KIAsia Patent TM Office Assessment FINAL Feb2013

Table of Contents
Table of Contents ........................................................................................................................ i

List of Abbreviations .................................................................................................................ii
Table of Tables .......................................................................................................................... v
Table of Charts .........................................................................................................................vii
PART I ....................................................................................................................................... 1
I. PROJECT INTRODUCTION ............................................................................................ 2
II. PATENT AND TRADEMARK........................................................................................ 3
III. A COMPARATIVE REVIEW OF PATENT AND TRADEMARK OFFICES IN
SOUTHEAST ASIA ............................................................................................................ 11
IV. REGIONALIZATION OF IP PROCESSES ................................................................. 20
PART II.................................................................................................................................... 28
I. CAMBODIA .................................................................................................................... 29
II. INDONESIA ................................................................................................................... 40
III. LAOS ............................................................................................................................. 56
IV. MALAYSIA .................................................................................................................. 66
V. MYANMAR ................................................................................................................... 81
VI. THE PHILIPPINES ....................................................................................................... 86
VII. SINGAPORE.............................................................................................................. 101
VIII. THAILAND .............................................................................................................. 113
IX. VIETNAM ................................................................................................................... 127
X. PEOPLES REPUBLIC OF CHINA ............................................................................ 144
APPENDIX ............................................................................................................................ 160
List of Abbreviations
AEC
ASEAN Economic Community
AIC
Administration for Industry and Commerce, China
AIPA
ASEAN Intellectual Property Association
AMS
ASEAN Member State(s)
AOTS
Association for Overseas Technical Scholarship, Japan
APEC-EIP
Asia-Pacific Economic Cooperation - Economic Integration Program
ASEAN
Association of Southeast Asian Nations
ASEC
ASEAN Secretariat
ASPEC
ASEAN Patent Examination Cooperation Program
AWGIPC
ASEAN Working Group on Intellectual Property Cooperation
BDS
Business Development Services
BOC
Bureau of Customs, Philippines
BPTT
Bureau of Patents, Trademarks and Technology Transfer, Philippines
BRP
Patent Official Gazette, Indonesia
CIPITC
Central Intellectual Property and International Trade Court, Thailand
CIPO
Canadian Intellectual Property Office
CLMV
Cambodia, Laos, Myanmar and Vietnam
CMC
Case Management Conference
CNIPR
China Intellectual Property Net
CPIC
China Patent Information Center
CTMO
China Trademark Office
D/IPR
Department of Intellectual Property Rights, Cambodia
DG
Director General
DGIPR
Directorate General of Intellectual Property Rights, Indonesia
DIP
Department of Industrial Property, Cambodia
DIP
Department of Intellectual Property, Thailand
DISM
Department of Intellectual Property, Standardization and Metrology, Laos
DP
Dialogue Partner
DSI
Department of Special Investigation, Thailand
EC
European Commission
ECAP III
ASEAN Project on the Protection of Intellectual Property Rights
EPC
European Patent Convention
EPO
European Patent Office
EU
European Union
FDI
Foreign Direct Investment
GAC
General Administration of Customs, China
GDI
General Department of Industry, Cambodia
GDP
Gross Domestic Product
GHz
Gigahertz
GI
Geographic Indications
GPI
Global Patent Index
GR
Government Regulation
HR
Human Resource
IDR
Indonesian Rupiah
ii
IIPMS
Integrated Intellectual Property Management System, Philippines
IP(R)
Intellectual Property (Rights)
IPAS
Industrial Property Automation System, WIPO
IPC
International Patent Classification System
IPCM
Intellectual Property Corporation of Malaysia (before 2005)
IPD
Intellectual Property Division, DISM, Laos
IPDL
Intellectual Property Digital Library, Indonesia
IPDL(-Patents)
Industrial Property Digital Library (for Patents Project, Philippines)
IPEA
International Preliminary Examining Authority
IPNP
Intellectual Property National Policy, Indonesia
IPOPHL
Intellectual Property Office of the Philippines
IPOS
Intellectual Property Office of Singapore
IPSO
Intellectual Property Satellite Offices
ISA
International Searching Authority
IT
Information Technology
ITMS
Integrated Trademark System, Malaysia
JICA
Japan International Cooperation Agency
JPO
Japan Patent Office
K.I.Asia
Kenan Institute Asia
Kbps
Kilobit per second
KHR
Khmer Riel
KIP
Laos Kip
KIPO
Korean Intellectual Property Office
KOICA
Korean International Cooperation Agency
Mbps
Megabits per second
MDTCC
Ministry of Domestic Trade, Cooperative and Consumerism, Malaysia
MIME
Ministry of Industry, Mines and Energy
MOST
Ministry of Science and Technology, Myanmar
MOST
Ministry of Science and Technology, Vietnam
MOU
Memorandum of Understanding
MSTRD
Myanmar Scientific and Technological Research Department
MyIPO
Intellectual Property Corporation of Malaysia (after 2005)
MyISS
MyIPO Image Search System
NAST
National Authority for Science and Technology, Laos
NBI
National Bureau of Investigations, Philippines
NCIPR
National Committee on Intellectual Property Rights, Philippines
NOIP
National Office of Intellectual Property, Vietnam
OAG
Office of the Attorney General, Myanmar
OHIM
Office for Harmonization in the Internal Market
PACSYS
Patent Administration Computerized System, Philippines
PAM
Patent Administration Management
PANTAS
Patent and Trademark Administration System, Malaysia
PC
Personal Computer
PCT
Patent Cooperation Treaty
PCT-EDIS
PCT-Electronic Data Interchange Service
PDR
Peoples Democratic Republic, Lao
iii
PhilPAT
Philippine Patent Online Search System
PHP
Philippine Peso
PM
Patentmaps
PNP
Philippines National Police
POLRI
Indonesian National Police
PPNS
Indonesian Civil Servant Investigators
PPP
Purchasing Power Parity
PRB
Patent Re-examination Board, China
PVP
Plant Variety Protection
R&D
Research and Design
RI
Republic of Indonesia
RM
Malaysian Ringgit
RMB
Chinese Renminbi
S&E
Search and Examination
S&T
Science and Technology
SAIC
State Administration for Industry and Commerce, China
SIPO
State Intellectual Property Office of the Peoples Republic of China
SM
Service Mark, Philippines
STEA
Science, Technology and Environment Agency, Laos
THB
Thai Baht
TIPIC
Thailand Intellectual Property Information Center
TIPO
Taiwan Intellectual Property Office
TM
Trademark
TRIPS
Trade Related Aspects of Intellectual Property Rights
UK-IPO
United Kingdom Intellectual Property Office
UPOV
International Union for the Protection of New Varieties of Plants
USAID
United States Agency for International Development
USD
United States Dollar
USPTO
United States Patent and Trademark Office
VND
Vietnamese Dong
WAN
Wide Area Network
WIPO
World Intellectual Property Organization
WPPT
WIPO Performances and Phonograms Treaty
WTO
World Trade Organization
This report was produced by a research team at the Kenan Institute Asia with Richard
Bernhard and Paul Wedel as supervisors and lead writers and Paul Wedel as editor.
iv
Table of Tables
Table 1 Availability of Utility Model in Asian Countries ......................................................... 8
Table 1 IP Office Financial Autonomous ................................................................................ 11
Table 2 Average Time Expected to Take to Register A Patent ............................................... 15
Table 3 Average Time Expected to Take to Register a Trademark ......................................... 17
Table 4 Enforcement and Dispute Settlement ......................................................................... 18
Table 5 Number of Examiners by Highest Degree Obtained .................................................. 33
Table 6 Number of Examiners by Years of Experience .......................................................... 33
Table 7 Patent Application in Cambodia ................................................................................. 33
Table 8 Trademark Applications and Registrations in Cambodia ........................................... 36
Table 9 Number of DGIPR Staff in 2006 - 2010 ..................................................................... 42
Table 10 Number of Examiners by Educational Profile .......................................................... 43
Table 11 Number of Examiners by Years of Experience ........................................................ 43
Table 12 Patent applications received by year, broken down by domestic and foreign filers . 45
Table 13 Numbers of patent granted from 2003 to June 2010 ................................................ 46
Table 14 Number of patent refused and withdrawn from 2003 to June 2010 ......................... 46
Table 15 Number of Application per Patent Examiner ........................................................... 47
Table 16 Statistics on Application and Registration of Trademarks and Service Marks (2000 2010) ........................................................................................................................................ 50
Table 17 Number of Applications per Trademark Examiner .................................................. 52
Table 18 Industrial Property Division Personnel ..................................................................... 58
Table 21 Range of Salary Earned by Patent and Trademark Examiner .................................. 59
Table 22 Lao Patent Applications and Registrations ............................................................... 60
Table 24 Number of Trademark Applications and Registration (2005-2010) ......................... 61
Table 25 Number of Application per Trademark Examiner .................................................... 62
Table 26 Number of Staff by Type .......................................................................................... 69
Table 27 Revenue and Expenditure of MyIPO (RM) .............................................................. 69
Table 28 Number of Patent Examiners by Educational Profile ............................................... 70
Table 29 Number of Examiners by Years of Experience......................................................... 70
Table 30 Application and Granted Patents and Utility Innovations (2001 - 2010).................. 71
Table 31 PCT Applications Received from August 2006 to 2010 .......................................... 72
Table 32 Patents Granted Based on Field of Technology ........................................................ 72
Table 33 Number of Applications per Patent Examiner .......................................................... 74
Table 34 Trademark Application and Registration in Malaysia .............................................. 76
Table 35 Number of Applications per Trademark Examiner .................................................. 77
Table 36 Number of staffs in the IP section ............................................................................. 82
Table 37 Statistics on Application and Registration of Trademarks (2005 - 2010) ................ 83
Table 38 Number of IPOP staff................................................................................................ 89
Table 41 Applications and Granted Inventions, 2000 - 2010 .................................................. 91
Table 42 Applications and granted utility models from 2005 to 2010 .................................... 92
Table 44 Trademark Application and Registration by Origin ................................................. 95
Table 45 Refused and Withdrawn Trademark Applications by Origin ................................... 96
Table 46 Number of Application per Trademark Examiner .................................................... 97
v
Table 47 Annual IT Budget during 2007-2009........................................................................ 99

