ASEAN stands for the Association of Southeast Asian Nations – a community consisting of 10 states with diverse economic and social conditions. These countries are bound together by a common goal - to foster economic growth through regional co-operation and adoption of sound economic policies, including the protection of intellectual property rights.
ASEAN stands for the Association of Southeast Asian Nations – a community consisting of 10 states with diverse economic and social conditions. These countries are bound together by a common goal - to foster economic growth through regional co-operation and adoption of sound economic policies, including the protection of intellectual property rights. Why does filing patents in ASEAN matter? • ASEAN gives vast market opportunities – it comprises nearly 10% of the world’s population. Its combined economy is estimated to grow at an average annual rate of about 5.6% for the next 5 years, which classes the region as a very lucrative one for business. • Further reasons that make filing into ASEAN countries attractive to many Applicants include the fact that most of these countries are members of the Paris Convention and the Patent Cooperation Treaty - which makes filing easier for Applicants, given the availability of a unified procedure and well-established system under these treaties. ASEAN member countries have devoted more resources to continuously improve their patent systems and enforcement conditions domestically and, furthermore, applicants can already obtain grant for their patents at a shortened time through accelerated examination programs adopted by the ASEAN countries via the Patent Prosecution Highway (PPH) and the ASEAN Patent Examination Cooperation (ASPEC). • Patent applications can be filed in English language in Malaysia, the Philippines, and Singapore. Indonesia, Thailand and Vietnam require translations of the specifications into their respective local languages. Where translations are required, translation fees usually make up the most significant portion of the patent costs. SINGAPORE PATENT SYSTEM OVERVIEW • Singapore boasts of a strong and enforceable intellectual property (IP) framework. In fact, its IP regime is consistently recognized as one of the best in the world: Singapore was ranked fourth in the world and top in Asia for having the best IP protection in the World Economic Forum’s Global Competitiveness Report 2015/2016. Similarly, it was ranked top in Asia for its IP environment in the U.S. Global Intellectual Property Center’s International IP Index 2016. It was also ranked as the most innovative nation in the world on the Innovation Input Sub-Index of the Global Innovation Index 2016. • In 2015, Singapore commenced operation as ASEAN’s first International Patent Search and Examination Authority under the Patent Cooperation Treaty (PCT). Singapore is the fifth of such in Asia (after China, India, Japan and Korea) and joins a select group of 19 IP offices worldwide that have been appointed as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for the PCT. • Given the various local and international cooperative efforts to maximize the country’s IP capabilities, Singapore stands to be an excellent IP application destination for business owners and innovators wishing to register their IP rights. • Singapore’s famously efficient bureaucracy makes for some of the swiftest turnaround periods for customers wishing to register IPRs in the region – typically, for example, a trade mark without any opposition can expect to be registered from first filing in just 4 to 6 months. • Above all, Singapore strives to provide businesses and clients with quality IP protection and continues to build a reputable IP ecosystem that is recognized not just regionally, but globally. Legal Basis • Patents Act 1995 (Chapter 221) effective 23 February 1995 • Patents (Amendment) Act, 1995 effective 01 January 1996 • Patents (Amendment) Act, 2001 effective 25 February 2002 • Patents (Amendment) Act, 2004 effective 1 July 2004 • Patents (Amendment) Act, 2008 (No. 18 of 2008) effective 01 December 2008 • Patents (Amendment) Act, 2012 (No. 15 of 2012) effective 14 February 2014 • Patent Rules 1995 • Patent Rules 1993 (Rev. Edition) effective 23 February 1995 • Patents (Amendment) Rules 1996 effective 24 February 1996 • Patents (Amendment) Rules 2013 effective 08 April 2013 • Patents (Amendment) Rules 2014 effective 14 February 2014 • Patents (Amendment No. 2) Rules 2014 effective 10 March 2014 Major International Treaties Signed • Patent Cooperation Treaty (PCT) effective 23 February 1995 • Paris Convention effective 23 February 1995 • Budapest Treaty effective 23 February 1995 • Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Average Time To Obtain A Patent • 12 – 24 months from PCT national phase entry • 42 – 54 months from priority date for Paris Convention applications Official Language for Patent Prosecution