To view this article in Vietnamese, please click here. In accordance with Article 59.2 of the Law on Intellectual Property issued in 2005, as amended and supplemented in 2009 and 2019 (“IP Law”), Vietnamese law currently does not recognize the protection of computer programs as inventions. However, in practice, if the subject-matter of an invention related to a computer program has technical characteristics and the program, when running on a computer, creates a further technical effect going beyond the usual physical interactions between a program and a computer, this subject-matter is likely to be protected as an invention. This condition is not codified, but is reflected in Article 5.8.2.5 of the patent examination guidelines issued in 2010, as amended and supplemented in 2020 – a reference document showing the guidance issued by the Intellectual Property Office of Vietnam (“IP Office”). Currently, at the formality examination stage, these “technical” conditions for inventions related to computer programs are quite easy to meet as it is only necessary to show that the subject-matter is a “Method performed by a computer for a purpose …”, “Processing apparatus…”, or “Computer-readable storage medium storing a program to perform the method…”. In the substantive examination stage, however, the “technical” condition is further scrutinized through the assessment of technical features stated in the subject-matter to determine whether the interaction between the program and the computer creates a further technical effect. The IP Office often issues office actions on substantive examination results because the computer-related patent application does not solve any technical problem and does not produce a further technical effect going beyond the normal interactions between the program and the computer. On December 31, 2021, the IP Office added to the patent examination guidelines mentioned above by issuing an annex with specific guidelines for examining patent applications relating to computer programs. The annex provides detailed guidance on assessing “technicality” in both the formality and substantive examination stages, gives some examples of further technical effects, and outlines several types of subject-matters related to computer programs. Below are some interesting examples of further technical effects that a program can produce when running on a computer. Example 1: In addition to a subject-matter related to a computer program being executed by a computer, a corresponding computer program that executes features of the subject-matter will produce a further technical effect when running on the computer. For example, a computer program to implement the method of controlling an anti-lock braking system (ABS) on a car, or determine emissions by X-ray equipment. Example 2: If a computer program is designed on the basis of specific technical considerations about the internal operations of the computer on which the program is run, such as the program being adapted to a particular computer architecture, it can be seen as producing a further technical effect. For example, the computer program controlling an execution of a function or an internal operation of the computer, such as balancing a processor’s load or allocating memory, often produces a further technical effect. Example 3: Programs for low-level code processing, such as generators or compilers, are likely technical. However, a computer program for a non-technical purpose that requires less computation time than a known program for the same purpose will not produce a further technical effect. A subject-matter related to a computer program cannot be considered technical only because the computer program is designed so that it can be performed automatically by the computer. Specific Guidelines for Subject-Matter Types The last section of the annex provides an analysis of 10 types of subject-matters related to computer programs, explaining whether and when they can be protected. These types include those in which computer programs implement features related to: (i) mathematical methods; (ii) artificial intelligence and machine learning; (iii) simulation, design, or modeling; (iv) diagrams, rules, and methods of playing games; (v) business methods; (vi) information modeling, programming operations, and programming languages; (vii) data retrieval, formats, and structures; (viii) database management and information retrieval systems; (ix) information display; and (x) user interfaces. The guidelines for three of these are summarized below: Artificial Intelligence and Machine Learning Artificial intelligence and machine learning rely on computational models and algorithms with an inherently abstract mathematical nature. However, there are still cases in which subject-matters related to artificial intelligence and machine learning can be protected as inventions in Vietnam, for example. “1. Computer-readable storage medium comprising a computer program that powers the computer to output quantitative values of the reputation of a hotel based on textual data about the reputation of the hotel, in which: this program consists of the first neural network and the second neural network connected in such a way that the second neural network receives the output from the first neural network mentioned above; The first neural network mentioned above includes… weights of the second neural network above…; and program causes the computer to do…” In this subject-matter, the purpose of “output[ting] quantitative values of the reputation of a hotel” can be considered to be non-technical, for business purposes. However, the features in the claims identify a particular technical embodiment that goes beyond aspects of a mere business method. Therefore, from the aspect of pre-processing training data for machine learning, these features are considered to serve a technical purpose, and contribute to the technical characteristic of the present invention. Therefore, the above subject-matter can be protected as an invention. Information Modeling, Programming Operations, and Programming Languages Information modeling is a mental activity being considered non-technically. However, if an information model is intended to be used in the context of an invention to solve a particular technical problem, it may contribute to a technical characteristic of the invention. Features that determine how the model is actually stored (using relational database technology, for example) can also contribute technically. In a visual programming environment, providing specific graphical building blocks is a part of the programming language and makes no technical contribution if the only effect is to reduce the mental effort of the programmer. Providing specific programming

Intellectual property experts from Tilleke & Gibbins were engaged by ARISE+ IPR, a regional support program funded by the European Union and implemented by the European Intellectual Property Office, to craft a series of IP enforcement guides for Southeast Asian countries, aimed at raising local awareness of the importance of IP protection. The five-year, EUR 5.5 million ARISE+ IPR program supports regional integration through IP cooperation and aims to upgrade national IP systems for creation, protection, utilization, administration, and enforcement to be in line with international best practices and standards and the strategic objectives of the ASEAN Intellectual Property Rights Action Plan 2016-2025. The guides were developed by Tilleke & Gibbins’ lawyers in cooperation with the IP offices of each participating country, and cover issues related to trademarks, industrial designs, and geographical indications. Each guide was produced in a compact leaflet form in English as well as the local language, and is considered an official publication of the respective national IP office. The guides can be accessed from the ARISE+ IPR site (under “Leaflets, brochures and booklets”), or by clicking on the links below: Cambodia: English | Khmer Indonesia: English | Bahasa Indonesia Thailand: English | Thai Vietnam: English | Vietnamese