Table 48 IPOS Income and Expense (USD) .......................................................................... 102
Table 49 Applications and Granted Patents (2005 to 2009) .................................................. 104
Table 50 Top Five Domestic and Foreign Filers According to Patent Application in 2009 . 104
Table 51 Patents granted based on International Patent Classification System (IPC) ........... 105
Table 52 Number of Trademark Applications and Registrations in Singapore ..................... 107
Table 53 Percentage of Local Based and Foreign Based Trademark Application ................ 107
Table 54 Budget of the DIP by Type (THB) ......................................................................... 115
Table 55 Revenue and Budget of the DIP ............................................................................. 116
Table 56 Number of Personnel in the DIP ............................................................................. 116
Table 57 Number of Examiners by Educational Profile ........................................................ 117
Table 58 Number of Examiners by Years of Experience ...................................................... 117
Table 59 Number of Patent Application in Thailand ............................................................. 118
Table 60 Number of Patent Registration in Thailand ............................................................ 118
Table 61 Statistics of Petty Patent Application and Granted ................................................. 119
Table 62 Trademark Application and Registration in Thailand ............................................ 122
Table 63 Type and Number of Staff in the NOIP .................................................................. 131
Table 64 Number of Examiners by Educational Profile ........................................................ 132
Table 65 Number of Examiners by Years of Experience ...................................................... 132
Table 66 Applications and Granted Patents (2001 2010) ................................................... 133
Table 67 Applications and Granted Utility Solutions (2001 2010) .................................... 133
Table 68 Number of Applications per Patent Examiner ........................................................ 135
Table 69 Number of applications by type (foreign and domestic) from 2000 onward.......... 138
Table 70 Number of Applications per Trademark Examiner ................................................ 139
Table 71 Applications and granted patents (2006 2010) .................................................... 148
Table 72 Distribution of domestic and foreign patent applications according to service and
non-service in 2009 ................................................................................................................ 149
Table 73 Top five domestic and foreign enterprises according to patent application in 2009
................................................................................................................................................ 150
Table 74 Total Trademark Applications and Registration by Residents and Non-residents
(2000-2009)............................................................................................................................ 153
vi
Table of Charts
Chart 1 Patent Examiner Workload ......................................................................................... 12
Chart 2 Patent Applications per Examiner............................................................................... 13
Chart 3 Patent Examiner Educations ....................................................................................... 13
Chart 4 Patent Examiner Years of Experience ........................................................................ 14
Chart 5 Trademark Examiner Workload.................................................................................. 15
Chart 6 Trademark Applications per Examiner ....................................................................... 16
Chart 7 Trademark Examiner Educations ................................................................................ 16
Chart 8 Trademark Examiner Years of Experience ................................................................. 17
Chart 9 Organization Chart ...................................................................................................... 32
Chart 10 Cambodia Patent and Utility Model Procedure ........................................................ 35
Chart 11 Numbers of patent application based on country (1991-2009) ................................. 45
Chart 12 Procedure of Patent Application ............................................................................... 48
Chart 13 Procedure of Trademark Application (Based on Law No.15 Year 2001 on
Trademark) ............................................................................................................................... 51
Chart 14 Organization Chart of DISM..................................................................................... 57
Chart 15 Lao Trademark Procedures ....................................................................................... 63
Chart 16 Structure of Intellectual Property Corporation of Malaysia ...................................... 68
Chart 17 Top Five Countries for Patent and Utility Innovation Applications in 2009 ............ 73
Chart 18 Patent Registration Procedure in Malaysia ............................................................... 75
Chart 19 Malaysia Trademark Application Procedure ............................................................ 77
Chart 20 Structure of the Intellectual Property Office of the Philippines................................ 89
Chart 21 Patent Application Flowchart .................................................................................... 94
Chart 22 Philippines Trademark Procedures ............................................................................ 98
Chart 23 Five Leading Countries Filing Patent Applications in Singapore ........................... 104
Chart 24 Singapore Trademark Procedures ........................................................................... 110
Chart 25 Structure of the Thai Department of Intellectual Property ..................................... 115
Chart 26 Flow Chart of Patent for Invention Application ..................................................... 120
Chart 27 Trademark Procedure .............................................................................................. 124
Chart 28 Organization chart of the NOIP............................................................................... 130
Chart 29 Top Five Countries for Patent and Utility Solution Applications in 2010 ............. 134
Chart 30 Patent procedures .................................................................................................... 137
Chart 31 Vietnams Trademarks Registration Procedure ...................................................... 140
Chart 32 Structure of China Trademark Office ..................................................................... 147
Chart 33 Ten leading countries filing patent applications in China....................................... 149
Chart 34 Distribution of domestic patent applications according to service category in 2009
................................................................................................................................................ 150
Chart 35 Chinese Patent Granting Procedure (as of 2001) .................................................... 152
Chart 36 China Trademark Registration Procedures ............................................................. 156
vii
PART I
INTRODUCTION
&
COMPARATIVE REVIEW
I. PROJECT INTRODUCTION
Kenan Institute Asia (K.I.Asia), in collaboration with Chulalongkorn Universitys Intellectual
Property Institute and the law firm of Tilleke and Gibbins International Ltd., has updated and
expanded its Comparative Assessment Study of Patent Offices in Southeast Asia under a
joint project agreement with the USPTO. The study focuses on the process of trademark and
patenting registration across IP offices in Southeast Asia, and assesses each offices
operational and administrative capacity. The study includes the following ten countries:
Cambodia, China, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand,
and Vietnam.
The overall goal of the study is to help strengthen patenting and trademark registration
processes in the region by providing comparable country-specific information in the
following areas:
Most recent information on patent and trademark office performance, such as size of
the application backlog and the number of patent applications, grants, withdrawals
and rejections
Patent and trademark registration procedures, including the use of information

technology and search tools, intellectual property rights (IPR) enforcement
mechanisms, and recommendations for improvement
Compile a detailed profile on each countrys patent and trademark registration

process, including who actually examines the applications, whether or not there is
protection against conflicts of interest, how long each step in the process takes, and
who makes the key decisions in the process
Recommendations on ways to improve both national and regional intellectual

property (IP) processes
The methodologies of the study include desk research, questionnaire surveys to intellectual
property IP offices, interviews with IP officials, and a workshop. K.I.Asia hosted a workshop
for 30 participants comprising regional IP officials, private sector representatives, other
government officials and academia. Additional information was received through detailed
questionnaires completed by 12 regional IP law firms.
II. PATENT AND TRADEMARK

Patent
Patent Process
A patent gives an inventor exclusive rights over his invention. These exclusive rights include
the right to produce, use, sell, license, and import the invention during the term of the patent.
To secure a patent, an inventor must submit a patent application to the appropriate
government administrators for each jurisdiction in which he wants patent protection. This is
usually the national IP office or patent office. In most countries, the term of a patent is 20
years, beginning the day the patent application is submitted to a patent office. The date of
application is often referred to as the patent filing date. In return for the exclusive economic
rights patents provide, the patent applicant must disclose in his application to the patent office
how the invention works in a manner sufficient to allow others to replicate the invention.
Within the patent community, the entire patent application process is referred to as patent
prosecution.
A patent office, in most cases, conducts two examinations of the patent application a formal
examination and a substantive examination. The formal examination is simply a review of the
application to ensure all information and documentation required within an application has
been provided. At some point after the formal examination is complete, a substantive
examination takes place. A patent applicant wishing to secure patent protection in more than
one country generally has the choice between two different procedures: the Paris Convention
route or the Patent Cooperation Treaty (PCT) route.
The Paris Convention route is available to applicants who are nationals or residents of a
country that is party to the Paris Convention and who seek to secure patent protection in Paris
Convention member countries. The Paris Convention route provides that once a patent
application is filed in a Paris Convention member country, the applicant may claim the filing
date of this first patent application in subsequent applications to other Paris Convention
member countries, so long as subsequent applications are filed within a year of the first
application filing date. The applicant still has to file his applications using each national
language and follow the patent procedure rules of each country. The Paris Convention route
gives applicants time to decide on those jurisdictions in which they will ultimately seek
patent protection. In practice, the Paris Convention route is viewed as the most efficient route
when an inventor seeks patent protection in only a few countries. In principle, patent
prosecution starts without much delay and the patent is granted rather rapidly in the countries
where protection is sought, provided that the particular patent office is not suffering from a
backlog of patents.
The PCT route was introduced in 1973 and, similar to the Paris Convention route, is available
to applicants who are nationals or residents of one of the PCT Contracting States and who
want to secure patent protection in other PCT Contracting States. The PCT process has two
primary phases an international phase and a national phase.
During the international phase, an applicant submits his international patent application to a
patent office designated as a receiving office. The international application will be forwarded
to an International Search Authority (ISA) for prior art search and report. There are only a
3
few patent offices that have been designated ISAs, and they tend to be the largest patent
offices with substantial experience in examining and granting patents. In the international
patent application, the applicant designates those PCT member countries in which he would
like to seek patent protection. The patent office acting as the ISA produces an international
prior art search report and a written opinion (Chapter I) which is a preliminary and nonbinding opinion on whether the invention appears to meet the patentability criteria in light of
the search report results. Subsequently, the applicant may request an international preliminary
examination (Chapter II), which is a second evaluation of the potential patentability of the
invention, using the same standards on which the written opinion of the ISA was based. If the
applicant wishes to make amendments to the international application in order to overcome
documents identified in the search report and conclusions made in the written opinion of the
ISA, international preliminary examination provides the only possibility to actively
participate in the examination process and potentially influence the findings of the examiner
before entering the national phase. At the end of the procedure, an international preliminary
report on patentability (IPRP Chapter II) will be issued. The applicant may also file a PCT
application at the Receiving Office of the WIPO in Geneva, which is also designated an ISA.
The duration of the international phase varies from twenty-one to thirty-one months
depending on the specific services requested and the efficiency of the ISA, and can be
extended by individual countries by one or two months. At the end of the international phase,
the applicant enters the national phase and has to choose definitely the countries where he
will file the patent application. From this point, the PCT patent application is treated as any
other patent application, and will thus follow the national procedure for receiving a national
patent.
The purpose of the PCT route is to give the applicant an opportunity to obtain a good
assessment of his application through the international search report, the written opinion
and/or the international preliminary examination, before deciding to apply and pay requisite
application fees and other costs in multiple jurisdictions. Additionally, the long period
afforded by the PCT route gives the applicant more time to develop and market his invention.
Criteria to Receive a Patent