English Non-Patentable Subject Matter • Methods of treatment of the human or animal body by surgery or therapy or of diagnosis • Invention that may encourage offensive, immoral or antisocial behaviour Grace Period for Prior Disclosure or Sale 12 months Major Prosecution Events Following the filing date or earliest claimed priority date – whichever is the earlier: • Request for Search: 13 months • National Phase Entry: 30 months • Request for Search and/or Examination: 36 months • Payment of Grant Fees: 54 months • Renewals: On the fifth anniversary of filing, and each succeeding anniversary thereafter Filing and Prosecution Procedures • Stage 1: Filing • Stage 2: Formality Examination • Stage 3: Publication • Stage 4: Substantive Examination • Stage 5: Grant • Stage 6: Renewal/ Annuity Extension of Office Action Deadlines Non-Extendible Necessary Document for Filing None, if the application has already been published by WIPO and is in English. Otherwise, verified English translations of the specifications and the translator’s declaration of accuracy is required. Pharmaceutical Data Exclusivity Laws Available Search and Examination Local examination of patents is not compulsory. Search and examination reports established in other countries or during PCT international phase can be relied upon for the purpose of patent grant in Singapore Request for Accelerated Examination is available via the Patent Prosecution Highway (PPH) or the ASEAN Patent Examination Cooperation (ASPEC) Opposition Term Not Available Term of Patent Protection 20 years Patent Term Extension Available Restoration of Lapsed Patent Within 18 months from the day it ceased to have effect Parallel Imports Available Other Forms of Patents (e.g. Petty / Innovation Patents) Not Available IPOS Website http://www.ipos.gov.sg Special Features of Singapore Patent System • In Singapore, a patent application shall proceed to grant based on the allowed/granted claims in either: a corresponding application, a corresponding international application, or a related national phase application. However, we do not recommend this option, as this may result in a weak patent. • After filing a request for supplementary examination, local examiners will examine only a limited number of prescribed matters, e.g. the relatedness of the Singapore claims to the granted claims of the corresponding application. There is no further substantive examination to be conducted. • Consequently, the application will be allowed based on the examination report conducted in a country, which may have a different examination practice with Singapore. This will therefore increase the burden on the applicant to establish the validity of the claims in later proceedings. Enforcement of Patents In Singapore Infringement Offence Civil and Criminal (in special cases) Specialized Courts for IP Not Available Outline of the Enforcement Steps Notice of Cease and Desist Infringement Lawsuit Relief Against Groundless Threats Available Declaration of Non-Infringement Available Preliminary Injunctions Available Time Frame for Various Legal Actions • Revocation – 1 to 2 years • Infringement proceeding – 2 to 3 years Alternative Dispute Resolution Mediation Arbitration Availability of damages and other relief for infringement Injunction Delivery Up of Infringing Articles Damages Account of profits Civil remedies As per above Criminal Sanctions Not Available Development of Singapore’s IP Enforcement • Singapore’s IP laws are administered by the Intellectual Property Office of Singapore (IPOS), a statutory board under the Ministry of Law. The Intellectual Property Rights Branch of the Police is responsible for territorial enforcement, whilst Singapore Customs – together with the Immigration and Checkpoints Authority – are responsible for border enforcement of IP rights. • Over the past few years, Singapore has strengthened its border enforcement measures through the lodgement of notice system and the ex-officio approach. Under the notice system, the rights owner can lodge a formal complaint to Singapore Customs to detain a particular shipment, whereas border officials, having ex-officio authority, can detain suspected goods without the need for a formal complaint. MALAYSIA PATENT SYSTEM OVERVIEW • Since signing the Paris Convention on the Protection of Industrial Property in 1989, Malaysia has consistently demonstrated its commitment to making intellectual property a priority in its national agenda, with many affirmative actions by the Malaysian government to improve the IP landscape in the country. • In 2006, it became party to the Patent Cooperation Treaty (PCT), meaning that patent applications in Malaysia can be filed as part of one application in conjunction with other PCT states. • In 2007, it boosted its trademark services by becoming signatory to both the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks. Legal Basis • Patents Act 1983, effective 