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"Evergreening" in the context of intellectual property (IP), especially in the field of patents, refers to a strategy that companies often use to prolong their commercial exclusivity. This strategy is particularly common in the pharmaceutical industry, where companies secure patents for minor modifications, improvements, or new applications of existing products. Often, these patents are based not on entirely new technical solutions but rather on minor changes to previously protected products or processes. The purpose of these modifications is to extend patent exclusivity without the necessity to create a completely new product.
“Evergreening” has become a heated, controversial topic. Supporters, often from within the pharmaceutical industry, argue that it encourages innovation and allows companies to recoup their research and development costs. However, opponents, including consumer groups and healthcare advocates, contend that it stifles competition, elevates drug prices, and restricts access to affordable treatments.
What are the advantages and disadvantages of “evergreening”? Which fields can apply “evergreening” strategies? This discussion will also cover the benefits and challenges of “evergreening” in the pharmaceutical field. Furthermore, we will explore how Vietnamese law regulates this issue. KENFOX IP & Law Office will provide analysis and interpretation to help IP rights holders and related parties understand and shape their IP protection strategy in Vietnam in an appropriate and legal manner.
Evergreening is a widely debated topic in the pharmaceutical industry and other technology sectors, eliciting conflicting opinions from various interest groups, namely:
"Evergreening” is a strategy that can be applied in many different sectors, although it is most commonly associated with the pharmaceutical industry. Below are some areas where evergreening is utilized:
[i] Pharmaceutical industry: This is the most common area for “evergreening”, where companies extend patent rights to drugs through improved formulations, new methods of use, or combinations of active ingredients.
[ii] Technology and software: In the technology sector, companies can use evergreening by regularly updating or upgrading software and technology. These improvements not only enhance the product but also help extend the life cycle of relevant patents.
[iii] Medical devices: Similarly to the pharmaceutical industry, evergreening in the medical device sector may involve inventing improvements to existing devices, such as enhanced designs, materials, or software.
[iv] Consumer electronics industry: Companies that manufacture consumer electronics products, such as smartphones and computers, can use “evergreening” to extend product life cycles through hardware updates and software updates.
[v] Chemical products and materials: In the chemical industry, “evergreening” may involve inventing new formulations, developing innovative production methods, or discovering new applications for existing chemicals or materials.
[vi] Food and agriculture: In the agricultural sector, “evergreening” may involve developing new plant varieties, improving farming methods, or advancing food preservation technologies.
In the above fields, evergreening is used as a method to increase commercial value and prolong product or technology exclusivity. However, it also faces significant criticism for creating barriers that restrict competition and innovation.
A company may patent a new drug and then, just as the original patent is about to expire, receive a patent for an improved version of that drug, such as a new production method, a new dosage form, or a different dosage. Although these improvements might be minor, they can extend the company’s monopoly in the market. Below are some evergreening tactics used to extend the exclusivity period of inventions in the pharmaceutical field
Vietnam's IP law has not established any regulations that prohibit owners from developing and improving existing technical solutions and registering them for intellectual property protection, as long as the improvements meet the statutory standards for patent protection. In other words, the “evergreening” tactic is still legal in Vietnam. If an effective and well-directed “evergreening” strategy is implemented, patent owners can achieve extended protection for their technical solutions and prolong the exclusivity period beyond what is offered by the original patent alone.
However, it's important to note that with the evergreening strategy, changes or improvements, no matter how minor, must still meet the basic patentability requirements: they must be novel, non-obvious, and not merely common knowledge. Preferably, they should represent a significant technical and economic advancement to warrant a new patent. Otherwise, new applications may be refused due to lack of novelty and inventiveness, as previously disclosed by the original patent, leading to a waste of time and resources. Furthermore, related parties can utilize the “opposition” or “invalidation” mechanisms to challenge or invalidate a patent, even after it has been registered in Vietnam
Therefore, patent holders should carefully weigh the benefits and risks before deciding to adopt an evergreening strategy.
It seems that the struggle to redefine the boundary between “innovation” and “fair competition” will become increasingly fierce in industries that rely on patents. Experts predict that relevant parties will increasingly resort to legal tactics such as filing for “opposition” or “invalidation of patents” to protect their interests. This not only sparks lengthy legal battles but also consumes significant time and resources, plunging companies and inventors into a vicious cycle of disputes and litigation. Whether there is a way to balance innovation with fair competition remains an unanswered question.
For effective protection of your invention in Vietnam, please contact KENFOX IP & Law Office. Our team, with extensive practical experience and expertise in intellectual property law, is committed to providing accurate advice and dedicated service, ensuring your invention is fully protected against legal challenges in Vietnam.
By Nguyen Vu QUAN
Partner & IP Attorney
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