Given the powerful economic rights a patent provides, it is important to ensure the decision to
grant a patent be fully justifiable and properly made. Thus, the substantive examination looks
to ensure a patent application meets three strict tests novelty, inventive step, and capable of
industrial application.
The novelty criterion aims to validate that the invention is new. It is only a new invention,
which adds to the stock of technology, that warrants the exclusive economic rights that
patents afford. An invention already in existence and known to the public is by definition not
new and not, therefor, patentable. While novelty requires that an invention simply be new,
inventive step goes one step further. To past the test of inventive step, an invention must
embody a significant technological leap. That is, the invention must entail an adequately
significant advance in a field of technology whereby someone already familiar with the state
of the art of the technological field could not have easily made the invention. Lastly, as the
term of the final criterion implies, capable of industrial application requires that the
invention have some industrial use. The terms inventive step and capable of industrial
application may be deemed by certain countries to be synonymous with the terms nonobvious and useful, respectively.
Resources Required by a Patent Office

To adequately examine each patent application against the triple test criteria, a patent office
must be equipped with myriad resources. It must be able to staff enough patent examiners to
handle the number of patent applications it receives, it must assure that those examiners have
adequate training and familiarity with the fields of technology covered in patent applications,
and it must be able to provide the extensive resources necessary for those examiners to
perform their duties.
Within the last ten years, there has been a dramatic rise in the number of patent application
filings around the world. The escalation in applications has, in turn, dramatically increased
patent pendency that is, the time it takes a patent office to respond to patent applications.
Growing pendency periods have caused frustrated users to lose confidence in the patent
system. Countries that choose to conduct full examinations of patent applications should be
prepared to take the necessary steps to ensure their patent offices are adequately staffed.
Ideally, all patent examiners should have appropriate qualifications, requiring many years of
both academic and professional training. A patent examiner should have, at minimum, an
undergraduate degree in a scientific or engineering field, although masters degrees or higher
are preferable; indeed, some highly specialized technical areas such as genetic engineering
may require examiners with MS or PhD degrees. In order to maintain their technological
knowledge, examiners should regularly attend conferences and seminars in their
technological fields and regularly share their examination experiences with colleagues. They
should also handle a minimum of thirty patent applications per year in the same technological
field, in order to best cultivate expertise in one area.1 Patent examiners should also receive
extensive training in the IP Law of their country and in examination practices and procedures.
In addition to proper training, patent examiners require access to substantial electronic
resources. As previously mentioned, the tests of novelty and inventive step require patent
examiners to compare the invention for which patent protection is sought with any similar
prior inventions in order to ensure the invention is new and that it advances sufficiently
beyond the current state of technology. Within the patent community, the body of existing
technology is referred to as prior art, and the process of identifying the body of existing
technology relevant to any particular invention is called a prior art search. Given its relevance
to patenting prosecution, and to two of the three main criteria in particular, many consider the
prior art search the most essential step in the patent examination process.
In order to perform a prior art search, patent examiners must have access to all prior art
records. Toward this end, patent offices first search previously patented inventions. More
advanced patent offices have developed bibliographic and full-text electronic databases of
their issued patents, which may include patents pending examination and/or approval. Often,
these databases can be accessed freely through the internet (e.g. the USPTOs Patent FullText and Image Database, the EPOs Espacenet, and the JPOs IPDL). Additionally,
examiners review secondary, non-patent sources including scientific and technical
periodicals, conference reports and commercial scientific databases.
1
Comparative Assessment Study of Patent Offices in Southeast Asia, Kenan Institute Asia, 2007
Between patent and non-patent prior art sources, there are quite literally millions of
documents that patent examiners must review in order to identify relevant prior art for any
particular patent application. Thus, even with the aid of modern electronic tools, the search
for prior art can be a long and arduous process. To facilitate prior art searches, patent offices
have developed sophisticated search tools. For instance, the EPO has created a prior art
search system called EPOQUE, a query system that allows the EPOs examiners to
thoroughly and efficiently scour EPOs patent and non-patent databases. In order to assist
other countries in conducting prior art searches, the EPO has licensed use of the EPOQUE
system to a number of non-European countries, including China, Mexico and Brazil.
Recently, EPO introduced a new online product, the Global Patent Index (GPI), which makes
available collections from Espacenet and additional information, such as real-time legal status
data, enabling examiners to search more than 70 million patent records. Currently, examiners
must search a minimum of four office databases: EPO, USPTO, JPO, and SIPO. Thailands
Department of Intellectual Property (DIP) has suggested that a consolidated platform
comprising the four major databases would greatly facilitate smaller offices prior art
searches.
Access to electronic prior art databases necessarily requires patent offices to provide a
modern electronic infrastructure. This includes computers with processing speeds sufficient
to run large applications, networked computer systems, patent application management
software, and high speed internet access.
Lastly, modern patent offices should be equipped with automated Patent Administration
Management (PAM) systems. The basic functions of a PAM system are to provide
automation in filing, procedure management (i.e. a database management system), archiving,
publication, file inspection and access to publications. All these functions should be
accessible online to both internal and external parties. PAM systems provide transparency in
the patent prosecution process and aid in the efficient review and examination of patent
applications.
Impact of Poor Patent Administration

As mentioned, patents provide an incentive to invest in research and development, either
directly or through international technology flows. Businesses rely on patents to protect such
investments. If a competitor were to attempt exploitation of a patented technology, the patent
holder could file suit in a court of law to prevent such unauthorized use, seek damages and
prevent further infringement. While the ability of the patent holder to enforce his right is
generally tied to the capability and efficiency of the court system in the country in which the
patent right is granted, the strength and validity of a patent are first derived from the quality
of the examination performed.
A well-functioning patent administration requires substantial resources; without which, the
quality of patents issued will invariably suffer. While all patent offices have some sort of
prior art collection, such collections are relatively small in many of the worlds patent offices,
comprised mainly of the patents issued in that country alone. Often, patent offices have very
limited computer resources, if any, which impedes their ability to access internet or electronic
databases. Additionally, most patent offices have difficulties recruiting, training, and
retaining qualified patent examination staff. Patent offices attempting to perform prior art
6
searches with such limited resources cannot adequately compare new inventions to existing
technologies, resulting in the issuance of patents that do not warrant patent protection.
Furthermore, if a patent office is understaffed, the time it takes to issue a patent referred to
as patent pendency may be significantly extended. Given the quick pace at which
technology is developed and the fact that the term of a patent begins when the application is
submitted, the longer the pendency, the less time an inventor has to make use of his patent
once it is finally issued.
When a patent office issues poor quality patents or suffers from substantial periods of patent
pendency, assurance of the enforceability of its patents is reduced. In larger, more lucrative
markets, poor patent quality and high pendency periods mean a likely increase in patent
litigation, as competing firms, unwilling to give up key markets, rely on the courts to settle
their patent problems. This in turn may have a chilling effect upon other innovating firms,
dissuading them from researching technologies that might put them at risk of being sued. In
smaller markets, this chilling effect is even more pronounced, causing companies to
altogether avoid making risky and unprotected investments in local research and development
and/or technology transfer efforts. Of course, any reduction in research and development
investment, whether in a large or small country, will prove detrimental to long-run economic
growth.
As a means to reduce the costs and administrative burdens associated with patent
administration, some blocks of countries have banned together to establish regional patent
offices. These include the Eurasian Patent Organization (composed of the former Soviet
Republics, including Russia), the African Intellectual Property Organization (OAPI:
composed of French speaking African countries), the African Regional Industrial Property
Organization (ARIPO: composed of English speaking African countries) and the EPO, which
provides patent administration for 31 European countries. As established by international
agreements authorizing each respective regional patent office, these offices may perform all
patent administration tasks for their client countries, including receipt of application,
collection of fees, and performance of formal and substantive examinations. In order to best
maintain this framework, countries participating in a particular regional patent office must
have relatively similar substantive and procedural patent laws. Furthermore, the regional
patent office itself should utilize a common operational language (or languages).
Utility Models
Utility models, also known as industrial models and petty patents, differ from full patents not
only in the requirements imposed upon the potential owner, but also in the extent to which
their protection is recognized across the international IP community. According to a
Singapore IP publication, the utility model is not an accepted or clearly defined legal
concept[indeed] there is no global acceptance of the term[essentially] utility model
protection is accorded, cheaply and quickly, to inventions or innovations, many of which
cannot gain protection under the patent regime.2
Regardless of the differing names and specific natures of utility models across disparate IP
regimes, three general characteristics of utility models are common internationally:
1. All utility model laws confer exclusive rights to the proprietor of the right;
2
Would Singapore Benefit from a Utility Model Regime? Singapore Intellectual Property Academy, April 2005
2. Novelty is a criterion for registration in all utility model systems; and

3. Substantive examination is generally not a requirement for registration.3
However, most ASEAN countries do require substantive examination for registration.
Table 1 Availability of Utility Model in Asian Countries
Country
Cambodia
China
Hong Kong
India
Indonesia
Japan
South Korea
Laos
Malaysia
Philippines
Singapore
Taiwan
Thailand
UAE
Vietnam
Availability of
Utility Model
Yes
Yes
Yes
No
Yes
Yes
Yes
Yes
Yes
Yes
No
Yes
Yes
Yes
Yes
Examination
Protection
Formal +Substantive
Preliminary
Formal
7 years from filing

10 years from filing
8 years from filing
Formal+ Substantive
Preliminary
Formal + Substantive

7 years from filing
5 years from filing; two 5 year
extensions for a total of up to
15 years
7 years from filing
Formal
Formal
Formal
Formal
Formal; technical
examination may be
requested within 36
months of filing

