Patent Protection In South-East Asia
Legal News & Analysis - Asia Pacific - ASEAN - Intellectual Property
11 September, 2016
With today’s blog post we continue our Back to the Basics theme and take a look at patent protection in South-East Asia. This blog post will explain the patent application process and discuss alternative and oftentimes faster routes for obtaining patents in South-East Asia via using the Patent Cooperation Treaty or benefiting from ASEAN Patent Examination Cooperation.
A patent is an exclusive right granted for the protection of new inventions, which are products or processes offering new technical solutions or providing new ways of doing something. The product or process in question must be applicable in industry to be eligible for protection. Patent protection lasts for a limited period of time, usually 20 years. A patent is a territorial right and has its effects only within the national boundaries of the country for which it is granted. It means that patents registered in Europe have no legal effect in any South-East Asian country.
A patent provides protection for the invention to the owner of the patent, meaning that the invention cannot be commercially made, used, distributed or sold without the patent owner’s consent. Patent rights are enforceable in courts and obtaining patent protection is therefore a crucial aspect of business in the modern global economy. It is vital that SMEs apply for patent protection in the South-East Asian countries of interest to their business, especially if the launch of their respective produc on the South-East Asian market is on the horizon.
Types of Patents in South-East Asia
In Cambodia, Indonesia, Laos, Malaysia, the Philippines, Thailand and Vietnam, inventions can also be protected by “simple patents” besides using standard patents. The name for simple patents, however may differ – Petty Patents (Laos), Utility Models (the Philippines and Cambodia), Utility Innovations (Malaysia) or Utility Solution Patents (Vietnam). Simple patents typically cover products and tools, and rarely cover technologies. In some cases there are no requirements for an inventive step (Indonesia, the Philippines, Thailand and Vietnam) and in others the degree of innovation required is lesser (Malaysia and Laos). The process for obtaining a simple patent is generally shorter than in case of standard patents. There is however a reduced term of protection (10 or 7 years from the filing date).
In order for an invention to be patentable, the invention must meet all three of the following requirements:
It must be novel, meaning that it must not have been previously made available to the public.
The advancement or development from the ‘prior art’ (existing technology) must not be obvious to the average person in the relevant industry
It must be industrially applicable.
SMEs should bear in mind that it is important to use confidentiality and non-disclosure agreements when they have to disclose their invention to possible investors before it has been granted a patent. It is essential, because if the investing partner discloses information about the invention before the patent is granted, the invention can lose novelty and would not be eligible for patent protection. A further reason to have a non-disclosure agreement is because some South-East Asian countries have legal rules whereby typically novelty destroying disclosures made in breach of confidence can be disregarded within a limited period of time from the disclosure. Therefore, in the situation where someone breaches the nondisclosure agreement and discloses SME’s invention, in limited scenarios the SME may still have novelty in the invention and still be able to protect it with a patent.
Patent Application Process
The costs of obtaining a patent in different South-East Asian countries can vary quite significantly – from EUR 650 to EUR 7,000. Patent applications can be filed in English in most of the South-East Asian countries, but the SMEs should keep in mind that Indonesia, Thailand and Vietnam require the applications to be filed in their respective languages.
When applying for a patent with the local Intellectual Property Office or relevant authority in South-East Asia, additional documents can be requested. For example, a separate declaration of ownership is required in Indonesia, Cambodia, Thailand and Vietnam. It is also good to keep in mind that most South-East Asian countries require the SMEs to be represented by a local agent if the SMEs are not residents of these countries or do not have real business there. Only Singapore and Brunei don’t require the SMEs to be represented by local agents.
In South-East Asia countries, the patent application process often involves communication with the patent examiners and the provision of information of corresponding patents granted in other countries with more sophisticated IP systems. Some Patent Offices may grant patents by relying on the grant of the same patent from countries with more developed IP systems or examination results of the corresponding patent application from more established Patent Offices such as those in the United States, Japan, South Korea and the European Patent Office. Without such foreign grants patent application process could be delayed for five to seven years in some countries like Cambodia and Indonesia.