1 October 1986 • Patents (Amendment) Act 1993, effective 1 August 1995 • Patents (Amendment) Act 2000, effective 1 August 2001 • Patents (Amendment) Act 2002, effective 3 March 2003 • Patents (Amendment) Act 2003, effective 14 August 2003 • Patents (Amendment) Act 2006, effective 16 August 2006 • Patents Regulations 1986, effective 1 October 1986 • Patents (Amendment) Regulations 1993, effective 1 August 1995 Major International Treaties Signed • Patent Cooperation Treaty (PCT), effective 16 August 2006 • Paris Convention, effective 1 January 1989 • World Trade Organization (WTO), effective 1 January 1995 • Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Average Time To Obtain A Patent • 12 to 30 months from PCT national phase entry • 42 to 48 months from priority date for Paris Convention applications Major Prosecution Events • National Phase Entry : 30 months • Request for Examination: • 18 months from the date of filing for Paris Convention applications • 48 months from the International filing date for PCT National Phase entry • Renewals of patents: Every year upon grant of patent Filing and prosecution procedures • Stage 1: Filing • Stage 2: Formality Examination • Stage 3: Substantive Examination • Stage 4: Grant • Stage 5: Renewal/ Annuity Extension of office action deadlines May be filed only once for a maximum of 9 months for examination events Necessary document for filing • Power of Attorney • Statement Justifying Applicant’s Rights Pharmaceutical Data Exclusivity Laws Available – Malaysia has implemented data exclusivity since 2011 for undisclosed, unpublished and non-public domain pharmaceutical test data. The term is five years for a new chemical entity and three years for a second indication. Data exclusivity is awarded to the originator; however, a generic company may rely on bio-equivalence to get marketing authorization. Marketing authorization is managed by the National Pharmaceutical Regulatory Agency. Search and Examination The Patent Office does conduct its own search and examination, but favours search and examination reports issued in prescribed countries such as US, UK, Australia, Japan and South Korea as well as the European Patent Office. Request for Examination is also available via the Patent Prosecution Highway (PPH) or the ASEAN Patent Examination Cooperation Opposition Term Not available Term of Patent Protection 20 years Patent Term Extension Not available Restoration of Lapsed Patent Within 24 months from date of lapse Parallel Imports Available Other Forms of Patents Utility innovation (UI): UI does not require inventiveness. A maximum of one claim is permitted. MYIPO Website http://www.myipo.gov.my Enforcement of Patents In Malaysia Infringement Offence Available Specialized Courts for IP Available Outline of the Enforcement Steps Notice of Cease and Desist Infringement Lawsuit Relief Against Groundless Threats Not Available Declaration of Non-Infringement Available Preliminary Injunctions Available Time Frame for Various Legal Actions • Revocation – 1 to 2 years • Infringement proceeding – 2 to 3 years Alternative dispute resolution • Mediation • Arbitration Availability of damages and other relief for infringement • Injunction • Loss of revenue • Account of profits Civil remedies Available Criminal Sanctions Not Available Growth of Malaysia’s IP landscape • On 27 April 2007, the Malaysian Government launched the National Intellectual Property Policy (NIPP), a blueprint for IP policies and directions, with the aim of fostering a healthy and vibrant IP environment and harnessing IP as a new engine of growth. This was followed by the establishment of the Intellectual Property Courts (IP Courts) in July 2007, making Malaysia one of the first countries in the region to have specialised courts dealing with IP cases. • Hot on the heels of that, the country also set up a Special Task Force on Counterfeiting and Piracy and implemented the “Tulen Patrol” campaign to carry out random checks at business offices for the use of illegal software. • Furthermore, as a result of the ASEAN Economic Community’s Harmonisation Plan, Malaysia has agreed to accede to the Madrid Agreement Concerning the International Registration of Marks (also known as the “Madrid Protocol”). This projected accession is still awaiting effective date. INDONESIA PATENT SYSTEM OVERVIEW • As the fourth-most populous country in the world, Indonesia’s potential is enormous. Its growth in recent years has been exponential, and this is in no small part due to improvements in its IP regime. • Since the sanctioning of the World Trade Organization’s (WTO) Agreement on Trade-related Aspects of Intellectual Property Amendments (TRIPs Agreement) in 1994, Indonesia has taken active steps to develop and issue IP laws, creating a better framework for IP protection and providing a better environment for the development of IP. • In 1997, it became party to the Patent