Utility models serve to protect inventions (generally products, rather than processes or uses 4)
that may be unpatentable under the patent systems strict substantive examination
requirements, but which nonetheless are IP assets, representing significant investments (e.g.
time, resources, etc.) by their inventors. This protection is inferior to traditional patent
protection in both length and force of coverage (in Thailand, for example, protection for a
petty patent lasts ten years from the filing date, and infringers may be fined no more than
THB 200,000 and/or imprisoned for no more than one year, whereas patent protection lasts
for twenty years, and infringers may be fined no more than THB 400,000 and/or imprisoned
for no more than two years), and is more easily, cheaply and conveniently achieved (for a
Thai petty patent, neither substantive examination nor proof of inventive step is required).
Utility models, then, appear especially appropriate as a means of protecting fledgling firms
that invest in innovation by protecting these firms from would-be free-rider competitors who,
without utility model protection, would be able to copy the inventor firms novel
improvement without investing in its own R&D, thus expropriating the rightful reward of its
competitor.5
On the other hand, critics of utility models point to various drawbacks inherent to the
second tier protection they provide; central among these is the concern that second tier
protection via second tier examination necessarily entails poor quality, inefficient patents. For
3
Ibid.
http://www.sepaf.se/web/page.aspx?refid=141.
5
Would Singapore Benefit from a Utility Model Regime? Singapore Intellectual Property Academy, April 2005.
4
example, as no examination is required, one firm may potentially apply (knowingly or

otherwise) for utility model protection for a minor invention already patented by another
foreign firm. Some US companies in China complain that utility models are often asserted
against the rightful patent owner, causing them to go to the time and expense of defending
their rights in Chinese courts. Thailand has faced similar problems whereby petty patent
holders misuse their protections, attempting to enforce disqualified petty patent rights against
competitors. In order to address this issue, the Department of Intellectual Property (DIP) has
proposed that any petty holder who wishes to enforce his rights against a third party must first
request substantive examination to ensure that his petty patent meets all requirements (i.e.
whether the invention to which the petty patent is granted corresponds to the characteristics
of the petty patentable invention).
Nonetheless, at least within each country, and assuming sufficient laws are in place to
distinguish between different types of patents, utility models, and thus multi-tiered patent
systems, may well serve to benefit the system overall by establishing explicit differences in
both application requirements and protective rights between different level patents,
effectively clarifying owners expectations and promoting appropriate, efficient arbitration
processes to address infringement disputes.
Trademark
Trademark Process
As a distinctive word, phrase, symbol, sign, or combination thereof, a trademark provides
protection to its owner by ensuring his or her exclusive right to use it to identify and
distinguish the source of goods and services of one party from those of others. The protection
hampers infringement attempts and allows trademark owners to collect all goodwill and
financial profit from their goods and/or services. In most countries, the term of a trademarks
protection is 10 years, and can be renewed indefinitely, so long as the mark continues to be in
use.
Compared to the patent process, trademark registration is much less complicated and takes
less time to complete. Depending on each offices specific procedures, a trademark
application usually goes through one examination, typically called a substantive examination,
in which the mark is checked for distinctiveness, satisfying certain conditions, and
conforming to national laws. Before filing an application, applicants are encouraged to search
official trademark databases available within their country.
An applicant seeking trademark protection in more than one country may consider applying
through the Madrid system. The system was established under the Madrid Agreement (1891)
and the Madrid Protocol (1989), and is administered by the International Bureau of WIPO. A
new application filed at a national office that is a member of the Madrid system can designate
other member countries in which he seeks trademark protection. Each of the designated
member countries then determines whether, under its national trademark laws, the trademark
owner is entitled to an extension of protection. An owner of an existing trademark
registration in a member country can also request to extend protection to other member
countries as desired and properly designated. The mechanism allows for a single
administrative process in which a trademark application can be registered with one set of
fees, and renewed across all applicable jurisdictions.
Criteria to Receive a Trademark

To be granted protection, a mark must be distinctive in its own design, word, or both. It
cannot be the same as, or similar to, any marks already granted to other trademark owners for
the same or related goods or services. The mark must be unique to the extent that consumers
will not be likely to confuse it with other marks.
Resources Required by a Trademark Office

National trademark offices conduct searches and examinations to determine whether the mark
would conflict with the existing trademark rights of another party, using their own databases
of registered trademarks. Many offices also make these databases available to the public.
With numerous records incorporating graphics, a good trademark database system requires
sufficient storage capabilities. Furthermore, a well-created system must be efficient, meaning
that it can support the key functions of modifying, adding, deleting, searching, looking up,
and browsing entries. Beyond computers with processing speeds sufficient to run large
applications and high-speed internet access, a powerful server is also necessary to handle
large numbers of process requests in a timely manner.
More importantly, due to a rapid increase in applications (usually following positive
economic growth) there must be an adequate number of trademark examiners to process
increasing workloads. Trademark examiners require fewer educational qualifications and less
technical knowledge than do their counterparts in the patent office; a bachelors degree in a
non-science field is typically sufficient. In fact, some successful trademark offices employ a
number of competent examiners with only high school certificates. Nevertheless, computer
and English language skills are necessary to utilize the computerized equipment used for
searches and examinations.
Impact of poor trademark administration

Trademark protection is enforced upon registration approval, after which the protection
begins either retroactively on the filing date, if the country uses the filing date to start, or else
on the date of registration. Consequently, poor trademark administration, especially when the
latter case prevails, can lead to financial losses. Since a trademark is one of the most valuable
assets that identify the source of a product, a distinctive mark can help a product stand out
among competing goods. In those countries that use the first-to-file system, after a trademark
application is filed, it can take years for the trademark to be issued. During that time, the
applicant cannot stop others from using the trademark he has applied to register and protect.
Thus, a delay in the registration process could put the mark at risk of being claimed or
registered by a rogue third party, resulting in the loss of marketing investments and great
effort by the original applicant. In such countries, manufacturers are encouraged to register
appropriate marks before introducing their products to market. However, in many
jurisdictions that subscribe to the first-to-file system, certain protections for well-known
marks may be sought, regardless of whether they are registered.
10
III. A COMPARATIVE REVIEW OF PATENT AND TRADEMARK

OFFICES IN SOUTHEAST ASIA
Many ASEAN countries have made substantial progress in developing the capacity of their
patent and trademark offices since the review in 2007. With technical and financial assistance
from international donors such as the EPO, JPO, WIPO, and USPTO, countries such as
Malaysia, Philippines and Vietnam have significantly upgraded and improved their patent
administration systems. These improvements include procedural adjustments, enhanced IT
databases and infrastructures, and significant investments in human resources. IP
administration development efforts in Myanmar and Laos, however, still lag behind the rest
of ASEAN, and will greatly benefit from bilateral support from international donors. (See the
country reports.)
For many developing countries, inherent difficulties in securing necessary resources and
technical expertise are seen as partial explanations for their IP administrations slow
improvement. Limitations arising from their status as governmental agencies lead to a
number of barriers to heightened efficiency, especially the inability to increase manpower
and operating budgets. In fact, most of the ASEAN Member States (AMS) IP development
initiatives have faced similar obstacles. A comparative review of these offices capacities and
performance is provided below.
Autonomy of IP Offices
Autonomous IP offices have several advantages over government-operated offices. First, an
autonomous office can set a compensation structure that is more attractive to potential
employees currently in the private sector. Second, as there is no central government control
over the number of staff, offices that are financially sound can implement flexible hiring
policies. Third, the ability to manage its own budget and an absence of bureaucratic red tape
mean faster improvements can occur in key areas, such as IT and capacity building.
Only three IP offices in Southeast Asia are fully financially autonomous: Malaysia,
Philippines, and Singapore. Vietnams office is semi-autonomous, allowed to keep 25% of its
fee revenues. (Table 2)
Table 2 IP Office Financial Autonomous
Fully Autonomous
Semi-Autonomous
Not Autonomous
Malaysia
Philippines
Singapore
Vietnam
Cambodia
China
Laos
Indonesia
Myanmar
Thailand
Many of the self-sustaining offices are still under the supervision of a ministry. The
Malaysian Intellectual Property Organization (MyIPO) reports to the Ministry of Domestic
Trade, while the Intellectual Property Office of Singapore (IPOS) is under the Ministry of
Law. The National Office of Intellectual Property (NOIP) is under the Ministry of Science,
11
Technology and Environment, and does not have the freedom to hire freely or to
independently determine salary scales.
Financial autonomy for an IP office is not necessarily instant. Usually, a central government
provides subsidies, at a progressively reduced rate, to a newly autonomous IP office for at
least five years until the office can be self-sustaining via revenue-generating activities, such
as filing fees, book selling, and IP consultation.
Patent Offices
Chart 1 depicts three dimensions of information from each IP office: number of patent
applications (size of the bubble), number of patent examiners, and patent applications per
examiner in 2010. Ideally, an IP office with a large bubble size located at the bottom right
corner of the graph is equipped with an adequate number of patent examiners and should
have fewer problems with application backlogs. Accordingly, Malaysia and Indonesias
abilities to handle large numbers of patent applications are acceptable, with about 70-80
examiners handling 5,500-6,500 applications in 2010. Thailand, on the other hand, urgently
needs more patent examiners, with the number of applications per examiner at 255. (Chart 2)
Chart 1 Patent Examiner Workload
Patent Applications per

Examiner in 2010
300
-20
Thailand**; 5,857
apps
250
200
Philippines; 4,005
apps
150
100
50
0
-50 0
Cambodia; 104
apps
Laos; 20 apps
Vietnam; 3,666
apps
20
40
60
Number of Patent Examiners

