In the intellectual property registration process, receiving an office action or a refusal notice from examiners due to subjective evaluations or oversight in prior art citations is not uncommon. However, for a tier-one Intellectual Property Agent, such challenges serve as a proving ground for expertise and resilience.
SBLAW is proud to share a landmark success story in which our IP team successfully protected the legal rights of Daio Paper Corporation (Japan), overturning a refusal from the Intellectual Property Office of Vietnam (IPVN) to secure the patent grant for their renowned GOO.N diaper packaging designs.
1. Case Background: The Unexpected Refusal from the IPVN
The dispute arose after SBLAW, acting as the legal representative for Daio Paper Corporation, initiated the design filing:
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Filing Date: On December 9, 2011, SBLAW filed two (02) industrial design applications for GOO.N diaper packaging layouts.
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The Refusal Notice: On September 10, 2012, the IPVN issued a substantive examination result rejecting both applications.
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The Examiner’s Ground: The IPVN claimed that the designs lacked “novelty” because they had allegedly been publicly disclosed prior to the priority filing date on a Vietnamese community forum (the website lamchame.com).
Under IP regulations, if an industrial design is publicly disclosed anywhere in the world before its filing date, it loses its novelty status and becomes ineligible for exclusive protection.
2. Sharp Counter-Arguments and Digital Evidence by SBLAW Attorneys
Refusing to settle for an inaccurate assessment, SBLAW’s IP trial attorneys immediately scrutinized the citation file and performed a deep technical audit of the targeted lamchame.com webpage.
Leveraging advanced tech-legal expertise, SBLAW uncovered a fatal flaw in the IPVN’s cited evidence and filed a formal appeal based on two critical arguments:
Demystifying the Website’s Dynamic Content Mechanism
Although the forum thread was originally created on July 23, 2011 (prior to the filing date), it was a commercial sales thread that was continuously updated. The platform metadata verified that the final content modification was made on October 29, 2012—long after the patent application had been submitted.
Gathering Verifiable Digital Evidence
SBLAW successfully extracted digital timestamps proving that the specific images of the GOO.N packaging inside that thread were only generated and uploaded to the internet in May 2012 (nearly 6 months after Daio Paper’s official filing date). Therefore, these images could not legally constitute prior art.
3. The Outcome: IPVN Reverses Decision and Intends to Grant Patents
Confronted with the irrefutable digital evidence and strict legal deductions submitted by SBLAW on December 28, 2012, the Intellectual Property Office of Vietnam completely conceded.
Shortly thereafter, the IPVN officially rescinded its refusal and issued a Notice of Intention to Grant Patents for Daio Paper Corporation’s GOO.N industrial design applications.
This triumphant outcome not only safeguarded massive commercial interests and market share for the GOO.N brand in Vietnam but also validated the elite dispute resolution capabilities of SBLAW.
If your enterprise faces application rejections, office actions, or complex IP disputes in Vietnam, contact SBLAW today for elite representation to flip the script.
