In Vietnam, granted patents can be amended in limited
circumstances under provisions found in the Law on Intellectual
Property (IP Law). For example, Article 97 of the IP Law gives
the patent owner the right, among other things, to request
rectification of errors made by the National Office of
Intellectual Property (NOIP) in the granted patent.
The law is silent regarding the correction of errors made by
other parties, such as the patent owner or the local patent
agent. However, to ensure the accuracy of a patent, common
sense dictates that rectifiable errors should not be limited to
those made by the NOIP, but should extend to any other obvious
In practice, a patent owner can request the NOIP to correct
obvious errors that are not clearly the fault of the NOIP.
However, there is no definition in Vietnamese legal documents
of what constitutes an "obvious error." A recent case involving
a European pharmaceutical company brought this issue to the
The company in question holds a Vietnamese patent for a
compound for the treatment of chest pain, which was granted in
2008. The company is now battling infringing generic products
in the Vietnamese market, but faced a temporary setback when it
discovered, in the course of litigation, that its patent had an
error in the structural formula of the compound, showing a
six-membered ring instead of the correct seven-membered ring,
although the compound name was written correctly.
It is worth noting that the patent originated from a foreign
priority document, which was enclosed with the Vietnamese
application, in which the correct seven-membered ring and the
same compound name were shown. It is likely that the error was
introduced during the translation of the patent specification
into Vietnamese by a local patent agent.
As a result of this error, the company recognised that
enforcement efforts could be hindered, as generic producers
could argue that they were not technically infringing the
patent because the compound in their products was not the same
as the patented compound based on the erroneous structure in
the granted patent.
The company thus proactively petitioned for a rectification
of the granted patent, reasoning that the error in the
structural formula should have been apparent to a person having
ordinary skill in the art, as a six-membered ring in that
position was a chemical impossibility. The examiner in charge
of the patent certainly should have had the capacity to
discover the error before granting the patent, having reviewed
the priority document and the corresponding patents issued
previously by other patent offices, which all showed the
correct seven-membered ring and the same compound name. The
NOIP, however, refused to correct the patent, claiming that the
error was not obvious.
What makes an error obvious?
The NOIP's refusal notice referred to some concepts of
obvious errors in the case law of the Boards of Appeal of the
European Patent Office (EPO), and also stated that the NOIP
considers these concepts to be appropriate. Specifically, the
NOIP cited point 4.2 in the case law, that for a correction to
be made, it must be established that "it is obvious that an
error is in fact present in the document filed with the EPO,
the incorrect information having to be objectively
recognizable [emphasized in the NOIP's notice] by the
skilled person using common general knowledge."
The NOIP argued that if the patent owner did not notice the
error in more than two years of the patent examination period,
or for nearly 10 years thereafter, it could not be considered
"obvious". In addition, the same error appeared in other
applications and patents of the company related to the
While the patent application in question referred to the
correct description in the EP patent, the incorrect
six-membered ring consistently appeared throughout the summary,
description, and claims of the Vietnamese application itself,
and the NOIP further asserted that it had no obligation to
consider other documents, referring to point 4.2.1 of the case
law: "On the other hand, documents even if they were filed
together with the European patent application, such as priority
documents and the abstract may not be used."
The arguments in the NOIP's refusal notice signal that the
NOIP intends to follow the EPO's practice regarding obvious
errors and their corrections (though it is debatable that the
EPO would have come to the same conclusion in a similar
situation). Historically, however, the NOIP's practice has not
always been consistent, and it is unclear to what extent patent
rectification will be allowed in the future.
To ensure their patent rights in Vietnam, applicants would
be well advised to review their applications very carefully,
and rely only on reputable, experienced Vietnamese IP agents
for patent prosecution to avoid unexpected consequences.
|Hien Thi Thu Vu
||Loc Xuan Le
Tilleke & Gibbins
HAREC Building, 4th Floor
4A Lang Ha Street, Ba Dinh District, Hanoi,
Tel: +84 4 3772 6688
Fax: +84 4 3772 5568