Source: Kenan Institute Asia
12
Malaysia; 6,463
apps
Indonesia; 5,652
apps
80
100
Chart 2 Patent Applications per Examiner
Patent Apps per Examiner
300
255
7180
79 82
52 77
23
Philippines
Indonesia
Laos
2 10
Thailand*
52
Malaysia
100
53 69
Vietnam
200
Cambodia
Examiners,
Applications per examiner per year
Patent Examiners
Note: Note: Thailand * - Only invention patent applications of the 2009 data, excluding design and petty
patents. Number of examiners includes assistants. Data not available for Myanmar, China, and Singapore.
In order to perform their jobs well, patent examiners need to have relevant knowledge and
experience. Chart 3 shows that patent examiners in most countries, except Laos, have at least
a degree in science. Many of those who have a masters degree in art as their highest degrees
did their bachelors degrees in a science field.
Percentage of Number of Examiners
Chart 3 Patent Examiner Educations
100%
1.4
21.1
80%
6.3
2.5
11.9
28.0
2.8
5.7
20.8
6.0
4.0
60%
40%
20%
74.6
0%
Indonesia
B.S.
B.A.
100.0
Laos
M.S.
91.1
Malaysia
M.A
62.0
Philippines
Ph.D in Science
Noted: Data not available for Cambodia, China, Myanmar, and Singapore
13
88.1
Thailand
73.6
Vietnam
Ph.D. in Non-Sci
Chart 4 Patent Examiner Years of Experience
Vietnam
3.8
67.9
Thailand
17.0
64.3
Philippines
16.0
39.2
Laos
15.5
7.0
6.0
34.0
40.5
50.0
Indonesia
9.4
35.7
44.0
Malaysia
1.9
5.1
15.2
50.0
19.7
57.7
Cambodia
100.0
0%
< 5 years
20%
40%
60%
80%
Percentage of Total Number of Examiners
5-10 years
10-15 years
15-20 years
100%
> 20 years
Noted: Data not available for Myanmar, China, and Singapore

Many years of experience generally equate to highly skilled examiners, who should be able to
work faster, and with greater accuracy, than their juniors. These senior examiners are also
able to train junior staff. Chart 4 shows that Indonesia and Philippines have higher
percentages of highly skilled examiners (more than 60% of the total number of examiners
have more than ten years of experience), while the majority of patent examiners in Cambodia,
Thailand and Vietnam have less than five years of experience. On the contrary, however, just
because examiners have more years of experience does not necessarily mean they are more
qualified. Some experienced examiners are out of touch with recent trends in technology,
especially in newly emerging fields. New hires with relevant training are recommended for
work in these new technologies.
Table 3 reveals different perspectives between IP offices and practitioners on the average
time it takes to obtain a patent registration. Only Indonesia and Malaysia provided an actual
calculation of the average time. On the IP office side, the process time ranges from 2 to 5.61
years, whereas in the view of practitioners this takes 2-8 years.
IP offices should collect detailed data on the time required for each step of the procedure in
order to alleviate backlog problem most effectively (i.e. in high priority activities along the
process chain).
14
Table 3 Average Time Expected to Take to Register A Patent

IP offices
3 years
5.61 years via normal process;
4.92 years via PCT
Practitioners
Over 3 years
3-5 years
7-8 years
More than 5 years
4-6 years
Myanmar
Philippines
4 years
1.6 years via fast-track basis without
objections; 5.41 years via Paris Convention;
2.15 years via PCT
None
4-5 years
Singapore
Thailand
3-4 years
3 years
3-6 years
5-6 years
Vietnam
2-3 years
2-3 years
Cambodia
China
Indonesia
Laos
Malaysia
None
Source: Results of IP office and practitioner questionnaires
The differences in the expectations of the two groups appear to derive from different methods
of calculating the time needed to register a patent as well as different methods of collecting
the data. In general the data collection by the IP Offices is likely to be more comprehensive
and systematic than the data collection by the practitioners.
Trademark Offices
Similar to the chart of patent examiner workloads, an IP office with an adequate number of
examiners to handle a heavy workload is located on the bottom right corner of the graph.
Chart 5 and Chart 6 indicate that Vietnam has the lowest number of trademark applications
per examiner in 2010. Indonesia, despite a large number of applications, will likely be able to
manage the workload better than Thailand and Malaysia.
Chart 5 Trademark Examiner Workload
Trademark Applications per

Examiner in 2010
2,500
2,000
Thailand; 37,656
apps
1,500
Malaysia; 26,366
apps
1,000
500
0
-10
Cambodia; 3,969
apps
Indonesia; 47,794
apps
Laos; 2,417 apps Philippines, 16,844

apps
10
20
30 Examiners
40
50
Number
of Trademark
Vietnam; 27,923
apps
60
70
80
Note: Size of the bubble = Number of applications. Data not available for Myanmar, China, and Singapore
15
Examiners,
Applications per examiner per year
Chart 6 Trademark Applications per Examiner
Trademark Examiners
TM Applications per Examiner
3,000
2,092
2,000
794
1,000
5
0
1,465
1,111
604
4
18
43
580
29
18
443
63
Note: Data not available for Myanmar, China, and Singapore.

Unlike patent examiners, there is no requirement regarding the technical educational

background for trademark examiners. Typically, a bachelors degree in a non-science field is
sufficient. In some countries, like Indonesia and Malaysia, high school graduates are
employed as trademark examiners. Masters degrees are often not required, but many
Indonesian, Thai and Vietnamese trademark examiners earned them regardless. (Chart 7)
Chart 7 Trademark Examiner Educations
Percentage of Number of Examiners
100%
27.9
80%
60%
7.9
57.1
11.1
88.9
100.0
0.0
58.1
55.6
40%
34.9
20%
0%
14.0
Indonesia
High School
Laos
B.S.
Malaysia
Thailand
Vietnam
B.A.
M.S.
M.A
Noted: Data not available for Cambodia, China, Myanmar, Philippines and Singapore
16
In terms of years of experience, the percentage of trademark examiners with less than 10
years of experience is significant for Cambodia, Laos, Malaysia, Philippines, and Vietnam.
Trademark examiners in Indonesia and Thailand are highly experienced. (Chart 8)
Chart 8 Trademark Examiner Years of Experience
Vietnam
47.6
Thailand
Philippines
11.1
28.6
33.3
7.9
27.8
7.1
60.7
12.7
27.8
10.7
Malaysia
3.2
14.3
94.4
Laos
5.6
75.0
Indonesia
25.6
25.0
16.3
Cambodia
27.9
30.2
80.0
0%
< 5 years
20.0
20%
40%
60%
80%
Percentage of Total Number of Examiners
5-10 years
7.1
10-15 years
15-20 years
100%
> 20 years
Noted: Data not available for Myanmar, China, and Singapore

Table 4 shows different perspectives between IP offices and practitioners on the average time
a trademark registration is expected to take. While the expectations of the groups are
relatively in line with one another, the differences appear to derive from different methods of
calculation or different ways of collecting the data.
Table 4 Average Time Expected to Take to Register a Trademark
Countries
IP offices
Practitioners
Cambodia
China
Indonesia
Laos
3 months
Within 3 years
14 months
6 months
Around 4 months
3-5 years
1-2 years
6 months
Malaysia
17-24 months
Myanmar
Philippines
Singapore
Thailand
Vietnam
1 months
9.99 months
6-8 months
12-18 months
15-18 months
2-3 years;
12-18 months without objections
4-6 weeks
18-24 months
4-12 months
10-18 months
15-20 months
Source: Results of IP office and practitioner questionnaires
17
Enforcement and Dispute Settlement

Most of the IP offices have responsibilities that include drawing up or at least advising on
IPR enforcement policy. Typical roles related to IP enforcement for IP office staff include
providing consultation and expertise to courts and coordinating with other enforcement
bodies on IP violation complaints. In some offices, such as Indonesia and Vietnam, officials
are also involved in investigation of infringements, together with other enforcement agencies.
Most of the offices, except in Malaysia and Myanmar, perform a mediating function in
dispute settlement.
Table 5 Enforcement and Dispute Settlement
Enforcement
Dispute Settlement
Cambodia
Providing consultation to enforcement bodies.
Mediation
China
SIPO issuing Measures on Patent Enforcement
Indonesia
Investigating complaints. Providing expertise to

the court.
Provide expert witness.
Laos
Receiving complaints and communicating them

to the responsible authorities.
Mediation
Malaysia
Myanmar
Philippines
Mediation
Singapore
Policy-making and drafting IP legislation.
Mediation
Thailand
Coordinating with other enforcement agencies.

Providing consultation
Mediation
Vietnam
Coordinating with other enforcement agencies.

Providing expertise to the court. Investigating
infringements.
Mediation
Recommendations
Similar assistance needs from international organizations are observed in almost every office
in our study. A short-term assistance plan should focus on technical trainings in search and
examination. Moreover, ability to access comprehensive IP databases at cheaper costs can
quickly reduce the patent and trademark application backlogs and speed up the granting
process. Recommendations for each of the capacity components are summarized below.
Trainings for Examiners - Junior and inexperienced examiners need basic training in search
and examination. More experienced examiners may benefit from sessions on newly emerging
fields, such as nanotechnology, biotechnology, and computer-related technology. These
technology update sessions should be provided by firms within the field with financial
18
support from international donors. Train-the-trainer workshops will be beneficial and will
help lessen the ASEAN IP offices dependency on international experts.
More Examiners - Trademark offices face more problems regarding the number of
examiners than patent offices. The problem is most severe for Malaysia and Thailand and, to
a lesser degree, for Vietnam.
Database - IP offices in all countries in this study would benefit from assistance in building
better domestic IP databases and information management systems. Cheaper subscriptions to
more powerful international databases, such as EPOQUE NET and GPI, were reported to
have significantly improved Philippines patent granting process. A less expensive central
and comprehensive IP database system would help the ASEAN offices avoid duplication
across multiple platforms and would substantially improve the offices efficiency.
IT problems (internet, servers, computers) - A small number of IP offices still do not have
access to hi-speed internet. For others, servers dedicated to large IP databases are
recommended.
Trainings for Patent Agents - Trainings to create capable and skilled patent agents are
urgently needed since the problem of incomplete or poorly prepared applications is always
listed on top of the important problems list of every IP office.
Language - In order to ensure effective and efficient review of foreign application results,
and to effectively utilize ASPEC, an examination results-sharing system, examiners should
receive English language training.
Financial Autonomy - A potential solution to various aforementioned problems, financial
autonomy would allow flexibility in hiring, equipment purchasing, planning, and managing
application backlogs.
A long-term assistance plan for the ASEAN patent and trademark offices should aim to do
several things: it should 1) enhance the competency of national IP examiners to conduct their
own trainings on search and examination; 2) encourage financial autonomy of IP offices; and
3) provide technical help on the creation of an ASEAN-based IP portal.
Assistance from international donors cannot thrive without cooperation from the ASEAN IP
offices. The ASEAN countries, beyond striving for a balance between IP protection and rapid
R&D development, must have the political will to improve their systems, and a perspective
on the potential benefits of local research and development, together with a plan to encourage
more creativity and innovation. Deficiency in English language competency should be
addressed immediately so that it will not become a hindrance to technical knowledge
accumulation provided through trainings by international experts. Strong English skills will
also mean less time spent on search and examination procedures. Apart from these, a clear
and well-written examination manual and guideline will decrease ambiguity in the
application process for both examiners and applicants. Trainings for patent agents are also
necessary as well-written applications will further ease examinations.
19
IV. REGIONALIZATION OF IP PROCESSES

