Patent Protection in Myanmar

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Myanmar is an emerging market showing steady growth rates since the country set itself on a course of political liberalisation. Despite being one of the poorest ASEAN nations, the country’s economy grew at around 8.5% in the 2014/2015 fiscal year, with economic reforms bolstering consumer and investor confidence. The service sector was the main driver of growth thanks to expansions in telecommunications and transportation. Myanmar is an emerging economy with a GDP of $64.3 billion, which is 120px-Baganmyoattracting more and more foreign investments. Its 53.4 million strong population is mainly occupied in the agricultural sector. However, the garment and mining industries, as well as wood products also take up a significant part of the economy. 

EU imports for Myanmar are dominated by the textile industry, accounting for nearly 80% in 2011, making it the 29th largest trading partner for the EU for clothing. Agricultural products also play a significant role in Myanmar’s exports to the EU. EU exports to Myanmar on the other hand are dominated by machinery and transport equipment. EU exports to Myanmar have risen steadily since its increasing political liberalisation. 

Patents in Myanmar

Myanmar is not currently a signatory of the Paris Convention for the Protection of Industrial Property or any other treaty protecting patents. However, in accordance with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), to which it has acceded, Myanmar is required to implement and comply with Articles 1-12, Article 19 of the Paris Convention and the terms of TRIPS by no later than 1st July 2021. Myanmar is now drafting IP laws such as the Patent Law to ensure its IP legislation is more in line with the TRIPS.

Although the Burma Patents and Designs (Emergency Provisions) Act 1946 came into force in 1993, there is presently no law in operation on patents. This implies that production, commercial use and trade in goods is possible without permission of the companies (or individuals), including those who may already hold the relevant patents outside Myanmar. At present, patent owners can file a Declaration of Ownership with the Myanmar Registry Office of Deeds and Assurances. There is no substantive examination or formality examination and once the declaration is registered, it is advisable to publish a Cautionary Notice in a daily English language newspaper such as the New Light of Myanmar, advising the public of patents’ ownership. The Declaration will be valid for 3 months with a possibility of renewal. However, the Declaration of Ownership does not grant any patent rights and currently there are very few options to actually enforce patents in Myanmar.

It is also possible to register Technology Transfer Agreements with the Myanmar Scientific and Technology Research Department. Only registered agreements are enforceable in Myanmar. The law, however, doesn’t cover patent licensing.

As patent protection in Myanmar is extremely limited, in order to seek protection for their inventions, most entrepreneurs have to invest considerable amounts in protecting their trade marks through the means locally available in Myanmar so that they can at least protect their brand reputation and goodwill from illegal action related to their products and businesses.

New Draft Patent Law (year 2015)

Myanmar government has published the New Draft Patent Law in 2015 that is still pending for approval.  The Draft Patent Law will include procedural and substantive provisions found in patent laws of most Paris Convention countries (including EU countries).

According to the Draft Patent Law, in order to be patentable, the invention must:

(a) be novel (absolute novelty applies);

(b) involve an Inventive step; and

(c) be industrially applicable.

Those three requirements are in line with international standards of patent protection worldwide. The patent registration system will also be similar to many other ASEAN countries. Patent applications would be filed with the Myanmar Intellectual Property Office (IPO), the governmental body that shall be created to be in charge of all IP registrations in the country. Upon receiving the application, a preliminary examination of all patent applications will be performed by the IPO, and publication of the patent application will follow if the patent application is considered complete and does not contain information contrary to national security or public safety.

The IPO might delay publication of the patent application until it receives clearance from the responsible ministry. For patent applications determined to be contrary to national security or public safety, the responsible ministry shall have the right to transfer any and all rights in the patent application to the Myanmar government. The ministry however needs to provide sufficient compensation to the applicant.[1]

The Draft Patent Law will also provide an opposition period of 3 months, starting from the date when the patent application was published. The opposition period is followed by substantive examination and subsequent grant of patent or rejection of the application.