Co-operation Treaty (PCT), meaning that patent applications in Indonesia can be filed in Indonesia as part of one application in conjunction with other PCT states. • As a result of the ASEAN Economic Community’s Harmonisation Plan, Indonesia has committed to becoming signatory to the Madrid Agreement Concerning the International Registration of Marks (also known as the “Madrid Protocol”). However, this accession is still pending an effective date. Major International Treaties Signed • Patent Cooperation Treaty (PCT) effective 5 September 1997 • Paris Convention effective 24 December 1950 • Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Average Time To Obtain A Patent 24 to 48 months from PCT national phase entry 24 to 48 months from the filing date for Paris Convention entry 24 months from the filing date for Simple patent Official Language for Patent Prosecution Bahasa Indonesia Non-patentable subject matter • Any process or product that contravenes the prevailing rules and regulations, religious morality, public order or ethics • Methods of examination, treatment, medication, and/or surgery applied to humans and /or animal • Discoveries or scientific theories • Mathematical formulae • Living creatures (excluding micro-organisms) • Biological processes for reproduction of plants and animals (excluding microbiological processes). Grace period for prior disclosure or sale 6 months before the Indonesian filing date (for experiments, R&D or disclosure to learned community) Major prosecution events • Paris Convention entry:12 months from priority • National phase entry: 31 months from priority • Request for Examination:36 months from filing • Payment of first annual fees or back fees: within 6 months from issuance of notice of grant • Renewals of patents: Every year Filing and prosecution procedures Stage 1: Filing Stage 2: Formality Examination Stage 3: Publication & Opposition (if any) Stage 4: Substantive Examination Stage 5: Grant Stage 6: Renewal/ Annuity Extension of office action deadlines Available Necessary document for filing Power of Attorney Deed of Assignment*English translation is additionally required for documents not originally in English (e.g. patent specification) Pharmaceutical Data Exclusivity Laws Not Available Search and Examination The Patent Office conducts its own Search and Examination but favours Search and Examination reports issued in prescribed countries such as US, UK, Australia, Japan and South Korea and mostly from European Patent Office Request for Accelerated Examination is available via the Patent Prosecution Highway or the ASEAN Patent Examination Co-operation Opposition term 6 months during publication period Term of patent protection 20 years commencing from the filing date for PCT and Paris Convention application 10 years commencing from the filing date for Simple Patent Patent term extension Not available Restoration of lapsed patent Not available Parallel Imports Patent Law no. 14 of 2001 regulates that parallel imports are not permissible, however, in practice, this is still difficult to implement due to a lack of coordination between the IP office and customs office Other forms of patents (e.g. Petty/innovation patents) Simple Patent: A maximum of one invention is allowable. The scope of invention for simple patents has been expanded to include new inventions – or developments of existing products or processes – that may be applied within an industry. Directorate General of Intellectual Property (DGIP) http://www.dgip.go.id Enforcement of Patents In Indonesia Infringement Offence Available Specialized Courts for IP Not Available Outline of the Enforcement Steps Cease and Desist Letter Infringement lawsuit Relief Against Groundless Threats Regulated but cannot be implemented due to lack of technical regulation Declaration of Non-Infringement Not Available Preliminary Injunctions Available Time Frame for Various Legal Actions Revocation – 6 to 8 months for first instance and 8 to 12 months for Cassation; Infringement proceeding – 6 to 8 months for first instance and 8 to 12 months for Cassation Appeal against decision to grant – within 9 months from date of notification of grant. Alternative dispute resolution • Mediation • Arbitration • Conciliation Availability of damages and other relief for infringement • Injunction • Loss of revenue Civil remedies Not Available Criminal Sanctions • Penalty • Jail sentence (max. 4 years) Growth of Indonesia’s IP landscape • The governmental body concerning IP in Indonesia, the Directorate General of Intellectual Property (DGIP), has drafted and circulated new IP laws including a “cyberlaw” for online copyright provision, regulations on geographical indicators and legislation relating to the recordal of patent assignments. • Meanwhile, existing laws on copyrights, trademarks and patents are regularly revised in accordance to international best practices. • Given all these