Motivations and Objectives of Regional Cooperation on IP
Since 1996, the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC)
has been responsible for leading regional efforts toward an enhanced and integrated IP
system. In order to realize this system, in line with the ASEAN Economic Community
Blueprints second strategic goal of a highly competitive economic region, the Working
Group was to carry out the objectives of the ASEAN IPR Action Plan 2004-2010. This plan
listed the following objectives:
To help accelerate the pace and scope of IP asset creation and

commercialization inside and outside ASEAN, and the formation of crossborder linkages in science and technology (S&T) fields and research and
design (R&D) activities.
To develop and harmonize an enabling IP registration, protection and
enforcement framework of policies and institutions in the region.
To promote greater public awareness, and the building up of human resources
and institutions relating to IP and IPRs in ASEAN.
To further empower national IP offices in the collaborative provision of
Business Development Services (BDS) in the support of the above
objectives.6
With support from international IP partners, the AWGIPC set out to work with ASEAN
Member State (AMS) offices to create a central online platform for the region. This platform
would allow those offices to access IP-related information and resources, to facilitate
knowledge-sharing among offices (e.g. on best practices and policy experiences), to promote
regional accession to major international IP treaties, and to encourage regional cooperation
on emerging IP issues and legislation.7
Regional Dialogue Partners (DPs) comprise international IP offices and organizations that
have committed to assisting ASEAN achieve regional IP integration through enhanced
cooperation and improved office policies and practices. Historically, major IP organizations
working with ASEAN were the USPTO, EPO, JPO, and WIPO. The Chinese and Korean IP
offices have recently provided further support to the AWGIPC.
Considering the important role strengthened IP regimes are expected to play in promoting
local creativity and innovation, enhancing foreign direct investment, and ultimately ensuring
sustainable development throughout the ASEAN Community, the international partners
suggest that it is crucial that efforts toward regional IP improvements and integration be
maintained and bolstered. This chapter will address regional progress made since K.I.Asias
2007 report, key challenges, and recommendations on enhanced future efforts.
Regional Efforts Thus Far

6
7
ASEAN INTELLECTUAL PROPERTY RIGHT ACTION PLAN 2004-2010

ASEAN Economic Community Factbook, Jakarta: ASEAN Secretariat, February 2011
20
The AWGIPC has been relatively successful in getting the conversation on IP improvement
started throughout the region. The Working Group has hosted workshops and seminars on
various IP topics highlighted in the work plan, and reports it has formed a strong network of
regional IP officials. This network has fostered a supportive environment in which country
office representatives can present specific obstacles and challenges to be collectively
addressed by all participating member states. The Working Group reports that this system is
beneficial as it boosts offices morale, facilitates incremental process enhancements and
strengthens cross-border enforcement efforts.
According to a representative of the Working Group, implementation of the 2004-2010 Work
Plan has made gains toward regional integration that are more symbolic than tangible. Two
important exceptions to this assessment, however, should be noted:
The ASEAN Patent Examination Cooperation Program (ASPEC) is a system

successfully put into operation since June 15, 2009 whereby participating AMS can
refer to patent search and examination (S&E) results from other AMS in order to
facilitate their own substantive reviews. An office reviewing a patent application is
not obliged to accept the foreign approval, and must ultimately decide whether or not,
in accordance with its own national laws, before it will grant the patent; nonetheless,
the system has improved not only process efficiency (e.g. faster turnaround times),
but also S&E quality. All AMS with established patent offices (all but Myanmar and
Brunei) currently participate in the ASPEC program.8
The ASEAN IP Portal, to be launched in 2012, is currently under development. The
Portal will ultimately serve AMS stakeholders as a convenient central database of all
IP activities, achievements and information throughout the region, enhancing
knowledge-sharing efforts and regional transparency.9 The Working Group envisions
a system whereby a different AMS office will be responsible for managing and
updating the system each year.
These two initiatives should prove both useful and tangible.
Challenges Faced
Efforts aimed at regional IP integration face various significant challenges. Primary among
these are:
Disparate office capabilities

Widely different legal, social and economic environments
Insufficient communication between the IP offices and the Working Group
Insufficient communication between DPs and the Working Group
Duplicative training by various DPs
Difficulties in designing trainings that address specific country-level needs while
encouraging regional integration
http://www.ipos.gov.sg/NR/rdonlyres/9C70CB38-9FF7-4663-A5A071B65EBAC6DB/7957/Noticeprocedures2.pdf
9
http://www.ecap-project.org/Support_to_the_Setting_up_the_ASEAN_IP_Portal
21
Reduced availability of donor funding for IP office training
These challenges will be considered throughout the following analysis of regionalization

objectives, and of stakeholder recommendations toward achieving those objectives.
Regional Objectives Moving Forward

AWGIPC delegates agreed upon a finalized IPR Action Plan 2011-2015 at the groups 36th
meeting in July 2011 in Bali. The plan was released in September, and highlights a number
of actions as strategic priorities, including:
Reduction of the average processing time for trademarks

