Is a Patent in Another Country Considered Prior Art

May 05, 2022 Post a Comment

August iv, 2021

Vietnam's Approach to Secret Prior Art

Introduction

Currently, under Vietnam'southward Police on Intellectual Property of 2005, equally amended in 2009 and 2019 ("IP Law"), hush-hush prior fine art cannot exist used in evaluating patent applications. However, an approach to evaluate hole-and-corner prior art has been included, for the first fourth dimension, in the draft amendment of the IP Law. Below is our word of this interesting topic.

Recognition in Other Jurisdictions

Hole-and-corner prior fine art is the proper name given to prior art that, at the time of filing of a new patent application, was not discoverable by the new applicant or not publicly available. It exists as a filed but unpublished application, unavailable to the public until publication. Until that point, just the applicants and the patent examiners of the unpublished awarding know of its existence. Even though it is non discoverable or available to the public, secret prior fine art tin can still be used as a bar for novelty in many jurisdictions. Cloak-and-dagger prior art is not express to situations in which the kickoff applicant and the new applicant are different people; hush-hush prior art applies regardless. There is, all the same, a domestic limitation: Applications filed and not notwithstanding published in a strange state are not considered to be secret prior art.

When the applicants are unlike people, the new applicant has no way of discovering the cloak-and-dagger prior art that exists as a filed and unpublished application of the outset applicant. Regardless of the completeness of the patent search, the previously filed and unpublished application cannot be discovered. At the fourth dimension of filing, the new applicant's invention would seem novel. Later, it would be discovered that the awarding was actually filed afterwards another application for the same invention, barring patentability. This creates defoliation and unfairness among multiple applicants.

1 applicant tin can also file two separate applications at unlike times, in which the afterwards filed awarding claims subject area matters disclosed in the earlier filed application. Thus, the earlier filed application—regardless of its availability to the public—can be used as secret prior art for barring novelty. This is called "self-collision." Some jurisdictions allow for excluding this undercover prior art considering it arose from the same applicant. This is called the anti-cocky-standoff exception. This is favorable to applicants, because otherwise their ain disclosures may result in a bar to novelty in their own subsequent patent applications.

The anti-self-collision exception is not a perfect solution to the bug cloak-and-dagger prior art creates for an bidder filing two patent applications. Normally, the subject matter disclosed in the first awarding could not be subsequently claimed by another political party, because the offset application would exist considered during novelty assessment. All the same, with this exception, that subject affair would not be considered, which could result in an unfair patent term extension for the bidder in jurisdictions employing the anti-self-collision exception. 1 method for solving this situation is requiring a final disclaimer filed with the new awarding, effectively limiting its term to that of the offset application.

In Vietnam

Currently, although in that location is no "cocky-collision" based on surreptitious prior art, the Intellectual Property Office of Vietnam (IP Part) has another method for disqualification of the later on-filed application without using secret prior art. The IP Office targets the later-filed application using Article 91 of the IP Constabulary—the priority principle. The below summary of a case written report may clarify this exercise by the IP Office.

An applicant files two Vietnam applications—a prior application A1 (claiming priority to an unpublished application P1) and a new awarding A2 (claiming priority to an unpublished application P2). The inventions disclosed in A1 and A2 are considered as beingness similar in nature. The timeline of the related application is illustrated here for reference.

Under the current IP regulations, without any secret prior fine art concepts, A1 is not prior art against A2 if P2 is recognized as A2's priority. However, at applied examination, this priority right is refused, creating a situation in which A1 may go a bulwark for novelty of A2. See the below linguistic communication from the IP Law:

" Article 91. Priority principle: An bidder for registration of an invention, industrial blueprint or mark may claim priority on the basis of the commencement application for registration of protection of the subject matter."

In the view of the IP Office, upon publication of A1, information technology becomes publicly known that P1 is the earliest awarding disclosing the A1/A2 inventions. Thus, P2 is invalid as priority for A2 because information technology was not the first application to disembalm the subject matter. Because A2's priority date is invalid, the basis for its novelty assessment is now its filing date. Any published applications tin can be used as prior art that were available to the public before the claimed date. Since A1 was published before A2 was filed, A1 is used equally prior art against A2, resulting in A2 being considered not novel. This priority rule arroyo brings the same effect to the subsequently-filed application equally would the undercover prior art approach.

A New Arroyo

Recently, an approach to add together secret prior art to the adjacent amended version of the IP Police has been drafted. The suggested subpoena and supplement to Article 60.1 of the IP Law reads as follows:

"An invention in the invention registration awarding with a subsequent filing engagement or priority date is considered having lost its novelty if it is disclosed in another invention registration awarding with earlier filing date or priority date merely published on or after the filing date or priority engagement of such invention registration application."

