Patent

patent lawyers

At KASS, we advise local and foreign inventors or owners of inventions, and draft, file and prosecute patent applications on their behalf. Our team of registered patent agents, technical experts and lawyers help to put our clients at ease by providing comprehensive advice on issues of patent infringement, patentability, prior art searches, and more, even as we regularly update clients on IP-related issues in Southeast Asia.

What is a patent?

A patent is an exclusive right granted to an inventor of a product or process to manufacture and use the invention for a given period.

What is an invention?

An invention is an original technical solution in the form of a product or a process which is intended to solve a problem by application of laws of nature.

What are the criteria to successfully register a patent?

In general, the invention must meet 3 criteria:

  1. New: The invention must not already exist in the world. It is recommended that potential patent owners keep their invention as private knowledge until the patent is accepted.
  2. Inventive step: The new invention must be entirely unique, or have an obvious improvement compared to any existing invention.
  3. Industrial application: The invention must be practical and be useful in an industry.

What are the things that cannot be patented?

The following are largely non-patentable:

  1. Discoveries, scientific theories and mathematical methods.
  2. Plant or animal varieties or essentially biological process for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro- organism processes.
  3. Schemes, rules or methods for doing business, performing purely mental acts or playing games, and
  4. Methods for the treatment of human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body. Products used in any such methods are patentable. Claims on method of treatment of human or animal body by therapy are not patentable. However, claims drafted as use of compounds to treat a medical problem (Swiss type claims) are acceptable.
  5. Claims to computer programs per se.

What is a Patent Search?

Patent Searches are highly effective tools to obtain answers to specific technical questions. Patent Databases contain a huge volume of technology documents, in the form of patent descriptions and drawings. There are several categories of patent descriptions published namely

  1. Patent applications awaiting grant of patent
  2. Granted patents which are still subsisting
  3. Granted patents which have expired or have been abandoned

By conducting a Patent Search, we can help you:

  • Find solutions to a technical problem you are facing
  • Design around a patented product or process

That’s not all, Patent Searches can also provide useful information to answer your questions on:

  • What is the state of art in a particular field of technology?
  • What are your competitors doing?
  • What is the trend in the technological advancements?

KASS offers quality, customised research with fast turnaround and affordable pricing. We have access and the capability to search the patent database resources of US, UK, Europe, Japan, Hong Kong, China, Malaysia, Korea, Australia and 65 other countries.

KASS provides the following patent search services:

  1. Equivalent Patent Search: Useful for parties wanting to know the patent portfolio of a particular owner so that a consolidated action can be taken to attack validity of the patents or a part of due diligence exercise to be undertaken prior to assignment or license of patents.
  2. Prior Art (Patentability / Novelty) Search:Provide patent documents that disclose inventions close to an identified technology.
  3. Infringement Search (Freedom to Operate Search):Identify subsisting patents that would bar the manufacture, use, or sale of a product, or a product made according to a process. This search is necessary before commencing manufacture or sale of a new product.
  4. Validity Search:Used to attack the validity of a granted patent or to oppose a pending patent application. Also useful to determine the strength of a patent before taking an assignment or license of the patent.
  5. Patent File Search:Used to determine whether the patent was prosecuted according to Patent Regulations. Often such searches are done to attack the validity of a granted patent or to oppose pending applications.
  6. Competitor / Third-Party Search:All patents applied for or granted to a competitor or to any third party can be searched to learn their research strategy, identify key research staff, patent filing activities, etc. This gives a good indication of the technical areas a particular party is concentrating on.

What is the Patent Cooperation Treaty (PCT)?

The PCT is a treaty under the World Intellectual Property Organization (WIPO) with 153 member countries. The PCT facilitates the filing of an international patent application for an invention by filing a single application.

A PCT application by itself does not result in the grant of a patent, since there is no such thing as an “international patent”. To obtain a grant of a patent, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases in order to proceed towards the grant of one or more patents.

Malaysia

Malaysian Patent Law is WTO/TRIPS compliant, and Malaysia is a member of the Paris Convention and the Patent Cooperation Treaty (PCT). At present, it is not a member of the Budapest Treaty but its accession to the Budapest Treaty is likely in the near future. The registration of patents is handled by the Intellectual Property Corporation of Malaysia (MyIPO).