Development of a Regional Classification of Ethnic Goods and Services
Capacity building for office and external stakeholders
Further development of regionally integrated systems (e.g. ASPEC and the IP Portal)
The creation of a regional database of copyrights
Region-wide accession to international IP treaties and agreements (particularly, the
Madrid Protocol on Trademarks and the Hague Convention on Designs)
The designation of AMS as issue-specific Country Champions (e.g. Thailand and
Vietnam as co-Champions on Geographical Indications, and Singapore as the IP
Portal Champion)
Promotion of a Regional Action Plan on IPR Enforcement
Enhanced collaboration with the international community
Furthermore, the document outlines the promotion of regional efforts toward the
establishment of a Creative ASEAN.
These issues and goals are all timely as they address concerns that have been identified by
various stakeholders as serious threats to continued success at regional integration and overall
IP improvements for AMS:
10
By sharing and implementing best practices and policies across AMS offices, and by
bolstering offices IT capabilities, the Working Group aims to reduce the average
processing time for trademark applications to six months region-wide by 2015.
A Regional Classification of Ethnic Goods and Services will be drafted to
supplement the Nice Classification System for the registration of marks for relevant
goods and services. This should prove beneficial to AMS stakeholders, as the
ASEAN list is supposed to be more specific and detailed regarding goods and services
unique to the region. Currently, of the AMS, only Singapore and Malaysia are
contracting parties of the Nice Agreement.10
Capacities of both office examiners and professional agents will be enhanced via
trainings, workshops and seminars based upon office and country needs, and
periodically adjusted to reflect lessons learned from improved project assessments.
These efforts will be geared toward stakeholders involved in the application and
review of patent, trademark and design applications. Of special note, the Working
http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=12
22
Group envisions capacity building exchange programs for 2014 through which
examiners will travel to regional and international IP offices (i.e. of Dialogue
Partners) to learn best practices and improved techniques to be institutionalized at
their own offices.
Integrated systems of shared resources should help to address the major problem of
disparate capacities between AMS offices. Programs like ASPEC and the IP Portal
will help bring developing offices up to speed with their more sophisticated neighbors
with less need to invest in physical infrastructure at each office. In particular, ASPEC
should reduce patent examination times at these offices, especially for applications in
unfamiliar and/or new frontier fields such as nanotechnology. Nonetheless, if the
results-sharing system is to be successful, it is imperative that all examiners using the
system have a sufficient command of the English language, as the Working Group has
stipulated that result-owner offices must prepare patent claims and specifications,
for review by AMS, in English. This issue is of special concern for those offices in
which English is not an official language. Considering the wide range of English
language proficiencies across the region, training to ensure these qualifications will
take significant time and resources.
Accession to international treaties, according to the Working Group, appears to be
the best currently available measure toward achieving regional IP coherence and
integration. The AMS agreed to adhere to the Hague Agreement on Designs by 2015,
and to work toward implementing similar systems. The region was also unsuccessful
in creating a central receiving office for trademarks. Clearly, the regions disparate
legal, social and economic environments make it difficult to establish an EPO-style
central ASEAN IP system in the near future. Accordingly, the Working Group plans
to promote and facilitate further regional accession to international IP treaties
(requiring minor legal amendments, as opposed to full-scale legislative overhauls) as
one way to establish more effective and coherent IP systems in the region. For
example, the new plan will require that all AMS accede to the PCT and the Madrid
Protocol on Trademarks by 2015 (currently, only Singapore and Vietnam have
acceded).
A regional copyrights database has been proposed by the Working Group as a
realistic objective that would facilitate better cross-border enforcement of copyright
protection via enhanced country-level accountability in honoring foreign copyright
claims.
Country Champions will serve as experts in their respective fields and should strive
to share policy updates and emerging issues with all AMS offices, effectively splitting
up the task of ensuring the regions IP competitiveness. This program should align
well with the ASEAN-helps-ASEAN model promoted by the Working Group.
Creative ASEAN reflects the regions developmental goals of enhanced innovation,
differentiated output, and thus, increased competitiveness. Toward this objective, the
Working Group has commissioned an external study to identify potential cross-border
synergies in various creative industries, and the establishment of creative twin cities.
Regional enforcement of IPRs is crucial in bolstering foreign trust and participation
in the ASEAN IP regime. The Working Group aims to improve enforcement efforts
via regional policy workshops to share best practices and develop common guidelines,
enhanced AMS office collaboration with the private sector and with local judiciaries,
and through public awareness campaigns. Nonetheless, individual offices will remain
limited in their abilities to actively implement enforcement changes they will
require support and participation from local police in tackling domestic IP
infringement, and from customs authorities in tackling cross-border activities.
23
The Working Groups vision for enhanced international cooperation entails more
effective collaboration with various stakeholders worldwide. Key among these are:
the co-drafting, implementation and assessment of a structured WIPO work plan for
the region; the implementation of the ASEAN-Australia-New Zealand Free Trade
Agreement; planning consultations and improved communication with Dialogue
Partners (and periodic results-assessments on DP activities); active participation in the
international discourse on IP issues (e.g. WIPO and WTO meetings); and improved,
candid relationships with private stakeholders operating in the region.11
The AWGIPCs longer-term vision for IP in ASEAN includes regional adherence to all major
IP treaties and conventions, central filing and enforcement outlets, and the capacity to host
independent, unified trainings and networking events for AMS. Such developments would
provide opportunities for regional office representatives to share individual policy
experiences in order to cooperatively work toward implementing common best practices.
Under this system, each member state would maintain its own IP laws and be responsible for
its own substantive examinations, while the regional body would streamline formal
procedures, provide technical assistance and training, and bolster regional IP awareness.
Recommendations
1. Reporting and Results-tracking
If these plans for integration via loose association are to succeed, it is important that the
Working Group implement a system to effectively and transparently manage its development
initiatives. For example, while general adherence to international IP treaties will help the
region gain more foreign investment, member states must fully live up to their self-reported
claims of compliance with these treaties.
Enhanced ASEAN Secretariat on IP As the region looks to further utilize international
treaties in promoting an integrated, secure IP landscape to the world, international donors
suggest that the ASEAN Secretariat is currently too undermanned and underfunded to
effectively manage IP development. Their recommendation is to make a significant
investment in strengthening the IP arm of the Secretariat to serve as a central IP
administrative authority. This authority should assist the AMS in carrying out their stated
objectives, track improvement efforts and report objectively on their progress in order to
boost foreign confidence in the ASEAN IP regime.
Assistance Review Program In the shorter term, an enhanced Secretariat might well
facilitate international support geared toward preparing regional offices to effectively assume
their responsibilities by establishing a results-oriented, institutional assistance-review
program. Currently, Dialogue Partners are privy only to participants self-reported feedback.
These sometimes subjective responses generally do not provide DPs with measurable results
with which to tailor their assistance offerings. An institutionalized feedback system could
report back to DPs on quantifiable and verifiable office wins resulting from technical
assistance projects. For example, a regional office might report that its trademark application
backlog was reduced by a certain percentage within six months after examiners attended a
training session on streamlining procedures. This type of quantifiable, results-oriented
11
AWGIPC Work Program 2011-2015
24
process review will enable DPs to most effectively tailor their assistance to meet real office
needs.
Baseline Study of IP Offices The Working Group should compile a baseline study on the
current status of each AMS IP office, as well as realistic targets for enhanced processes and
integration (e.g. region-wide accession to the Madrid Protocol by 2015), and establish a
system to transparently monitor progress toward those targets. This system, if made available
to all relevant beneficiaries and stakeholders, would simultaneously streamline, enhance and
substantiate the AWGIPCs efforts.
2. Communication
Both the Working Group and Dialogue Partners have expressed concerns over the direction
and effectiveness of recent support by the DPs, and have identified a lack of communication
as a major barrier to achieving optimal results. As effective international support is crucial
not only to the region as it bolsters its IP systems, but also to the DPs as they strive to ensure
a secure and productive environment for their domestic businesses in the region, both parties
should take measures toward amending the communication breakdown that is currently
inhibiting regional technical assistance.
Joint Meetings with Dialogue Partners Currently, the AWGIPC meets separately with
each of its DPs one time per year for approximately one hour. Communication at these
meetings is limited at best. In order to streamline and enhance disparate technical assistance
programs to effectively and efficiently meet AMS needs, the Working Group should sit down
together with all its DPs for an annual day-long meeting in which the Working Group clearly
states its major challenges and technical assistance needs. The DPs, in turn, should review
their current support programs and collaborate with the Working Group in planning future
programs. This approach would not only tailor assistance to actual needs, but also eliminate
the duplicative trainings that have made past efforts inefficient.
Consultation on Work Plans To further improve technical assistance, the Working Group
should consider consulting with DPs in crafting future work plans. If DPs are to maintain
relevant assistance programs, they should be kept up to date on the regions near-term
priorities and future objectives. This would help DPs, now under increasing budget
pressures, to maintain a useful level of assistance.
Assistance Calendar Beyond this, the ASEAN Secretariat should implement a regularly
updated assistance calendar featuring all DP support programs scheduled for the year. Such a
resource would reduce or end unnecessary programs, and allow DPs to collaborate more
effectively on upcoming projects.
Focus on Those Most in Need International donor assistance should be directed primarily
to the least-developed offices (i.e. CLM), for if ASEAN is to achieve a regionally integrated
IP regime in the future, all of its constituent IP offices must first gain and maintain at least a
minimum level of institutional soundness and operational efficacy. Specifically, donors
should consider shifting the focus of their CLM assistance efforts from technical assistance
(which has proven insufficient for various reasons discussed in this chapter), toward
sponsoring comprehensive IP education for office employees. For example, Dialogue
Partners might sponsor new-hire patent examiners to study IP Law and to train them at the IP
25
offices in the DPs home-countries. The ASEAN University Network (AUN) feels that real
office improvements will require these and other human resource investments. Activities
involving the more advanced IP offices should be largely self-financed and focused on
regional and international cooperation, coordination and communication.
Stakeholder Engagement Before (and while) fostering improved relationships with
Dialogue Partners, it is essential that the AWGIPC engage with AMS IP offices, as well as
other stakeholders, such as local businesses, universities and non-government organizations,
in shaping and executing the work plan. To illustrate the current problem, some country
offices were not familiar with all of the 2004-2010 work plans action items. Similarly,
communication between the AWGIPC and the ASEAN IP Association is insufficient.
According to the work plan, the Working Group was supposed to partner with the IP
Association in carrying out its objectives. The AIPA, however, has not been invited to the
Working Groups semi-annual meetings for the past five years. If the Working Group is to
effectively provide its constituent offices with practicable solutions to their actual problems,
it needs to work together with all relevant stakeholders. While the AWGIPC has already
agreed upon a finalized 2011-2015 work plan, it would be wise for the group to sit down with
these stakeholders, review the plan, and cooperatively determine the best way to manifest the
plans long-term objectives via tangible, prioritized initiatives.
3. Training
The AWGIPC and Dialogue Partners agree that more targeted and focused training events
would best serve their mutual interests. Given the different levels of development of the
ASEAN IP offices, however, it is difficult to design training programs that address these
differing needs and capabilities. At the same time, providing training on a country-by-country
basis does little to encourage regional IP understanding, cooperation and integration.
Sub-regional Training DPs and the AWGIPC should consider pursuing sub-regional
activities focused on the needs of sub-regions within ASEAN. For example, representatives
from CLMV IP offices might attend a specific training event covering basic best practices
and issues that are relevant to their early-development statuses, while a workshop on
advanced patent issues could be designed for patent officials from AMS that have wellestablished patent offices.
Trainee Selection To make training, whether sub-regional, regional or country-based, more
effective, it is important that the right trainees are invited to the training events. The ECfunded ASEAN Project on the Protection of Intellectual Property Rights (ECAP III), for
example, has successfully employed a filtering mechanism to ensure that only appropriate
stakeholders attend specific training activities. Participants are required to present in English,
complete a program satisfaction survey, and submit a feedback report on the follow-up
actions carried out by their respective offices. Similarly, the AUN ensures that its own
training events draw appropriate audiences by including specific language requirements in all
program announcements, and declines to provide participants with per diem allowances,
choosing instead to centrally manage all relevant expenses. This tactic discourages the use of
training programs as rewards and encourages selection of trainees according to their need for
a specific kind of training and their ability to absorb the level of training offered.
The main overall recommendation is for the AWGIPC and its Dialogue Partners to strive to
establish more frequent and open communication, and to work together to ensure that
26
technical assistance programs are timely and effective. Beyond facilitating this near-term
relationship, a stronger ASEAN Secretariat capability on IP would enhance the regions longterm IP objectives, ensuring efficient and transparent oversight of office initiatives,
knowledge sharing, and technical support, and ultimately paving the way for an effective and
investment-attracting regional IP landscape.
27
PART II
COUNTRY REPORTS
28
I. CAMBODIA
Overview
Cambodia has emerged from two decades of war and social unrest to achieve significant
economic growth. From 2004-2007 GDP grew steadily at roughly 10%. In 2009 it slightly
contracted at 0.1% due to the global economic crisis, but real growth recovered to 5% in
2010. GDP for 2010 was estimated at USD 30.1 billion, while GDP per capita (PPP) for
Cambodias 14.7 million people reached USD 2,000, with services (45.2%) and agriculture
(33.4%) serving as the countrys main sources of income.12
Cambodia has established an open free market system, and the government has sought greater
foreign investment. Accordingly, the government is committed to IPR protection.
Declaration No. 368 of the Ministry of Commerce, Procedures of the Intellectual Property
Department of December 15, 1997 is intended to ensure the protection of IPR. With this
undertaking, Cambodia took a decisive step toward IP protection, paving the way for their
invitation to become a member of the World Trade Organization in 2004.
Legal Framework
The General Department of Industry (GDI) established Strategy 2015 a new corporate
framework for 2010-2015 to cope with the challenges of economic growth and to enhance
Cambodias investment environment in order to attract more foreign direct investment. One
part of this strategy focuses on regulatory reform to sustain market incentives and investor
confidence. This focus should encourage improvements in the Cambodian IP registration and
granting systems. In 2010, the Cambodian IP system was in an early stage of development.
Although Cambodia has not yet complied with all requirements of the TRIPS agreement, it
has made major progress in the past decade.
Of the major IP treaties, Cambodia is party to the Paris Convention for the Protection of
Industrial Property, and is a member of the World Intellectual Property Organization (WIPO).
Cambodia has also signed various bilateral agreements concerning IPR, including the 1996
Trade Relations and Intellectual Property Rights Protection Agreement with the United States
and the 1997 Memorandum of Understanding (MOU) on Intellectual Property Cooperation
with Thailand.
In the future, the Cambodian government intends to accede to the major international IP
treaties such as the PCT, the Madrid Protocol and the Nice Agreement. It is also considering
accession to the Berne Convention, the Singapore Treaty, the Vienna Agreement and the
Hague Agreement (as well as the Locarno Agreement), the Strasbourg Agreement
Concerning the International Patent Classification, the Washington Treaty on Intellectual
12
Central Intelligence Agency, https://www.cia.gov/library/publications/the-world-factbook/geos/cb.html

