Southeast Asia’s IP Offices Respond to the COVID-19 Pandemic.

Legal News & Analysis - Asia Pacific - Intellectual Property

15 June 2020
 

The intellectual property offices of Southeast Asia have implemented measures ranging from deadline extensions to expanded online services to cope with office closures and other issues brought about by the COVID-19 pandemic. Below, we summarize the responses in our jurisdictions. This information reflects the current status as of June 1, 2020, and is subject to change.
 

Cambodia
 

The Department of Intellectual Property Rights (DIPR) and the Department of Industrial Property have yet to announce any official measures to extend or waive deadlines falling within the pandemic period.
 

The Cambodian DIPR is operating as normal. Trademark agents are encouraged to use the online filing system, which is available for:
 

  • Filing new trademark applications;

  • Payment of registration fees;

  • Filing affidavits of use or non-use;

  • Filing trademark renewals;

  • Filing recordals of change of agent; and

  • Filing responses to preliminary rejections.

 

For post-registration actions, as a general practice, it is possible to file an application or request with copies of the required documents. The originals of the required documents can be submitted within two months of the filing date. If a copy of any required document is not available, it is also possible to file an application or request with a cover letter that states what documents will be provided later and the reason the documents are not now available. However, for an office action concerning a Madrid application, a request for an extension of time must be filed if a copy of a required document is not available.
 

In addition, the DIPR revised the document requirements for filing affidavits of use or non-use due to the COVID-19 pandemic. While an official announcement has not yet been made, the new affidavit-filing requirements are already in practice. The required documents are as follows:
 

  • Notarized power of attorney;

  • Copy of the latest trademark certificate; and

  • Evidence of use (if filing affidavit of use).   

 

The Department of Industrial Property is still operating normally. All agents are required to file new applications and submit additional documents according to standard in-person procedures, as the department does not have an online filing system.
 

Indonesia
 

Although physical distancing restrictions are in force, IP owners are still able to exercise their rights by registering them through the online system of the Directorate General of Intellectual Property (DGIP). In addition, although courts have postponed some cases, online trials are available and ongoing, subject to the discretion of the presiding judge in each case.   
 

The DGIP issued its latest notification on the limitation of physical contact due to the COVID-19 outbreak on May 13, 2020, extending the closure of physical counters until May 29. During this period, all DGIP officers are working from home and accessing the system remotely, optimizing the online channels for IP matters. These conditions will remain in effect until at least May 29, 2020 (under Circular Letter No. HKI-OT.02.02-19, which may be subject to extension).
 

The online system remains available for new trademark application filings, responses to office actions, recordals, appeals, and oppositions and rebuttals. For all online filings, the original deadlines remain unchanged. Meanwhile, the Trademark Appeal Commission has declared that any appeal deadline falling within the closure period will be extended until the situation is back to normal.   
 

The online system also remains available for:
 

  • New patent applications.

  • Responses to office actions issued for patent applications filed prior to August 19, 2019 (which must be submitted through the online filing system and no special extension is available). Any failure to submit formality documents must be communicated to the DGIP.

  • Official fees for patent annuities (an official receipt will not be provided until the DGIP counter reopens).

 

For patent applications filed before August 19, 2019, excess claims cannot be paid through online filing. Therefore, excess claims can be paid when the DGIP counter reopens.
 

The online filing of copyrights and industrial designs can be conducted normally during this period.
 

Offices of the National Agency of Drug and Food Control (NADFC) remain closed for walk-in filing and consultation until further notice. The last day that their counters were open for service was March 12, 2020, and they are now officially closed for on-site services until further notice. During this period, the NADFC officials remain available for inquiry via email, messaging applications, or phone call, though wait times may vary.
 

Judges have discretion on whether to hold or postpone cases based on their assessment of the level of urgency. Therefore, disputing parties in IP cases need to check with the Commercial Court to determine whether the examination of the case is suspended or not.
 