With this amendment, the IP Role would exist able to directly decide novelty over a underground prior art instead of using the current methods of applying the first-to-file rule and objecting straight to the priority claim from an before-filed application that results in a direct/indirect pathway for barring patentability.

This proposed amendment, notwithstanding, is not clear on several details. The language "another invention registration application" does non specify domestic awarding; thus, information technology is a gray area whether the undercover prior art is only a Vietnam application or if information technology is also any overseas patent application. Further, the concept of "secret prior art" is unclear for PCT applications electing Vietnam but not actually entering the national stage in Vietnam. Finally, the amendment does non specify whether this subpoena applies to utility solution applications in addition to invention applications. Hopefully, further bylaws guiding the amendments of the IP Police force volition address the in a higher place unclear points.

Adopting this amendment would bring Vietnam into the large grouping of jurisdictions that recognizes secret prior art.

This commodity was prepared with the aid of international intern Alex Mischke.

Related Professionals

Head of Regulatory Affairs and Director of Legal Sectionalisation of Patent Department

Managing director, Biotechnology & Chemical Segmentation of Patent Section

Alex Mischke

May 3, 2022

In early 2022 Thailand's Section of Intellectual Property issued its new examination guidelines for trademark registration, replacing the previous guidelines dating from 2011. The new guidelines seek to ensure that the test of trademark applications and the issuance of notifications by the trademark registrar are efficient, timely, in line with electric current practice and based on uniform standards. Ane of the major issues addressed in the new guidelines, which volition exist of interest to make owners, is the distinctiveness of trademarks consisting solely of iii/four messages or of numerals. Department 7 of Thailand'southward Trademark Act states that a trademark containing a stylised letter or numeral every bit an essential element is distinctive. In the past, the trademark registrar interpreted this stipulation as significant that marks fabricated up solely of three/four letters or of numerals, which did not form words or could not be pronounced as words, were not registrable if they were not presented in a stylised course. Under the new guidelines, all the same, the Trademark Act's diction "a stylised letter or numeral" is interpreted every bit referring to a alphabetic character or numeral (in any linguistic communication) represented in an unusual manner. Moreover, the new guidelines state that an uncommon sequence of three or more than messages or numerals (or a combination thereof) is in fact distinctive and registrable. One notable exception to the new standard is that marks that are descriptive of the nature or characteristics of the goods or services are not considered distinctive. The new guidelines provide several examples of marks that would be unregistrable for this reason, such as B12 for vitamins, XXL for habiliment, 34B for bras, or 32GB for retentivity cards. The new guidelines also clearly state that the phonetic transcription of letters or numerals in Thai characters is non considered distinctive. Even so, brand owners still take the correct to appeal decisions on distinctiveness to the Lath of Trademarks, or further to the Intellectual Holding and International Trade Court and college courts. The new guidelines also emphasise that they are in line with several decisions of Thailand's Supreme Court, in which the court recognised the registrability of such trademarks after their initial rejection by the trademark registrar and the Board of Trademarks. Of the many Supreme Courtroom decisions allowing the registration of 3-alphabetic character marks, ii are specifically cited in the new guidelines: Supreme Court Conclusion No 9480/2552 regarding the trademark depicted below for diverse household appliances in Class 7: Supreme Court Determination No 13879/2556 regarding the trademark depicted below for mobile telephones and other communications devices in Course 9: The alignment of the new guidelines with Supreme Court's decisions is a positive and encouraging development for make owners which had previous applications for such marks rejected by the Thai trademark registrar. Brand owners may now feel more con paring nigh re ling for protection of their mark if it meets the criteria under the new guidelines. More broadly, the new guidelines demonstrate that the Section of Intellectual Property is working to align certain practices with the decisions of the Supreme Court.