Patents will be protected for 20 years subject to annuity fees. However, regarding essential pharmaceuticals the Myanmar government will have the right to issue compulsory licenses, which means that the patent owner cannot object to other companies receiving the right to produce these pharmaceuticals. These licenses, however, would be subject to royalties.  According to the Draft Patent Law, essential pharmaceuticals are defined as those pharmaceuticals considered essential to the public, national security, or development of the country, or those pharmaceuticals which provide a monopoly to the patentee that is considered detrimental to national interest.[2]

In case of patent infringement, patent owners will have the right to pursue civil litigation and criminal prosecution. Additionally, patent owners may apply to relevant courts for preliminary injunctions.

Enforcement 

Currently, in the absence of a functional patent law, it is extremely difficult to enforce patents in Myanmar. Under the Specific Relief Act (1877) and under the Merchandise Mark Act (1889), there are provisions which might grant enforcement, however, it is advisable to discuss these options with local IP lawyers to see whether they are applicable to the specific case. It is also advisable to discuss patent protection strategies with an IP expert before bringing technology to Myanmar.

In order to seek protection for their products, companies can consider emphasizing trade mark protection in Myanmar to protect their brand reputation and goodwill from illegal action related to their business, since brand protection is currently more developed in Myanmar.

South-East Asia IPR Helpdesk

SEA IPR

The South-East Asia IPR SME Helpdesk supports small and medium sized enterprises (SMEs) from European Union (EU) member states to protect and enforce their Intellectual Property Rights (IPR) in or relating to South-East Asian countries, through the provision of free information and services. The Helpdesk provides jargon-free, first-line, confidential advice on intellectual property and related issues, along with training events, materials and online resources. Individual SMEs and SME intermediaries can submit their IPR queries via email (question@southeastasia-iprhelpdesk.eu) and gain access to a panel of experts, in order to receive free and confidential first-line advice within 3 working days.

The South-East Asia IPR SME Helpdesk is co-funded by the European Union.

To learn more about the South-East Asia IPR SME Helpdesk and any aspect of intellectual property rights in South-East Asia, please visit our online portal at http://www.ipr-hub.eu/.

[1] Baker & Mackenzie: http://f.datasrvr.com/fr1/315/70539/Myanmar_Publishes_Draft_Patent_Law.pdf

[2] Ibid.

Terroir IPR Part 1: Geographical Indications and IP Protection for Your Appellation of Origin

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The wine industry is characterised by a wide variety of producers, often very much linked to specific grapes, blends and terrains. The European Union has put in place a system of Geographical Indications (GIs), that are used to distinguish the origin of goods, often also linked to the quality and reputation of a purple-grapes-vineyard-napa-valley-napa-vineyard-45209specific product. In China, a large market for European wines, these GIs are as important, and once registered they are protected as trademarks. Nonetheless, as with trade marks, it is important to monitor the market for infringement of GIs and act against illegitimate users of your collective mark.
Wine has been classified by region for almost the entirety of its long and varied history, the Ancient Greeks stamped amphorae with the seal of the region they came from, and references to wine, identified by region are found throughout the Bible and other religious texts. Whilst this tradition of geographical identification continued throughout Antiquity and the Middle Ages, it was only in 1716, with the introduction of the Chianti region in Italy, protected by edict of the then Grand Duke of Tuscany.

Today, the concepts of appellation and terroir have spread around the world. France protects over 300 Appellation d’Origine Contrôlée (AOC)[1], and Italy over 400 Denominazione di Origine Controllata e Garantita (DOCG) and Denominazione di Origine Controllata (DOC) wines[2]. With similar systems and numerous varieties are grown and protected throughout Europe and the rest of the world, appellation of origin plays an important role in the classification of wines, as well as consumer decision making. As a result, the protection of the integrity of this classification system is of paramount importance to producers, distributors, retailers, and of course, consumers.

Protection of the appellation of origin of a product falls to the legal principles associated with so called Geographical Indications (GIs). Similar to trade marks, GIs are distinctive signs used to distinguish the origin of goods, thereby enabling consumers to accurately associate a particular quality or reputation with the products in question.

