A new Patents Order, 2011 has come into force in Brunei Darussalam, effective January 1, 2012. This legislation repeals the previous patent legislation, i.e. The Inventions Act, Chapter 72.
Previously, Brunei, a member state of ASEAN, did not have a national patent system. Patent protection was obtained by re-registration of a granted UK, European Patent Office (designating UK), Malaysian or Singapore patent. The re-registration application had to be filed within three years from the date of issue of the original grant. The application was examined on formal matters only. Patent applications were not substantively examined, but were just advertised for opposition by any interested third party. Upon re-registration, the foreign patent would enjoy the same privileges in Brunei as it merits in the country in which it was granted.
Under the new legislation, the only subject matter excluded from patentability is invention pertaining to method of treatment of the human or animal body by surgery or therapy or of diagnosis practiced on the human or animal body as it is not capable of industrial application. This means that other inventions, e.g. business methods or software inventions, can be patented if they meet the patentability requirements, i.e. novelty, inventive step and industrial applicability.
The new Brunei law applies the concept of absolute novelty: An invention is only novel if it has not been publicly disclosed by use or by written or oral description or in any other form worldwide before the effective filing date. However, there are exceptions to this absolute novelty requirement provided that the application is filed within 12 months of disclosure. First, disclosure was due to or made in consequence of the matter having been obtained unlawfully or in breach of confidence by any person. Second, disclosure was due to or made in consequence of the inventor displaying the invention at an international exhibition. Third, disclosure was due to or made in consequence of the inventor describing the invention in a paper read by him or another person with his consent before any learned society or published with his consent in the transactions of any learned society.
Under the new law, both formalities examination and substantive examination are conducted. A search fee may not be paid by filing a copy of a search report which has been issued in respect of a corresponding patent application filed elsewhere.
The patent term under the new Patents Order, 2011 is 20 years from the filing date, and annuities are to be paid yearly starting from the fifth year. A 6-month grace period is available for the late payment of annuities.
Another important point to note is the security clearance requirement in Brunei under Section 33 of the new Patents Order, 2011. This section requires that no person resident in Brunei Darussalam shall, without a written authority from the Registrar, file or cause to be filed an application for a patent for an invention outside Brunei Darussalam, unless if an application for the same invention has been filed in the Registry not less than two months before the application outside Brunei Darussalam and no directions have been given in relation to the application in Brunei Darussalam. Any person who contravenes such requirement shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $5,000 and/or to imprisonment for a term not exceeding two years.
Furthermore, the new legislation also includes provisions that will allow for the processing of PCT applications when Brunei has acceded to the Patent Cooperation Treaty.
Finally, under Section 115 of the new Patents Order, 2011, any existing application for the re-registration of a granted UK, European Patent Office (designating UK), Malaysian or Singapore patent which has been filed before the commencement of the new Patents Order will be granted as if the previous law had not been repealed. Moreover, if a patent has been granted in UK, European Patent Office (designating UK), Malaysia or Singapore within 36 months immediately before the commencement of the Patents Order, 2011 and that patent is still in force on that date, an application for re-registration of that patent may be filed within 24 months from the date of commencement of the Patents Order. Furthermore, if a UK, European Patent Office (designating UK), Malaysian or Singapore patent application has been filed before the commencement of the Patents Order, 2011 and is still pending on that date, the applicant, within 12 months of the date of issuance of the patent, may apply to re-register the foreign patent as if the previous law had not been repealed.
This article was first published in Asia IP magazine, Vol. 4 Issue 2, February 2012, p36.