Following the signing of a Memorandum of Understanding earlier this year between the Intellectual Property Office of Singapore (IPOS) and Cambodia’s Ministry of Industry and Handicrafts (MIH), which amongst other things would allow for registration of existing granted Singapore patents in Cambodia, IPOS has now issued guidelines for owners to re-register their Singapore patents in Cambodia. This procedure is available to all Singapore patents which are in force at time of making the re-registration application.

In addition to official fees for the re-registration and other documents, certified copies of the Certificate of Grant and granted specification of the Singapore patent need to accompany the re-registration application. The Cambodia application will be accorded the same filing date as the Singapore patent, and renewal fees will be due starting from the next renewal period (ie back renewals need not be paid).

While this is a welcome announcement by IPOS, it seems that interested owners of Singapore patents may need to wait for a while before they can re-register their patent rights in Cambodia. When contacted after issuance of the IPOS guidelines, the Deputy Director General of Department of Industrial Property at MIH said that they are still in the midst of finalising the procedures for re-registering of Singapore patents and they are not ready to accept re-registration applications. We have conveyed this to IPOS, and the Assistant Director responsible for this initiative is checking with his MIH counterpart to resolve this inconsistency.

The delay by MIH is quite expected since we understand there are still a number of issues which need to be addressed. For example, the IPOS guidelines are silent on whether a Khmer translation of the granted specification of the Singapore patent is needed. We have obtained preliminary clarification that MIH has discretion to request such a translation and they are looking into whether this should be a standard practice. If the formalities for a Paris Convention patent filing in Cambodia are anything to go by, MIH might request the applicant to pay a translation fee for the translation to be prepared by a MIH officer.

The guidelines do not provide a timeline by which a granted Singapore patent may be re-registered in Cambodia, which seems to suggest that a Singapore patent owner could wait until as late as possible or when a need arises (eg when he wants to enforce his patent rights) before applying for the re-registration. However, we understand that IPOS and MIH are aware that this is not in the interest of the public and MIH are looking at “prior-user” provisions to address this issue. It is not clear at this stage what the restrictions might be, but we suspect that it could be based on the application date of the re-registration. As a result, Singapore patent owners with interest to extend their rights to Cambodia should apply for the re-registration as early as possible and not wait.