What types of protection are there for inventions (in the form of a product, process, machine, manufacture, composition of matter, etc.)?

Two types of patents are granted:

  • Standard Patent: The invention must be novel, have an inventive step and be industrially applicable. Duration of protection is for 20 years from date of filing of application.
  • Certificate of Utility Innovation: Generally the same as standard patent except no inventive step is required.

What are the general requirements to file a patent application?

Malaysia adopts a “first to file” system for patents. A filing date is accorded to the date of receipt of the application if the application contains all the following information:

  1. Name and address of the applicant;
  2. Name and address of the inventor;
  3. Description and all drawings (if any) in duplicate, drawings can be informal drawings;
  4. Claim or claims; and
  5. Prescribed fee.

The following documents can be filed subsequently without jeopardizing the Filing Date:

  1. Appointment of Patent Agent (Form 17) (no notarization or legislation required);
  2. Abstract; and
  3. Priority documents (only if expressly requested by the Registrar of Patents).

All documents can be in the English language. Translation into the Malay language is not necessary.

What happens after the filing of an application?

After a preliminary examination, a Substantive Examination of the patent application will be conducted. The Substantive Examination proceeds only upon the filing of a formal Request for Substantive Examination (S.E.) or Modified Substantive Examination (M.S.E.), which must be filed within 2 years from the date of filing.

Alternatively, the Request for S.E. or M.S.E. can be deferred for 3 years or 4 years from the filing date respectively on specific grounds. Generally, by bringing the application to conformity with a corresponding granted US, UK, EPO or Australian Patent, the application can be expedited.

Can an application be converted from a Patent to a Utility Innovation, or vice versa?

The applicant is given the opportunity to change or convert an application for a patent to an application for a Certificate of Utility Innovation and vice versa. Such conversion is only possible if requested by the applicant within 6 months from the date the Registrar issues the S.E. or M.S.E. report.

How long does a Patent / Certificate for Utility Innovation last?

A patent grants exclusive rights for 20 years starting from the date of filing of application. A Certificate for Utility Innovation provides exclusive rights for a maximum of 4 periods of 5 years each. Both are subject to payment of annuity fees.

Patent offices require the maintenance of granted patents (in some countries even pending applications) by the payment by annuity fees on the anniversary date of grant. Failure to pay by the deadline may result in loss of patent rights in that country.

KASS provides a worry-free patent annuity payment service.

Indonesia
How to obtain a patent in Indonesia?

To obtain a patent in Indonesia, an application must be filed with the Directorate General of Intellectual Property (DGIP).

What types of protection are there for inventions?

Indonesia adopts two types of patents: Regular Patent and Simple Patent.

  • Regular Patent: The invention must be novel, have an inventive step and be industrially applicable.
  • Simple Patent: The invention is novel and practical because of its shape, configuration, or construction; or is an improvement on a product or process. Generally the same as a regular patent except no inventive step is required.

What is the procedure for patent registration?

  1. Filing of Application: Requirements include details of the invention such as the name, specification and inventor details, in addition to the payment of the prescribed fee. If you have an existing application within a Paris Convention or a World Trade Organization (WTO) member country, you may make a priority claim to have this process sped up based on the previous application.
  2. Publication: Carried out by the DGIP in the official Patent Gazette during which the public may view and object to the patent.
  3. Examination: If no objections are received, the application will be examined for similarities to existing patents and to determine that other patentability criteria are met.
  4. Registration: If the application passes the examination, the patent will become accepted within Indonesia, and the owner will be issued with the exclusive rights.

How long does a Patent last?

For Regular Patents, owners of an invention are provided patent protection for 20 years, subject to payment of annuity fees. Protection for Simple Patents lasts for 10 years.

Thailand

How to obtain a patent?

To obtain a patent in Thailand, an application must be registered with the Thailand Patent Office under the Department of Intellectual Property (DIP) at the Ministry of Commerce.

What types of protection are there for inventions?

  • Invention Patent: The invention must be novel, have an inventive step and be industrially applicable.
  • Petty Patent: A petty patent may be granted to an invention which fulfils the criteria of an Invention Patent, but does not have an inventive step.
  • Design Patent: A new design may be able to gain protection as a Design Patent, if it is unique and has industrial or handicraft application. Design Patents are commonly sought to protect the shape, pattern or configuration of a subject.