The era of Industry 4.0 has led to a dramatic increase in corresponding computer program invention patent filings in Vietnam. However, the current patent examination guidelines for inventions related to computer programs are quite brief and vague, which inevitably causes difficulties for patent examination. Therefore, in 2021, the Intellectual Property Office of Vietnam (IP Office) considered the necessity of amending the patent examination guidelines for inventions related to computer programs. Currently, a computer program is excluded from patentability under Article 59.2 of the Law on Intellectual Property (IP Law). However, according to Article 5.8.2.5 of the patent examination guidelines issued on March 31, 2010, as amended on December 31, 2020 (hereinafter referred to as the 2010 Guidelines), an invention related to a computer program is eligible to mature into a granted patent if the claimed subject matter has technical features and/or produces a further technical effect going beyond the normal interactions between the software and the hardware. From June 24 to December 31, 2021, the IP Office established a working group including members from the patent examination center, the legal and policy department, and experts from the Japan International Cooperation Agency (JICA) to detail the provisions under Article 5.8.2.5 in order to tackle the problem of “In what circumstances are applications related to computer programs patentable?” In December 2021, the preliminary guidelines for this problem were drafted in the form of an annex to the 2010 Guidelines. The group also consulted many local IP agents, state agencies, organizations, and individuals to improve the draft. On December 18, 2021, the IP Office organized an online meeting with IP agents and organizations to discuss the draft. Basically, the draft does not make any significant changes in comparison with Article 5.8.2.5 of the 2010 Guidelines, but it adds more details. The draft visualizes the process of computer program patent applications as follows: Formality Examination Stage: Step 1. Does the subject matter contain technical features (hardware, data processing representing physical entities)? If not, it will be rejected (Article 59.2 of the IP Law). Step 2. Is the subject matter named with a term like “computer program”, “computer program product”, or “signal-carrying program”? If so, it will be rejected (Article 5.8.2.5 of the 2010 Guidelines). Substantive Examination Stage: Step 3. Does the subject matter contain technical features producing a further technical effect? If not, it will be rejected (Article 5.8.2.5 of the 2010 Guidelines). Similar to Article 5.8.2.5 of the 2010 Guidelines, any claims presented as “computer program”, “computer software”, “computer program/software product”, or “signal-carrying program” should be eliminated by the examiners. However, the draft also prescribes that, in the formality examination stage, there are three types of claims that could be accepted: a method performed by a computer for a purpose; a processing apparatus adapted to perform the method; or a computer-readable storage medium containing a computer program to perform the method. In current practice, the troubles often arise during examination of inventions combining a computer program with a business method or a calculation method, making it necessary to consider comprehensively if the invention has any technical features, or if it produces a further technical effect going beyond the normal physical interactions between the software and the hardware. In the December 2021 draft of the annex, the IP Office’s approach in the formality examination stage has been sufficiently clarified, but the approach in the substantive examination stage still needs more explanation, especially more interpretation of examples of “further technical effect.” If the approach in the substantive examination stage is solved, the examination process will be accelerated. It is expected that the amended guidelines will be released in the near future.

As Vietnam continues to fight the latest wave of the Covid-19 pandemic with strict social distancing measures, the Intellectual Property Office of Vietnam (IP Office) has issued Notice No. 7581/TB-SHTT dated August 2, 2021 (Notice 7581), extending certain deadlines for IP applicants. The contents of Notice 7581 are similar to those found in Notice 5277 issued in March 2020 during the first wave of the pandemic. Specifically, Notice 7581 reads as follows: All procedures related to procedures to establish industrial property rights (priority claims, supplementation of documents, responses to the IP Office’s decisions/notifications, renewal and extension of the validity of protection titles, payment of fees and charges, and filing of appeal petitions) falling due during the period from June 30, 2021, to the end of August 31, 2021, will automatically be extended to the end of September 30, 2021. For other cases, if an applicant is still affected by the Covid-19 epidemic with regard to the implementation of its rights and obligations in the procedures for establishing rights to industrial property objects at the IP Office, such applicant may request [the IP Office] to apply the clauses on objective obstacles and force majeure as set out in Points 9.4 and 9.5 of Circular No. 01/2007/TT-BKHCN, as amended and supplemented by Circular No. 16/2016/TT-BKHCN. Observations on the Content of Notice 7581 As with last year’s Notice 5277, it is worth noting that the wording of Notice 7581 covers only the procedures to “establish industrial property rights,” rather than all aspects of industrial property rights. Further, it could be understood that it provides a closed list of industrial property procedures that can enjoy this grace period, and that the deadline extensions would apply only to the specific items listed. Thus, it is uncertain if the deadline extension to September 30, 2021, will also be automatically applied to the following procedures: Filing requests for invalidation Filing requests for renewal of license agreements Filing patent applications Filing requests for substantive examination of patent applications Filing industrial design applications Filing responses to office actions in post-grant procedures If the deadline extension is not automatically applied to the foregoing procedures, rights holders will need to submit evidence to prove force majeure and objective obstacles to support their late action (if any). In addition, if rights holders proactively request a deadline extension, it is unclear whether the new deadline will be counted from the actual deadline, or from September 30, 2021. Recommendations Due to the uncertainties involved in the procedures listed above, and the fact that all applications and requests can still be submitted by post and through the online filing system, to be on the safe side, it is recommended that rights holders take the necessary actions which are excluded from the closed list mentioned above (such as filing a request for trademark invalidation) by the actual deadlines, if possible. Any necessary supplemental documents to support such actions will still enjoy the above grace period and can be submitted by September 30, 2021.