Cambodia continues to improve its climate for foreign investment. On June 5, 2015, Cambodia implemented the Madrid Protocol. On January 20, 2015, Cambodia’s Ministry of Industry and Handicrafts (MIH) entered into a Memorandum of Understanding on the Cooperation in Industrial Property with the Intellectual Property Office of Singapore (IPOS). The MOU now makes it possible for holders of Singapore patents and designs to obtain protection in Cambodia under a streamlined re-registration process.
Cambodia’s Law on Patents, Utility Model Certificates, and Industrial Designs dates back to 2003, and hundreds of patent applications have been filed with Cambodia’s MIH in the interim. However, Cambodia has lacked the infrastructure to examine patent applications and the country had not granted a single patent until Cambodia’s MIH entered into the MOU with Singapore’s IPOS.
It is now possible to obtain patent protection in Singapore and re-register a Singapore patent or design in Cambodia using a streamlined process that can be completed in months, not years.
The MOU provides that: (1) IPOS will act as a Search and Examination Authority for patent applications on behalf of the MIH; and (2) the MIH will recognize patents and industrial designs granted at IPOS.
To our knowledge, Cambodia’s MIH has not yet issued any written regulations or guidelines to assist with the re-registration process. Those regulations are currently expected to be issued in early 2016. However, the MIH did issue the first Cambodian patent under the MOU on March 4, 2015—less than two months after signing the MOU. In meetings with the MIH, we have learned that they are ready to accept further applications under the new regime.
Re-registration of a Singapore Patent
In order to re-register a Singapore patent in Cambodia, the Singapore patent must be in force at the time of the Cambodia filing, and the application to re-register must include the following items:
- Application form No. 1 P/UM;
- Certified copy of the Certificate of Grant for the Singapore patent;
- Certified copy of the final specifications as granted;
- Certified copy of Singapore Form PF8 if the applicant is not the inventor;
- Power of Attorney; and
- Additional information sheet—requested by the MIH if any of the above documents are defective or missing from the application dossier.
In addition, it is optional but recommended to include a final search and examination report issued by IPOS.
To more effectively facilitate the grant in Cambodia, amendments can be filed to conform to the Cambodia patent specification to correspond to the Singapore patent specification, as granted.
Khmer translations: The above documents must be translated to Khmer within six months of the submission date as stipulated in Rule 11 of the Prakas on the Procedures for the Grant of Patents and Utility Model Certificates.
One-year deadline: One significant issue is that MIH personnel have verbally informed us that the MIH is currently only accepting applications to re-register patents that were granted in Singapore no longer than one year before that application is submitted in Cambodia. This one-year deadline is not specified in the MOU, and we are following up periodically with the MIH to see if they anticipate a change. In the meantime, clients with recently-granted Singapore patents should consider re-registration in Cambodia as quickly as possible.
Re-registered Patent Annuity/Maintenance Fees
- An annuity/maintenance fee must be paid for re-registered patents, which is calculated from the Singapore date of filing.
- There is a six-month grace period for payment of annuity fees for patents.
- There is a surcharge for late payment.
- For patents, protection lasts for a total of 20 years.
Re-registered Design Renewal
- The renewal term for a re-registered design is five years from the Singapore date of filing.
- There is a six-month grace period for payment of renewal fees for re-registered designs.
- There is a surcharge for late payment.
- For designs, protection lasts for 5 years after paying the grant fee. After this period, protection can be renewed for another 5 years, and after that, an additional 5 years. In total, protection can last for 15 years.