March 31, 2022

Since the onset of the COVID-19 pandemic and the ensuing safe measures, many Thai retailers have shifted their sales toward online platforms. Unsurprisingly, counterfeiters have followed accommodate. The online sale of counterfeit healthcare and other life sciences products (e.g., food, cosmetics, and medical devices) is an surface area of significant concern, as it is particularly prevalent, dissentious, and complex in relation to Thailand's laws. This commodity outlines this type of counterfeiting activity in Thailand and explains some important tools brand owners have for fighting information technology. Counterfeiting Operations Although illicit operations seek to avoid existence identified by government and brand owners, investigations by police force enforcement and Tilleke & Gibbins on behalf of clients have yielded some insights into how these illegitimate sellers typically operate. Oftentimes, consumers are first exposed to these counterfeit life sciences products by paid social media advertisements that link to social media accounts fix by sellers impersonating make owners. This brand impersonation may include unauthorized employ of a trademark or trade proper noun as office of the account name, and unauthorized reproduction of official ad artwork or product descriptions, taken directly from the official social media business relationship. From the fake social media account, consumers are ordinarily directed to a merchant website that contains consumer reviews, which are entirely made. While non every counterfeiting functioning follows this exact pattern, employing some variation of these methods lends counterfeiting platforms the ability to proliferate through multiple iterations, as well as believability in the eyes of consumers. How Brand Owners Can Have Action Life sciences brand owners often discover that their products have been targeted by counterfeiters when a counterfeit item injures or negatively impacts a consumer. Thinking that the product is genuine, the consumer may so complain to the brand owner, or worse, file a complaint with the authorities. Many times this has resulted in brand owners being surprised by an enquiry from Thailand'due south Food and Drug Administration (FDA) or police looking to investigate a case by interrogating the brand owner and other relevant parties. Once they are enlightened of the counterfeiting situation, brand owners can fight the counterfeiting operation via a number of legal pathways. The typical methods that counterfeiting operations utilize (as described above) likely violate provisions of many different laws. Furthermore, in most cases, the counterfeit items are produced in or imported into Thailand without marketing approving from the Thai FDA, which is an criminal offence under the FDA laws for different production classes, such as the Food Act, Cosmetics Human activity, or Medical Device Act. Aside from producing or importing, the marketing of unsafe products amounts to an even more serious offense under these laws, punishable by fines and imprisonment. Additionally, unauthorized use of a registered trademark is trademark infringement nether the Trademark Human activity, while unauthorized utilise of an unregistered trademark may violate the Penal Code. Unauthorized reproduction of an advertizement image or a product description may be enforced under the Copyright Human action. Thailand's intellectual property laws are enforced through the Department of Intellectual Belongings (DIP) and the Economic Crime Suppression Segmentation of the Royal Thai Police. Furthermore, infringement online may trigger the Reckoner Crime Human action, which can lead to website blocking by courtroom order. Petitions under the Computer Law-breaking Human activity must exist filed with the Ministry of Digital Economic system and Society through the review of the IPR Enforcement Affairs Role of the DIP. Brand owners tend to view the diverseness of relevant laws and enforcement authorities differently. Some may capeesh the freedom to strategize using the enforcement options the laws provide; others may detect those options simply overwhelming. Withal, experienced advisors in Thailand will be able to help in either scenario—either by executing the selected strategy efficiently and effectively, or by helping brand owners sort through their options and recommending the method with the highest likelihood of success. Key Takeaways for Make Owners Commencement, brand owners can be confident that the Thai authorities take their anticounterfeiting duties seriously. This is shown nearly clearly by the frequent Thai FDA and police press conferences declaring successful raids and apprehension of suspects. The press conferences are reported almost weekly, with one of the most recent (March 18, 2022) involving THB 70 1000000 worth of allegedly infringing corrective products. 2nd, cooperation with the government is ever wise. The regime await to be provided with any helpful information that the brand owner tin give, including identification of the counterfeit products and further witness statements. Also helping authorities in their enforcement activities, cooperation is as well the all-time way to establish the brand owner'south not-involvement with the allegedly defective or counterfeit products. Finally, participating in enforcement, either through cooperation with regime or through private actions, is encouraged. Although online infringers are elusive, making instant success unlikely, continuous enforcement sends a strong message to the market, contributes to a good reputation amongst consumers, and raises infringers' risks and costs (e.g., the risk that the paid ads may be taken downward). With vigilance and persistent activity, the fight against counterfeiters of healthcare and life sciences products is a battle of attrition that will evidence benign in the long run.