Laos
 

On March 29, 2020, the prime minister issued Order No.06/PM, which imposed strict lockdown measures. minister’s order, the Lao Department of Intellectual Property (Lao DIP) would not be open to the public until April 20, 2020. On April 15, this closure was extended until May 4, in response to an announcement made by the prime minister’s office to extend the lockdown period. During these times, the Lao DIP did not accept any requests, and all deadlines falling within this period were automatically postponed to May 4.   
 

Since May 4, the operation of the Lao DIP has returned to normal. Laos is still transitioning out of the lockdown, so if more cases of the virus are found, it is possible that the stricter measures could return.   
 

The Lao DIP remains tolerant toward late submission of original documents—especially for those sent from abroad (submission of hard copies is still the norm in Laos.) For registration, original documents can be filed within 60 days of the filing date of the copies, and applicants can make an official request to formally extend the deadline to file the original documents for up to an additional 60 days.
 

Myanmar   
 

On March 25, 2020, the President’s Office issued a letter containing measures to mitigate the potential impact of COVID-19 on government offices. The letter ordered government offices and departments to reduce their staff by 50% on a rotating basis, report any suspected cases of COVID-19 in their offices or residences to the Ministry of Health and Sport, reduce visitors from other regions, and not leave the area of their posting except in the course of their duties or with official permission.   
 

With this letter, the President’s Office signaled its intention for government functions to continue during the COVID-19 outbreak and sent a clear message that, despite the small number of reported cases to date, Myanmar is taking significant precautionary measures.    
 

While the impact of the current crisis has affected IP operations to some degree, the government is continuing to move toward implementation of the groundbreaking suite of intellectual property laws passed in 2019, announcing the formation of the Central Committee for Intellectual Property Rights (CCIPR) via Notification No.18/2020 dated March 6, 2020. The committee is expected to push forward with implementation of the new laws shortly.
 

Thailand
 

The Thai Department of Intellectual Property (Thai DIP) took action to deal with the potential impact of COVID-19 on March 24, 2020, when it issued a notification to address the need for extension of some deadlines due to the growing outbreak.
 

The Thai DIP notification stated that persons affected by the outbreak of COVID-19 who are unable to submit applications or perform other relevant IP-related tasks within the time period prescribed by law may request an extension of the deadline.
 

The notification also outlines the justifications that may be used to support the request for extension, including conditions such as diagnosis of illness, exposure, or having been in affected areas. The extension also needs to be supported by the following relevant documentation:
 

  • Copy of applicant’s passport;

  • Copy of doctor’s certificate or document showing medical diagnosis;

  • Any other evidence showing domicile or residence in an affected area;

  • Evidence showing that the applicant is an infected patient, person close to an infected patient, or has been in a country with an ongoing outbreak of the disease;

  • Any other evidence showing that the applicant was affected by the situation of COVID-19; and

  • Any other evidence showing the date that the circumstances have come to an end.
     

While the situation regarding the virus has certainly been improving, and various tentative reopenings and relaxations of restrictions have begun, the country nonetheless remains under a state of emergency and is expected to act quickly if conditions change.
 

Vietnam
 

The Intellectual Property Office of Vietnam (formerly the NOIP), like most government agencies and enterprises in the country, was closed for nearly a month while Vietnam implemented strict measures to slow the spread of the COVID-19 pandemic.
 

To address issues related to the closure, the IP Office issued Notice No. 5277/TB-SHTT on March 31, 2020, with the following main provisions:
 

  • Deadline extensions: All IP-related deadlines (specifically those for “establishment of industrial property rights”) falling between March 30 and April 30 would automatically be extended until May 30.

  • Patent Prosecution Highway (PPH) between Japan and Vietnam: The IP Office would start receiving PPH requests on May 4, instead of April 1, as planned before.

  • Receipt of documents and fees: Starting on April 1, 2020, the IP Office would only accept IP documents from applicants by post or through the online filing system; the payment of fees could be made by post or by bank transfer.
     

As of April 24, 2020, the IP Office had reopened and was operating normally.
 

 

For further information, please contact:

 

Dino Santaniello, Tilleke & Gibbins

dino.s@tilleke.com