SMEs, who wish to file for patent protection in several South-East Asian countries should keep in mind that they can benefit from the priority date under the Paris Convention for the Protection of Industrial property. The date of the first filing of a patent application in a country which is a signatory of the Paris Convention will be considered the priority date. Priority date is important as it protects the novelty of the invention. Under the Paris Convention, overseas applications have to be filed within 12 months of the priority date. This means that if another person comes up with the same idea and discloses it after the priority date, the novelty of the first applicant’s invention is still safe. In South-East Asia only Myanmar is not a contracting state to the Paris Convention.
Accelerating the Patent Application Process
Patent Cooperation Treaty (PCT)
The SMEs, wishing to apply for patent protection in several South-East Asian countries, can benefit from using the Patent Cooperation Treaty, to which most South-East Asian countries are signatories, except for Cambodia and Myanmar. The PCT makes it possible to seek patent protection for an invention simultaneously in several countries by filing a single international patent application instead of filing several separate national applications. The PCT route also allows for a longer ‘wait and see’ period before the applicants decide on the countries in which they require patents.
ASEAN Patent Examination Cooperation (ASPEC)
ASPEC is a regional patent work sharing program involving IP Offices in all South-East Asia countries, except
Myanmar. The objectives of ASPEC are to reduce complexity, achieve time savings and improve the quality of search and examination. Reference made to an earlier examination already performed in one IP office will help an examiner in the other IP office to better understand the invention claim, reduce searches and develop a more comprehensive examination strategy. ASPEC is free-of-charge and operates in English.
Patent Specification Documentation
A patent specification document, prepared by patent attorneys describes and defines the invention and contains a description and a claims section. The most important part of the specification is the claims section, which defines the limit of the patent holder’s monopoly and differentiates the invention from the prior art. The patent specification will usually have to be in the respective country’s national language. However, Brunei, Malaysia, the Philippines and Singapore accept specifications in English.
It is often not possible to have the specification corrected once a patent has been granted even to correct a translation error. It is therefore crucial to get the translation right, especially for the claims section. It is not uncommon that patent owners later discover that their invention, as defined by the local translation, deviates from the original patent application as a result of poor translation. Poor translation can render the patent vulnerable to invalidation and make it harder to inforce.
Patent enforcement in South-East Asia
SMEs should keep in mind to mark their invention with the assigned patent number in order to notify the public that these products are protected by the patent. If someone chooses to infringe a patent despite being aware of its existence, they will be liable for damages. An infringer who does not have any knowledge of the existence of a patent or reasonable ground for believing it exists will not be liable for damages. This is the reason why warning notices of patents are also published in newspapers.
The patent owner can sue sellers, distributors and manufacturers of goods covered by the patent through civil litigation. Successful civil litigations result in court injunctions to restrain the defendant from infringing the patent and in damages to be payed to the patent owner amounting to the profits made by the infringer. If the patent holder is able to show that there is some basis on which the patent has been infringed upon, and that damages will not be a sufficient remedy before trial, the court may grant an urgent injunction even before giving its final decision. This is an effective means for dealing with infringers.
In Indonesia, Cambodia, Laos, Malaysia, the Philippines, Thailand and Vietnam, patent infringement can also give rise to criminal liability. In these countries, patent owners may use a police raid procedures to bring an immediate stop to the infringement. All the above-mentioned countries also allow the patent owners to file parallel civil proceedings in order to sue the infringers for damages. A criminal action may be effective because of the effect it may have on the infringer owing to the threat of incarceration. However, it should be noted that the prosecution itself might be handled by a public prosecutor rather than an attorney of your choosing. In such cases, there is a risk that the prosecutor may not be able to understand patent litigation or your technology enough to give an effective/ accurate ruling on the case.
Helika Jurgenson, China IPR SME-Helpdesk