initiatives, Indonesia’s IP legislation is considered comprehensive and in accordance with international standards. THAILAND PATENT SYSTEM OVERVIEW • With an increasingly skilled workforce, coupled with expanding market opportunities, Thailand’s growing economy is attracting greater international investment. The country’s intellectual property environment is growing ever larger to follow this economic development. • In 2009, Thailand joined the Patent Cooperation Treaty, introducing new patent examination guidelines and amendments to IP law in order to broaden the scope of enforcement to cover all intellectual property laws and expedite processing of patent applications. Following this, it established the National Intellectual Property Centre of Enforcement (NICE) in 2013 to encourage coordinated efforts among various agencies involved in IP protection and enforcement. • The total eradication of the counterfeit industry is a key objective for the Royal Thai government. The Department of Intellectual Property (DIP) has introduced several initiatives to reinforce its legal framework with an aim to overcome existing challenges in enforcing IP rights. Legal Basis Patent Act No. 1, B.E. 2522 (1979) and Patent Act No. 2, B.E. 2535 (1992) as amended by Patent Act No.3, B.E. 2542 (1999), the latter effective 27 September 1999 Major international treaties signed • Paris Convention effective 1 August 2008 • Patent Cooperation Treaty (PCT) effective 24 December 2009 • Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) PCT Information Thailand has deposited their instruments of accession with WIPO on 24 September 2009, thus became the 142nd contracting state of the Patent Cooperation Treaty. The treaty became effective in Thailand from 24 December 2009. Average time to obtain a patent 5 to 8 years Official language for patent prosecution Thai Non-patentable subject matter • Naturally existing micro-organisms and their components, animals, plants and, animal and plant extracts • Discoveries or scientific theories • Mathematical formulae • Methods of medical treatment and diagnostic methods • Computer programs Grace period for prior disclosure or sale 12 months before the Thailand Filing date (unlawful disclosure, International Exhibition, Government Official Exhibition) Major prosecution events • Paris Convention: 12 months • National Phase Entry: 30 months (non-extendible) • Request for Examination: 60 months (from publication date) • Payment of grant fees: 60 days after receiving notification • Renewals of patents: Every year after the 4th anniversary of grant, within 60 days following commencement of each new year. Filing and prosecution procedures Stage 1: Filing Stage 2: Formality Examination Stage 3: Publication & Opposition (if any) Stage 4: Substantive Examination Stage 5: Grant Stage 6: Renewal/ Annuity Extension of office action deadlines • First extension: 90 days • Second extension: 30 days Necessary document for filing Power of Attorney Deed of Assignment (only where the applicant is different from the PCT application) Priority document (where priority is claimed and has not been transmitted to the national office by WIPO) Pharmaceutical Data Exclusivity Laws Not available Search and Examination The Patent Office conducts its own Search and Examination but favours Search and Examination reports issued in prescribed countries such as US, UK, Australia, Japan as well as the prescribed regional European Patent Office Request for Accelerated Examination is available via the Patent Prosecution Highway (PPH) or the ASEAN Patent Examination Cooperation (ASPEC) Opposition term 90 days after publication Term of patent protection 20 years Patent term extension Not available Restoration of lapsed patent Within 120 days from the date of lapse Parallel Imports Available Other forms of patents (e.g. Petty/innovation patents) Petty patents and design patents Thailand Department of Intellectual Property (DIP) Website www.ipthailand.go.th Enforcement of Patents In Thailand Infringement Offence Civil and Criminal (in special cases) Specialized Courts for IP Central Intellectual Property & International Trade Court Outline of the Enforcement Steps File a complaint with the police or the Intellectual Property and International Trade Court Relief Against Groundless Threats Right to counter sue Declaration of Non-Infringement Not Available Preliminary Injunctions Available Time Frame for Various Legal Actions Criminal 6 to 18 months Civil 1 to 5 years Alternative dispute resolution Not available for criminal cases but available for civil cases if the parties agree Civil remedies Damages Criminal Sanctions Imprisonment Fine Growth of Thailand’s IP landscape • In 2016, Thailand’s Trade Marks Act was overhauled, as it prepares to accede to the Madrid Agreement Concerning the International Registration of Marks (also known as the “Madrid Protocol”) in 2017. As a result of the ASEAN Economic