For Start-ups expanding in South-East Asia, IP protection should be considered one of its core priorities. Today’s blog post has been kindly drafted for us by Ms. Chan Wai Yeng who is a patent specialist at Taylor Vinters Via LLC. Ms. Chan Wai Yeng will explore five common misconceptions regarding patenting – something which will be useful for any European Start-up looking to expand their business in South-East Asia, and Singapore in particular.
Intellectual property protection is an important consideration for most start-ups. The exclusive monopoly that comes with patents can help start-ups carve a niche in a crowded marketplace. Patents have always been important to some industries like Big Pharma where they develop expensive drugs in lengthy R&D processes. They have become increasingly important and relevant to new business models and technologies in the technology sector.
While the concept of a patent is fairly simple to understand, there are several misconceptions about patents which I’d love to clarify. It is important to clarify these misconceptions before embarking on the intensive patenting process.
Myth 1: A patent applicant has rights to enforce his pending patent
It is a common mistake amongst first time patentees to think that once their patent application has been filed, they will immediately gain the rights to sue third parties for infringement of their patent. Rights to bring about a suit for infringement are in fact only available to the patent owner after his patent has been granted. The Intellectual Property Office of Singapore indicates that patents filed in Singapore can take between 2 to 4 years to grant. Thus patentees should be aware that during the period when the patent is still pending, they are not able to take action against third parties that commercially exploits their invention.
Myth 2: A patent once granted cannot be challenged
After having spent several years applying for a patent, the patent office finally grants you a patent for your invention. You receive a patent certificate that is proudly displayed amongst other framed accolades on the wall of your office and your company is benefiting from the monopoly over the technology that has been patented.
Fast forward three years later and you discover a third party has been infringing your patent. You decide to sue for infringement and the other party counter sues for invalidity of your patent. During proceedings, new evidence shows that your invention is not new. The court invalidates your patent and dismisses your infringement suit.
Is the above dramatic turn of events a fictional conjecture or does it happen in real life?
The owners of Malaysian patent MY124182A found this out the hard way when they filed a patent infringement claim against a competitor in 2012. The Court eventually held that Malaysian patent MY124182A was not novel due to the existence of an earlier Japanese patent and declared that the Malaysian patent was invalid and therefore not enforceable. The plaintiff’s case was thus dismissed with cost at RM50,000.00 (approximately SGD 16,000.00) to be paid by the plaintiff to the defendants.
Patentees should be aware that a patent granted by the patent office can be challenged by third parties. If the challenge is successful, the patent can be revoked such that the patent is deemed never to have been granted.
Myth 3: A patent gives the patent owner the right to use his patented invention
A patent is strictly a negative or exclusionary right – the right to exclude others from commercially exploiting the patented invention. This principle is often misunderstood by patentees who think that owning a patent means that they are allowed to exploit their own invention.
Frequently, due to the large number of patents existing across the same technology and the overlapping nature of patent protection, a patent owner will often require licences from other patent owners before being able to freely using his own invention.
For example Company A owns the patent for a method of multiple sensor fitness data collection. Company B is the patentee of wearable fitness devices that uses data collected by multiple sensors. In order to use his own invention, Company B has to first obtain a licence from Company A since the wearable fitness device makes use of the multi sensor fitness data technology that has been patented by Company A.
Similarly, if a third party plans to manufacture wearable fitness devices that uses data collected by multiple sensors, he will need to obtain licences from both patent owners, Company A and Company B.
A simple diagram below shows the overlap in patent coverage between Company A’s patent and Company B’s patent:
Myth 4: A granted patent can be enforced globally across the world
Patent protection is territorial in nature. A Singapore patent grants exclusive patent rights to the patent owner within Singapore only.
To protect your invention in other countries, separate patent applications have to be filed in each country concerned. A budget of $12,000-$15,000 would be realistic for each additional patent filed. Since the cost of patenting increases proportionately with the number of patent applications filed, a patent applicant should have a filing strategy in place to ensure that its patent budget can be adhered to. Additional factors such as the need for translation to local language, requirement to authenticate documents can rapidly increase the cost of filing patents in other countries.
In addition, the timeframe from filing to grant of a patent varies depending on the patent office and can last up to six years for patent offices that do not yet possess a sophisticated patent examination system.
While there is no such thing as a worldwide patent, in some regions, countries have agreed to establish a regional patent office for protection of patents within a region. For example, instead of having to file separate patent applications in Europe, it is possible to file a single European patent application that is valid and can be enforced within 38 countries that are members of the European Patent Organisation. Similarly, it is possible to apply for a Eurasian Patent that is valid across 9 countries including Turkmenistan, Belarus, Tajikistan, Russia, Kazakhstan, Azerbaijan, Kyrgyzstan, Moldova and Armenia.
Myth 5: A granted patent prevents infringement
The task of protecting of your invention does not end once a patent has been granted. As the owner of a patent, you will be responsible for monitoring, identifying and taking action against infringers of your patent. Owning a patent for your invention does not automatically stop others from infringing it.
As a first step, a patent owner can put potential infringers on notice by marking products as patented or putting up related patent information of his products in promotional materials. A surveillance protocol should be put in place to identify possible infringement. Monitoring of market activities such as regular visiting of relevant trade fairs, research into competitors’ patent portfolio, internet searches and maintaining close communication with local distributors and licensees can help with early detection of infringing activities.
This article was first published on Asia Law Network. Please see the original article at: http://learn.asialawnetwork.com/2017/05/12/top-5-misconceptions-start-ups-have-about-patents-in-singapore/
Author’s Name: Wai Yeng Chan
Tel: +65 6299 0225
Mob: +65 9005 6354
Short Bio of the Author
Wai Yeng is an IP specialist with over nine years of experience working with clients ranging from startups to multi-national corporations and more recently on IP enabling projects funded by the EU. She is the Head of the Brands Practice at Taylor Vinters Via LLC, a specialist law firm that focuses on Intellectual Property (“IP”) and Technology Media and Telecoms (“TMT”).
Wai Yeng works closely with clients to develop IP protection and enforcement strategy within Singapore and the ASEAN region. In addition to brand protection, as a qualified patent attorney she works with companies to secure protection of their inventions through patent registration throughout ASEAN.
Her clients, in particular startups companies rely on her IP expertise to identify and manage IP including trademarks, patents and registered designs that is generated in the course of the client’s business. Wai Yeng also provides advice and support to IP rights owners in relation to the enforcement and border control of IP.
In anticipation of the new IP laws in Myanmar, Wai Yeng spent significant time in Myanmar between 2014 and 2015 building the IP capability of the largest foreign law firm in Yangon. During this period, she also managed the firm’s IP portfolio and worked closely with the corporate team to deliver the IP section of M&A due diligence.
Law Firm Profile
Taylor Vinters Via LLC (“TVV”) is a specialist boutique legal practice which was established in late 2012. In less than 5 years, the firm is recognised to be one of the top practices in TMT and IP law by The Legal 500 Asia Pacific and Chambers & Partners Asia Pacific.
TVV acts on behalf of its clients to protect, exploit and enforce intellectual property rights in Singapore and throughout the Asia Pacific region. Our lawyers combine deep understanding of technology with astute commercial judgement to deliver strategic legal solutions within the domain of IP.
In 2017, Via Law Corporation and Taylor Vinters LLP jointly announced a partnership whereby both firms had an equity in the other, and Via Law Corporation would change its name to Taylor Vinters Via LLC.