What is the procedure for patent registration?

The steps to have a standard invention patent registered in Thailand are as follows:

  1. Filing of Application: Requirements include details of the invention such as the name, specification and inventor details, in addition to the payment of the prescribed fee.
  2. Preliminary Examination: A preliminary examination will be conducted by the Patent Office after 10 months.
  3. Publication: The application will be made available to the public, during which the public may view and object to the patent.
  4. Substantive Examination: If no objections are received within 90 days, the application will be examined for similarities to existing patents and to determine that other patentability criteria are met.
  5. Registration: Once the application passes the substantive examination, the applicant will receive exclusive rights to the Invention Patent.

How long does the registration process take?

The time taken for the entire registration process varies according to patent type.

Average time for registration:

  • Invention Patent: 3 – 5 Years
  • Petty Patent: 1 year
  • Design Patent: 18 Months

How long does a Patent last?

  • Invention Patent: Valid for a 20-year period.
  • Petty Patent: Valid for 6 years, but can be extended for 2 periods of 2 years, up to 10 years.
  • Design Patent: Valid for 10 years.
Vietnam

How to obtain a patent?

To obtain a patent in Vietnam, an application must be filed before the Intellectual Property Office of Vietnam (IP Viet Nam).

What types of protection are there for inventions?

Vietnam offers Patent and Utility Solution Patent protection.

  • Patent: The invention must be novel, have an inventive step and be industrially applicable.
  • Utility Solution Patent: The invention must meet the novelty and industrial applicability criteria.

What is the procedure for patent registration?

  1. Filing of Application: Requirements include details of the invention including the applicant, inventors, specification of invention, and payment of the prescribed fee.
  2. Formality Examination: This stage occurs within 1 month from the filing date and assesses whether the application meets formality requirements.
  3. Publication: If the examination is successful, the application will be published in the Industrial Property Gazette.
  4. Substantive Examination: This stage occurs within 42 months from the filing date or priority date in the case of Patent application and 36 months in the case of Utility Solution Patent application. IP Viet Nam will examine substantively within a legal term of 18 months from the publication date or the date of filing request, whichever comes later.
  5. Registration: Once these steps are completed and satisfied, the applicant will receive exclusive rights to the patent.

How long does a Patent last?

  • Invention Patent: Valid for a 20-year period after the filing date, and must be maintained through payment of annuity.
  • Utility Solution Patent: Valid for 10 years after the filing date, and must be maintained through payment of annuity.

How to obtain a patent?

Singapore

To obtain a patent in Singapore, an application must be filed with the Intellectual Property Office of Singapore (IPOS).

What is the procedure for patent registration?

  1. Filing of Application: A PF1/PF8 form, which is a Request for the Grant of a Patent / Statement of Inventorship and Right to Grant of Patent, must be filed, along with the prescribed filing fee. An application must include the details of the invention and information on the applicant and inventor.
  2. Preliminary Examination: This stage occurs within 2 months from the filing date and assesses whether the application meets formality requirements.
  3. Publication: Details of the application will be published in the Patents Journal and made available to the public after 18 months from the declared priority date or filing date of the application, during which the public may view and object to the patent.
  4. Search and Examination: If no objections are received, the application will be examined for similarities to existing patents and to determine that other patentability criteria are met.
  5. Registration: Once these steps are completed and satisfied, the applicant will receive exclusive rights to the patent.

How long does the registration process take?

The entire registration process can take anywhere between 2 – 4 years from the initial filing date, depending on the complexity of the invention, the examination process and any changes made to the original application.

How long does a Patent last?

Upon grant, patent protection will be valid for 20 years from the filing date. The patent must be maintained yearly, starting from the 5th year.

Myanmar

How to obtain a patent?

While the new Myanmar Patent Law was enacted on 11 March 2019, the law is only expected to be implemented at the end of 2021. The Myanmar IP Office (IPD) has been established and the relevant regulations and procedures are in the process of being drafted. As such, the effective date would be dependent on said factors.

There is currently no legislation in Myanmar regulating the use and enforcement of patents and hence the publication of a Cautionary Notice in a local newspaper is recommended. The purpose of this publication is to inform the general public about the claim to ownership and to warn against potential infringement.

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