Community’s Harmonisation Plan, all ASEAN member states have committed to becoming party to this treaty. PHILIPPINE PATENT SYSTEM OVERVIEW • The first laws protecting IP rights were enacted in the Philippines in 1947. These were later enshrined in the 1973 Constitution, which provides that “the exclusive right to inventions, writings and artistic creations shall be secured to inventors, authors, and artists for a limited period” and in the 1987 Constitution, which explicitly mandates that the State shall protect intellectual property. In 1980, the Philippines became a member of the World Intellectual Property Organization [WIPO], a milestone in the establishment of the country’s IP landscape. • To further boost the country’s IP landscape, the Philippine government increased its efforts in IP protection. In 1992, the Philippine Association of Certified Patent Agents [PACPA] was incorporated, thereby recognising and promoting the patent agent profession in the Philippines. • This was followed by a series of significant legislative and regulatory reforms to strengthen IP protection and enforcement. On 1 January 1998, the Philippine government made it a State policy to protect and promote intellectual property rights, leading to the establishment of the Intellectual Property Office of the Philippines (IPOPHL), the government body that oversees the enforcement of IPRs. Legal Basis 1987 Philippine Constitution effective from 2 February, 1987 Republic Act No. 8293 Intellectual Property Code effective from 1 January, 1998 Republic Act No. 9168, Plant Varieties Protection Act effective from 7 June, 2002 IP Philippines Memorandum Circulars and Orders Major international treaties signed • Patent Co-operation Treaty • Paris Convention • Budapest Treaty • Agreement on Trade Related Aspect of Intellectual Property Rights (TRIPS) Average time to obtain a patent About 36 months for PCT national phase filings About 52 months for Convention and Direct filings About 6 months for Utility Models about 24-48 months from filing in the Philippines Official language for patent prosecution English Non-patentable subject matter • Discoveries, scientific theories and mathematical method • Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers • Methods of medical treatment for the human or animal body for surgery • Plant varieties or animal breeds • Aesthetic creations • Anything that is contrary to public order or morality Grace period for prior disclosure or sale Up to 12 months before the first filing Major prosecution events (calculated from priority or filing date) Event PCT-National Phase Non-PCT Request for Search 12 months 18 months Request for Examination 34 months 21 months Filing Due Date 30 months 12 months Payment of Annual Fees 48 months 48 months Renewal (after grant) Every year Every year Extension of deadlines (i) 2 months for responding to Office Actions (ii) 18 months for Search and Examination events (iii) 2 months for most other deadlines Pharmaceutical Data Exclusivity Laws Not available Parallel Imports Permissible Term of patent 20 years Patent Term Extension Not available Restoration of Lapsed Patent No specific provisions are present. However, in case the application is pending examination, an application can be revived by filing a Petition for Revival within 4 months from the mailing date of the Notice of Abandonment. Search and Examination Local examination of patents is not compulsory. Search and Examination reports established in other countries or during PCT international phase can be relied upon for the purposes of patent grant in the Philippines. Request for Accelerated Examination is available via the Patent Prosecution Highway (PPH) or the ASEAN Patent Examination Cooperation (ASPEC) Other forms of patents (e.g. petty/innovation patents) Utility model Intellectual Property Office of the Philippines Website www.ipophil.gov.ph Enforcement of Patents In the Philippines Infringement Offence Civil and Administrative Criminal (in certain cases) Specialized Courts for IP Available Outline of the Enforcement Steps (i) Notice of Cease and Desist (ii) Action for Infringement Relief Against Groundless Threats Not available Declaration of Non-Infringement Not Available Preliminary Injunctions Available Time Frame for Various Legal Actions Infringement proceedings: 12-24 months Alternative dispute resolution Mediation Availability of damages and other relief for infringement (i) Injunction (ii) Loss of revenue (iii) Account of profits (iv) Attorney’s fees and other expenses for litigation Growth of Philippines’ IP landscape • Today, the country continues in its efforts in IP protection. The Philippines has recently enacted several policy initiatives to allow the ratification of several international IPR treaties, such as the Nice Agreement on the classification of goods and services in trademark applications; the Vienna Agreement on the classification of figurative