GIs differ from trade marks however in that rather than protecting a single producer’s rights, they protect a whole class, based on their geographical location and the production methods used. GIs therefore ‘belong to all those resident producers who comply with the specific by-laws and regulations set to ensure that the consumer ‘link’ between the quality /reputation of a product and its place of origin is maintained.[3]

Continue reading “Terroir IPR Part 1: Geographical Indications and IP Protection for Your Appellation of Origin” »

How to Protect Trade Secrets in China: a Case Study

fgjMore and more European companies are considering bringing their cutting-edge technology to China, as the market offers many promising opportunities for European high tech companies. However, despite the fact that Chinese IP regime has improved a lot, IP infringements are still commonplace in China and, thus, European SMEs, wishing to successfully  do business in China, need to consider all the possibilities of how to protect their IP in China. Today’s blog post explores the often neglected, but a very useful  way of protecting IP in China – the trade secrets.

Nearly all businesses in all industries and sectors possess trade secrets. Trade secrets are a valuable and highly useful form of intellectual property that are nevertheless often undervalued and overlooked by their owners. This is not least the case in the service sector where the relative value of trade secrets as intangible assets can be extremely high. For example, a logistics firm may not hold any patents or few trade marks and substantial copyrights, but the value of its operations could heavily derive from information contained within client lists and standard procedures.

A considerable advantage for trade secrets is that unlike some other forms of IP rights, such as patents and copyrights that have a finite term, trade secrets can theoretically enjoy an infinite term of protection so long as the trade secret remains just that – a secret. The main difference between protecting something by patent or as a trade secret is that, while technical information is publicly disclosed in patents, it is kept away from the public eye in trade secrets. A trade secret can last forever as long as the confidentiality measures that protect it continue to work. An invention patent typically expires after 20 years.

On the other hand, legal protection of trade secrets is easily lost. Once the information becomes public information, it no longer enjoys any legal protection. As a result, prevention is the golden rule when it comes to protecting your trade secrets, because once your secret is out, there is usually very little that you can do about it. China, like most other countries, provides a legal framework for the protection for trade secrets, and the law provides for remedies in the event that your trade secrets are unlawfully disclosed. Continue reading “How to Protect Trade Secrets in China: a Case Study” »

Patent Protection in South-East Asia

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patentWith today’s blog post we continue our Back to the Basics theme and take a look at patent protection in South-East Asia. This blog post  will explain the patent application process and discuss alternative and oftentimes faster routes for obtaining patents in South-East Asia via using the Patent Cooperation Treaty or benefiting from ASEAN Patent Examination Cooperation. 

A patent is an exclusive right granted for the protection of new inventions, which are products or processes offering new technical solutions or providing new ways of doing something. The product or process in question must be applicable in industry to be eligible for protection. Patent protection lasts for a limited period of time, usually 20 years. A patent is a territorial right and has its effects only within the national boundaries of the country for which it is granted. It means that patents registered in Europe have no legal effect in any South-East Asian country.

A patent provides protection for the invention to the owner of the patent, meaning that the invention cannot be commercially made, used, distributed or sold without the patent owner’s consent. Patent rights are enforceable in courts and obtaining patent protection is therefore a crucial aspect of business in the modern global economy. It is vital that SMEs apply for patent protection in the South-East Asian countries of interest to their business, especially if the launch of their respective produc on the South-East Asian market is on the horizon. Continue reading “Patent Protection in South-East Asia” »

New Developments in Vietnamese IP Regulations on Internet Domain Names

shutterstock_167099189In today’s blog post we take a  look at the recent developments in Vietnamese IP regulations concerning Internet Domain names and analyse the implications of these regulations to the European SMEs. 

On the 8 June 2016 the Ministry of Information and Communication and the Ministry of Science and Technology issued a Joint Circular on the amendment and recovery of domain names which breach the law on intellectual property.  The Joint Circular introduces a set of administrative proceedings that are available under the Vietnamese Law on Intellectual Property, for companies experiencing internet domain name infringement disputes. Such measures include clear deadlines for infringers to ensure they stop their activities and return the domain names to their rightful owners, as well as steps that the authorities can take if the infringers refuse to obey these regulations. Continue reading “New Developments in Vietnamese IP Regulations on Internet Domain Names” »