Strategic Moves When Patenting in ASEAN

The Association of Southeast Asian Nations, or ASEAN in short, is a group of 10 countries located in Southeast Asia, which are, Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand and Vietnam.

Established on 8 August 1967, the purpose of ASEAN was to promote the development of the Southeast Asian region into a peaceful and stable region with a strong economy and improved standards of living.

One of the headways made is the setting up of a single ASEAN Economic Community (AEC) with reduced tariff barriers between member countries. Being the third largest market in Asia and the seventh largest in the world, the AEC aims to be highly competitive, dynamic, innovative, resilient, integrated and inclusive.

Whether you’re a start-up thinking of expanding within Southeast Asia before going global, or a telecommunications company thinking of penetrating into the ASEAN market, having a strong suite of intellectual property rights (IPR) protection is important to help keep that competitive edge and deter third parties from appropriating goodwill and technologies that do not belong to them.

This article looks at some strategic considerations when patenting in the ASEAN region.

1. Know what type of patents you can get

As signatories of the TRIPS Agreement, basic IP systems are already in place in ASEAN member countries with IP owners being able to obtain IPR protection for their industrial property and artistic creations.

With Myanmar’s patent law being enacted recently, all patent offices in ASEAN member countries now require that a patent application meet patentability requirements before a patent may be granted. As of now, there is no regional patent available for the ASEAN region so patent coverage must be sought individually in each ASEAN member country.

Second tier patent protection, also known as utility models (or simple patent/petty patent/utility innovation) may be obtained in Cambodia, Indonesia, Laos, Malaysia, Myanmar, Thailand, and Vietnam. Utility models generally do not require that an invention fulfil the requirement of inventive step, albeit at a reduced term and/or scope of protection.

2. Know what you can get a patent for

Patent-eligible subject matter is roughly the same across all ASEAN member countries. Methods of treatment and business methods are generally excluded from patentability. Additionally, new use of known substances is not patentable subject-matter in Indonesia while patent protection for pharmaceutical products is not available in Cambodia and Myanmar for the time being.

For Thailand and Vietnam, computer programs are not patentable subject matter, while in Cambodia, an applicant must choose between patent or copyright protection for his/her computer program as filing a patent application will be taken to mean that the applicant waives his/her claim to copyright protection for the same computer program.

3. Know what language you should file in

Patent offices in Brunei, Malaysia, Philippines, and Singapore accept filings in the English language and translations into national languages are not necessary. As such, applicants whose applications were originally filed in English need not incur additional expenses in the form of translation fees.

In Cambodia, Indonesia, Laos, Myanmar (upon the registrar’s discretion), Thailand, and Vietnam, however, translation into the country’s national language is required for filing any documents at the patent office. It goes without saying, then, that additional time must be provided for translating documents such as patent application specifications so that the documents may be timely filed.

4. Know how to get your patent faster

There are two main acceleration programs which an applicant may use to have their application granted earlier. The first is the Patent Prosecution Highway (PPH) program which is available in selected ASEAN member countries and the second is the ASEAN Patent Examination Cooperation (ASPEC) which is available in 9 ASEAN member countries, namely Brunei, Cambodia, Indonesia, Laos, Malaysia, Philippines, Singapore, Thailand and Vietnam.

The PPH is a work-sharing programme that allows applicants to utilize examination reports from a first patent office that indicate that the claims of the application are patentable to accelerate the application process in a second patent office. For example, if the Japan Patent Office (JPO) finds that the claims of a Japanese application are patentable, the applicant may use the results of JPO’s findings to accelerate his/her application in Malaysia.

IP offices which have PPH agreements with other non-ASEAN IP offices are:

  • The Indonesian Directorate General of Intellectual Property, the Thai Department of Intellectual Property and the Intellectual Property Office of Vietnam each have respective PPH agreements with JPO.
  • The Intellectual Property Corporation of Malaysia (MyIPO) has PPH agreements with JPO, the European Patent Office (EPO) and the China National Intellectual Property Administration (CNIPA).
  • The Philippine Intellectual Property Office (IPOPHIL) has PPH agreements with JPO, US Patent and Trademark Office (USPTO), Korean Intellectual Property Office (KIPO) and EPO.
  • The Intellectual Property Office of Singapore (IPOS) has PPH agreements with CNIPA, Mexican Institute of Industrial Property (IMPI) and EPO. IPOS is also part of the Global PPH (GPPH) program which is a multilateral work-sharing program with major patent offices of the world.

ASPEC is a work-sharing programme similar to the PPH. The difference between PPH and ASPEC is that the ASPEC agreement is only between participating ASEAN member states and the ASPEC program may be initiated at any stage of the application before it is granted or abandoned.

Some individual ASEAN member countries also have accelerated or expedited examination processes for applications which qualify for such accelerated/expedited examination. For example, artificial intelligence and financial technology-related inventions can be fast-tracked in Singapore, and applications for inventions relating to green technology in Malaysia can be expedited.

5. Know who you should choose to handle your applications

One often overlooked factor is who applicants entrust the prosecution of their patent applications to. Engaging the right agent who knows the market and is well-versed with local IP laws to handle your patent applications will help increase the odds of your patents being granted.

For more information or IP assistance in any country in Southeast Asia, please drop an email to kass@kass.asia or visit www.kass.asia.

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