Intellectual Property, ‘About NOIP: Develapment History’ [Giới thiệu - Lịch sử phát triển - Quá trình hình thành va phát triển của Cục Sở hữu trí tuệ qua các năm]; ‘Annual Report 2005' [Hoạt động sở hữu trí tuệ 2005] 17-22, 27; ‘Annual Report 2007" [Hoạt động sở hữu tri tuệ 2007] 24-27; ‘National Workshop on Development and Utilization of Intellectual Property Information in Vietnam’ [Hội thảo “Phát triển và ứng dựng thông tin sở hữm tri tuệ tại Việt Nam] <www. See also NOIP Centre for Research and Training, ‘About the Project of Modemization ofIndustrial Property Administration’ [Giới thiệu dự án hiện dai hóa quản trị sở hữu công nghiệp] <http:/www.orø>; ASEAN Project on the Protection of Intellectual Property Rights (ECAP HD, The ECAP I] Program <http://wwwecap-praiect. `” See Appendices 2 to 4 to this thesis.

This freedom may be reflected in national patent laws to widen or narrow the scope of patentable inventions. Representing an assembling of TRIPs’ criteria for patents, the 2005 Intellectual Property Law provides for the grant of patents for inventions which possess novelty, involve an inventive step, and are capable of industrial applications.** Each of them is followed by greater detailed provisions. (a) Novelty In patent law, a patent gives the patentee the right to exclude competitors from using the subject matter of the patent. To be awarded this, according to the policy underlying patent law, there must be an investment or effort in creating or inventing something new.

The ‘newness’ of this creation or invention results from a comparison of the state of the art prior to the filing or priority date of the application. This can be provided for differently in the national legislative systems of the members. In most national legal systems the novelty of an invention is considered lost if the invention has been published anywhere, whether in oral or written forms or by any other means.” By way of contrast with the United States law, which an invention is not seen losing its novelty if has been disclosed outside the United States in a non-written manner, including its public use or on sale,° the scope of patentable inventions in such systems is narrower. The law in Vietnam represents this common choice.

In particular, Article 60:1 of the 2005 Intellectual Property Law stipulates an invention is novel if it has not been publicized by use or by description in writing or in any other form, anywhere worldwide. The provision does not mention directly oral or electronic forms of disclosure of inventions but these are covered by the general wording ‘any other form’. ?8 Intellectual Property Law 2005 art 58(1). 201 In addition, the Article affirms that the novelty of an invention is not lost if there is only a limited number of persans who have knownof the invention and they have been obligated to keep it secret.`' No particular number ofpeople is specified.

This is a gap in the local law which does not originate in TRIPs. Novelty is also recognized, if the application is filed within six months from the date of any publication’?