parts of trademarks; the Singapore Trademark Law Treaty, which harmonizes various trademark prosecution procedures; and the Hague Agreement which provides for a centralized design registration system. • As contained in the 2016 Special Report of the US Trade Representative, the Philippines has also made some alliances with international organizations such as the Business Action to Stop Counterfeiting and Piracy (BASCAP) to conduct crackdowns on counterfeits. All these initiatives have enhanced the country’s position in IP. • The Philippines is now on its way to becoming one of the leading countries in IP in the ASEAN region. VIETNAM PATENT SYSTEM OVERVIEW • With strong exports and record-high foreign direct investment, Vietnam’s economy is an emerging market standout. This is due in no small part to its robust intellectual property landscape. The Vietnamese government is aware of the change in its business landscape and has stepped up its efforts in matters relating to IP. • To catch up with the development of the regional and global economy, Vietnam’s National Assembly passed the Law on Intellectual Property Rights in 2005 to protect three major IP rights: copyright and related rights; industrial property rights; and rights in plant varieties. This, along with a multitude of other laws related to IPR, such as the 2004 Law on Competition and the 2005 Civil Code, contributed to the country’s ascension to the World Trade Organization (WTO) in November 2006 and a bilateral trade agreement with the US in 2007. Major international treaties signed • Patent Cooperation Treaty • Paris Convention Average time to obtain a patent 5 – 6 years Official language for patent prosecution Vietnamese Non-patentable subject matter • Discoveries, scientific theories; mathematical formulae • Schemes, plans, rules or methods for performing mental acts, playing games, doing business; computer programs • Presentations of information • Solutions of aesthetic characteristics only • Plant varieties, animal varieties • Processes of essentially biological nature for the production of plants and animals other than microbiological processes • Methods of diagnostic, prophylaxis and treatment for human or animals Grace period for prior disclosure or sale Six months before filing date in Vietnam Major prosecution events • Paris Convention entry: 12 months • National phase entry:31 months • Formality Examination : 1 months from local filing date • Substantive Examination: 42 months • Term of examination: 18 months • Payment of grant fee : At the end of examination • Renewals (after grant): Every year on anniversary of grant date Extension of deadlines Only one extension permitted, for a period of 2 months Pharmaceutical Data Exclusivity Laws In force Parallel Imports Allowed Term of patent 20 years from filing date Patent term extension Not available Restoration of lapsed patent Not Allowed Search and Examination The Vietnamese National Office of Intellectual Property (NOIP) conducts its own Search and Examination, both as to form and as to substance Request for Accelerated Examination is available via the Patent Prosecution Highway (PPH) or the ASEAN Patent Examination Cooperation (ASPEC) Other forms of patents Utility Solution (for minor inventions) National Intellectual Property Office of VietNam (NOIP) Website http://www.noip.gov.vn Enforcement of Patents In Vietnam Infringement Offence Civil and Criminal (in special cases) Specialized Courts for IP Not Available Outline of the Enforcement Steps Cease and Desist Letter File a petition at the local authority to denounce the infringer Relief Against Groundless Threats Not Available Declaration of Non-Infringement Not Available Preliminary injunctions Available Alternative Dispute Resolution (i) Mediation (ii) Arbitration Availability of damages and other relief for infringement (i) Injunction (ii) Loss of revenue (iii) Account of profits Growth of Vietnam’s IP landscape • In September 2010, in an effort to strengthen the protection of IPRs, the government issued sterner administrative sanctions for violations of industrial property rights, along with other important changes to the IPR regulations in Vietnam. Aside from local IPR legislation, Vietnam is also a regular participant in international IPR conventions such as the Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary and Artistic Works, the Rome Convention, Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, and the Madrid Protocol. In addition, Vietnam has concluded the negotiation of an FTA with the EU in February 2016, which has substantial IP provisions, to further boost its IP environment. The FTA has been published and is now under legal review and translation to the EU’s official languages and Vietnamese. • The IP landscape in Vietnam is governed by the National Office of Intellectual Property of Vietnam (NOIP), an agency under the Ministry of Science and Technology.