March 25, 2022

Trade clothes, which refers to the visual appearance of a product and packaging, equally well equally the product's placement at its point-of-auction (store layout), was at the heart of an infringement case that recently obtained the highest damages honor e'er given for a trademark example in Thailand. Trade dress is an important branding consideration considering it tin can create a commercial impression and enable the public to recognize the original source of goods and services, singled-out from other traders. Trade apparel comes in many dissimilar forms, only only a few of them find solid protection in Thailand, and only through artistic apply of existing intellectual property protections. For case, a unique packaging design in the form of an unfolded paper box could be eligible for trademark registration. A distinctive production configuration or external blueprint of a container might be eligible for registration as a three-dimensional trademark, or even as a pattern patent if it features lines or colors giving a special appearance to a novel product that has an industrial application. In addition, a product's configuration could be subject to copyright protection every bit a "sculpture work" if it shows a figure with tangible volume. However, in Thailand, trade dress does not even so receive explicit recognition nether the state'south Trademark Police—unlike in some other jurisdictions whose trademark laws permit the registration of trade clothes. The protection and enforcement of trade dress in the course of "store layout" in item has been a abiding challenge in Thailand, given the lack of explicit laws and precedence. Consequently, brand owners may accept a hard time protecting their trade wearing apparel in relation to their creative and unique store layout designs, despite a swell deal of effort and financial investment. Just now this appears to be changing: In December 2021, Tilleke & Gibbins successfully secured a precedent judgment on the shop layout class of trade dress from the Key Intellectual Property and International Merchandise Court (IP&IT Court). Precedent Merchandise Dress Instance for Store Layout The popular Thai bubble-tea chain Fire Tiger is a successful business of Ruay Sabai Sabai Co., Ltd., a Thailand-based food and beverage company. Burn Tiger is a pioneer in the use of heart-communicable trade wearing apparel in the manufacture. For utilize in all Fire Tiger stores, Ruay Sabai Sabai designed a gilded-colored sculpture of a tiger's head featuring a wide-open up mouth as a product-serving channel as part of a store design that resembles a tiger muzzle. They also adult Fire Tiger's logos, unique menu designs, and other creative marketing ideas to support their bubble-tea business. These distinctive creations were deployed in Fire Tiger branches and quickly gained consumer recognition and media attention. Ruay Sabai Sabai operates over 15 Fire Tiger stores in Thailand and has expanded their franchise business in Southeast Asia, with further outlets soon to open up in Europe and North America. Fire Tiger'southward various marks have been registered in Thailand and overseas, and their tiger-head sculpture has also been recorded with the Copyright Office of the Section of Intellectual Property. In 2019, Ruay Sabai Sabai became aware of a competing chain of chimera-tea stores using a similar trade name and trademark containing the word "fire" plus the name of another beast. Moreover, the competitor's stores were using a similar gold-colored sculpture of an fauna head with an open up mouth in a golden muzzle for their product-serving aqueduct, and the menu designs and marketing ideas besides showed similarities to those of Burn down Tiger. The competitor expanded apace, amassing over 200 franchise licensees throughout Thailand within a short period. Ruay Sabai Sabai'south attempts to contact the competitor to resolve the dispute amicably all went ignored, so in view of the damage they sustained, Ruay Sabai Sabai filed a civil lawsuit against the competitor with the IP&IT Courtroom on November 30, 2020. The litigation process took just over a year, and on December 23, 2021, the IP&It Court announced its judgment, last that the competitor's employ of the word "fire" along with an animal name equally its store name and in naming its bubble-tea products (in Thai and English languages), beverage cups bearing an animal head in the same position equally on Fire Tiger's cups, and an animal-caput sculpture with an open mouth as a serving channel could cause the general public to understand that the competitor's bubble-tea stores originated from Fire Tiger, or that the competing bubble-tea products are derived from the same source. Since the competitor was the same type of business concern every bit Fire Tiger, the court believed that the actions noted above would deceive the public into believing that the competitor's appurtenances or business, including the franchise businesses, are associated with Fire Tiger. This constitutes infringement as passing off under the Trademark Human activity, and the court agreed that the infringement acquired harm to Ruay Sabai Sabai. The IP&IT Courtroom awarded damages of THB ten million (approximately USD 303,000) with interest to Ruay Sabai Sabai, together with monthly amercement of THB 100,000 (approximately USD 3,030) from the filing date of the complaint until the competitor ceases its passing-off actions. The amounts awarded by the IP&Information technology Courtroom in this case are the highest handed downwardly for a trademark case in Thailand. Protection of New Types of IP in Thailand The judgment in the Fire Tiger case confirms that merchandise clothes in the form of store layout can be protected in Thailand. Even in the absenteeism of explicit legislation in the Thai Trademark Human activity governing merchandise dress protections in Thailand, the IP&It Court recognizes the efforts and fiscal investment of IP owners and is open to interpreting the law in concurrence with international standards by making use of the existing laws offering protection to brand owners. It is hoped that this case will act as a precedent in many more cases, giving IP owners more comprehensive protection over their creative output and investment in their IP assets. This article kickoff appeared in Managing Intellectual Property.

March 25, 2022

For years, an inadequate compensation machinery has been a limitation in resolving IP infringement disputes in Vietnam through ceremonious measures. This limitation was once again highlighted in an appellate trial at the Superior People'due south Court of Ho Chi Minh City on February 21, 2022, in which the appellate court reviewed a judgment of the People'due south Court of Ho Chi Minh City dated April 28, 2021. Outline of the Case The facts of the case are quite elementary. A Ho Chi Minh City-based visitor that provides educational equipment was discovered by the Inspectorate of the Ministry of Culture, Sports and Tourism to be using, without authorization, a specialized figurer program from a company based in the Us. The inspection bureau issued a decision to administratively sanction the Vietnamese company. The sanction included a small fine of VND thirty million (approximately USD one,315) and the forced removal of the infringing computer program, which the infringer readily complied with. Thus, the administrative attribute of the case was completed. The visitor backside the software then filed a civil case against the infringer at the People'southward Courtroom of Ho Chi Minh City. Amidst the plaintiff's claims, the most important was the amount of bounty for amercement: over USD 500,000, equivalent to the value of the full-module computer programme that was found to be illegally installed and copied on the accused's computer. In fact, the plaintiff has sold software licenses for this total module version through resellers in Vietnam for the aforementioned amount. In addition to claiming compensation for damages, the plaintiff also demanded that the accused make a public amends and pay an additional VND 300 million (USD 13,150) to cover the plaintiff's legal fees. Court Judgments The outset-instance court adamant that the defendant had indeed infringed the IP rights of the plaintiff and required the defendant to make a public amends, just it rejected the plaintiff'south entire claim for damages on the ground that the plaintiff was unable to prove the damages it had suffered, such as loss of property, or subtract in income, profit, or business organisation opportunities (Commodity 204.i(a) of the Law on Intellectual Property). Disagreeing with the start-instance judgment, the plaintiff appealed the case to the Superior People'due south Court of Ho Chi Minh City. The appeal judgment upheld the commencement-example judgment on February 21, 2022. The contents of both the offset-instance and appeal judgments show that both levels of the courtroom have a very conservative way of understanding and applying the constabulary: They did not have the plaintiff'southward claim that the amercement could be calculated based on the loss of business organization opportunities, namely the possibility to sell that very computer programme to the accused for an amount equivalent to the price other customers in the same market had previously paid. Proving Damages In practise, it is incommunicable to mechanically crave plaintiffs to prove damages in the same manner for different IP rights. If viewed only in terms of annual income and profits, information technology is entirely possible that both the income and profits of the plaintiff volition not subtract just may even increase in the twelvemonth the violation occurs. In addition, information technology is extremely difficult, if non impossible, to prove a straight connection between an increase or decrease in the income and profits of the plaintiff, which is a Nasdaq-listed business concern with billions of dollars in sales, and a unmarried software infringement example in Vietnam. It is impossible to testify amercement through profits gained by the defendant from the use of unauthorized computer program when the plaintiff has no admission to the defendant's financial figures and governance documents. Information technology is likewise incommunicable to dissect in detail how much revenue or profit the use of a particular computer program has generated for the defendant amid dozens of factors that tin can affect these indicators. The simplest and fairest approach, so, is to calculate the damages based on the value of the computer program itself, when it has been sold to similar customers. Every bit a parallel, when a thief steals a luxury car instead of purchasing information technology from the dealer, the damage can be considered to exist the toll that consumers accept paid for the car in the locality where the theft occurred. In fact, this approach is already prescribed past the current IP Constabulary of Vietnam. Under Article 205.i(a) and (b), when a plaintiff tin bear witness that an act of IP infringement has caused fabric impairment, information technology has the right to request the court to make up one's mind the level of compensation based on i of the following grounds: The total material damage calculated as a monetary amount, plus the profits gained by the defendant as a result of the IP infringement if reduced profits of the plaintiff have not still been included in the total material damage; or The licensing price for the IP object, on the assumption that the plaintiff had transferred the IP usage correct to the accused nether a license agreement with a scope corresponding to the act of infringement committed. If the plaintiff has the right to cull the basis for bounty, then the court is obligated to consider this basis. In this instance, the court made fundamental mistakes in its estimation and awarding of the law, leading to a case with adequately unproblematic details being tried in a incorrect and completely dissimilar direction than reality would dictate. The plaintiff in this case is now requesting the Supreme Court to review the case according to cassation procedures, which aim to correct errors in the estimation and awarding of the law in the effective judgments of lower courts. It is hoped that the correct perception of the grounds for compensation for amercement in intellectual property cases will be properly considered by the Supreme Court. This article first appeared in Managing Intellectual Property.