(accessed March 30, 2011).
29
Property in Respect of Integrated Circuits, and the International Union for the Protection of
New Varieties of Plants (UPOV).13
Cambodia joined WTO in 2004 and must, consequently, abide by the TRIPS agreement by
2013. Cambodia is still in the process of preparing IP laws and regulations in compliance
with TRIPS. Details are as follows:
Trademark Law (16 Chapters, 72 Articles) The Royal Decree on Marks, Trade
Names and Acts of Unfair Competition was enacted on February 7, 2002. In July
2006, the Sub-Decree No.46 on the Implementation of the Law concerning Marks,
Trade Names and Acts of Unfair Competition was issued. This Sub-Decree
determines the legal procedures for registration, refusal, agents, claiming priority,
invalidation, and border measures in order to implement the Law on Marks, Trade
Names and Acts of Unfair Competition.
Patent, Utility Model and Industrial Design Law (9 Chapters, 137 Articles) Although the laws were enacted on January 2, 2003, the regulations for
implementing the law were not submitted to the Council of Ministers until October,
2005. The Ministry of Industry, Mines, and Energy (MIME) issued a declaration in
June 2006 on granting patents and registering industrial designs. In May 2007, the
MIME issued another declaration on the grant of patents and utility model
certificates.14
Geographical Indication (GI) Law The Law on GI was finalized with technical
assistance from France and enacted in 2009 as Prakas on Geographical Indication
Registration.15
Trade Secret Law and Regulations The law has not yet been drafted due to the
lack of technical assistance. Japan previously provided assistance to Cambodia in
drafting this law, however, it was written in Japanese. Although it was later
translated into English, much was lost in the translation. Canada has provided
external assistance (through the APEC-EIP) to finalize the draft Law on
Undisclosed Information and Trade Secrets, which is expected to be enacted by
2011.16
Copyright and Related Rights The current copyright laws were promulgated in
2004. The content of these laws is similar to existing legislation elsewhere. Further,
these laws comply with important aspects of the Berne Convention and the TRIPS
Agreement. For instance, the laws permit the destruction of copyright-infringing
goods and copyright protection lasts for the authors life, plus an additional 50
years.
Encrypted Satellite Signals Law The deadline for the first draft of this law was
extended due to a lack of technical assistance. Cambodia has not yet made
significant progress toward enacting required legislation on encrypted satellite
13
The ASEAN Project on the Protection of Intellectual Property Rights (ECAP III), http://www.ecapproject.org/index.php?q=ASEAN_IP_Legislations_Cambodia (accessed March 28, 2011).
14
Bureau of Economic, Energy and Business Affairs, http://www.state.gov/e/eeb/ (accessed March 10, 2011)
and The ASEAN Project on the Protection of Intellectual Property Rights (ECAP III), http://www.ecapproject.org/index.php?q=ASEAN_IP_Legislations_Cambodia
15
16
Ibid.
30
signals, although it obtained a model law on encrypted satellite signals and

semiconductor layout designs from WIPO in March 1999.17
New Plant Variety Protection Law The Council of Ministers decided that this law
should be under the responsibility of two ministries: the Ministry of Agriculture will
be responsible for old plant varieties whereas the Ministry of Industry will take
responsibility for new varieties. The Law on Seeds Management and New Plant
Varieties Protection (PVP) was enacted on April 29, 2008, and benefited from
technical support provided by ECAP II and the French Plant Variety Office.
Cambodia is currently preparing the PVP implementation regulation and is in need
of legal and technical assistance for the implementation of the PVP system.18
Intellectual Property Office

Responsibility for IP administration and policy-making is spread among several ministries.
Trademarks are the responsibility of the Department of Intellectual Property Rights (D/IPR),
Ministry of Commerce, whereas patents, utility models, industrial designs, integrated circuit
designs and plant varieties are under the jurisdiction of the Department of Industrial Property
(DIP), Ministry of Industry, Mines and Energy (MIME). The DIP is an important link to
world IP organizations such as WIPO. As the main promoter of innovation in Cambodia, its
responsibilities include technology creation and protection of industrial property. 19 The
Department of Copyrights and Related Rights, Ministry of Culture and Find Art, is in charge
of copyrights.
In order to deal with the difficulties presented by the separation of IP administration among
these three ministries, the Council of Ministers created the National Committee for
Intellectual Property Management in 2008. This committee is responsible for developing
national policy on IP, strengthening interagency cooperation, preparing and disseminating
new laws and regulations, and acting as a clearinghouse for technical assistance relating to
the IP sector.20
Cambodian officials working in the IP area have improved their expertise through
international assistance. Cooperation with ECAP II and III has helped to train IP officers,
including judges, prosecutors and attorneys, and to enhance the implementation of IP laws in
Cambodia.
Overall, there were sixteen examiners in 2010: twelve trademark examiners and four patent
examiners. All of them have science degrees. The patent examiners only perform formality
checks. All patent examiners and seven trademark examiners have less than five years of
experience while three trademark examiners have 5-15 years of experience. The salary rate of
IP examiners is comparable to that of other civil servants. The salary range for patent and
trademark examiners is between USD 50-200. An enormous gap in salary between
17
19
General Department of Industry, http://www.gdi.mime.gov.kh/en/government/about-us.html (accessed March
28, 2011).
20
18
31
government and private sector workers still exists in Cambodia. 21 Previously, examiners left
the office to take jobs in unrelated industries.
Moving forward, the Cambodian office requested assistance from the major IP offices in
establishing a regional benchmark by which developing offices, like the DIP, could measure
their strategic initiatives toward decreasing processing times and application backlogs.
Further, the office is currently finalizing proposals for (and searching for developing partners
with whom to implement) these process and policy changes, including the development of an
online platform and a program to enhance public awareness, and also for partners to assist the
office in implementing these changes.
Chart 9 Organization Chart

Intellectual Property Department
Bureau of
Registration
Formality
Check
Section
Mark
Examination
1 Section
Mark
Examination
2 Section
Bureau of
PostRegistration
Formality Check
& Exclusivity
Section
Bureau of GI
& Trade
Secret
Bureau of
Litigation
Receiving
Petition
Section
GI Secretariat
to Support GI
Commission
Section
Bureau of
Dissemination
& Information
International
Cooperation
Section
Admin & HR
Section
Dispute
Settlement
Section
Renewal Section
Formality
Check Section
Amendment
Section
Bureau of
Cooperation &
Legal Affairs
Public Awareness
Section
Enforcement
Section
Examination
Section
Legal Affairs
Section
Record &
Report Section
IT Section
Trade Secret & Genetic

Resource and Traditional
Cultural Expression
Soure: Intellectual Property Office
21
http://www.cambodiamirror.org/2008/10/30/in-cambodia-the-salaries-do-not-correspond-to-the-size-ofproperty-owned-by-civil-servants-thursday-30102008/
32
Table 6 Number of Examiners by Highest Degree Obtained

Office
Degree
High
school
Bachelor
Science
Patent
examiners
Trademark
examiners
12
Master
Nonscience
Science
Doctoral
Nonscience
Science
Nonscience
Source: Intellectual Property Office
Table 7 Number of Examiners by Years of Experience

Office
Less than 5
years
Patent
examiners
Trademark
examiners
10
5-10 years
10-15 years
15-20 years
More than
20 years
Source: Intellectual Property Office
Patent Applications
All of the 104 patent and utility model applications filed in Cambodia since 2007 have been
foreign applications. (Table 8) One possible reason for this is that Cambodia is still in an
early stage of economic transformation. Most Cambodian companies are small and medium
size enterprises that produce few inventions or innovations, and fail to commercialize those
they do create. Consequently, no domestic patent applications have been filed to date. As
Cambodia must currently wait for search and examination results from WIPO and other third
parties, no application has been granted a patent to date.
Table 8 Patent Application in Cambodia
Year
2007
2008
2009
2010
Total
Patent and Utility Model Applications

Domestic
Foreign
0
0
0
0
0
13
38
29
24
104
Source: Bureau of Cooperation and Legal Affairs, Intellectual Property Department.
33
Patent Procedures
According to the current law on Patents, Utility Models, and Industrial Designs (2007), the
MIME is in charge of administering and granting patents. Cambodias patent procedure is
similar to that of other countries. Before being granted a patent, an applicant must prove the
products novelty, inventiveness, and utility. Patentable and non-patentable subject matter are
determined in accordance with the fields of technology covered by the European Patent
Convention (EPC). After filing and formality check, the applicant must request an
examination. Cambodia relies on search and examination from WIPO. Applicants who have
already submitted applications abroad may also provide search reports from other countries
for the examiners to consider. Acquiring these search reports, though required for applicants
seeking priority filing, is often quite time-consuming, and delays the application process.
Individuals may object to the application during the patent examination process.
As in other countries, patent rights are awarded on a first-to-file basis. The period of patent
protection is 20 years from the filing date as stated in Article 45 of the Law on Patents,
Utility Model Certificates and Industrial Designs, while protection for utility models is seven
years without renewal, according to Article 73.22 A compulsory license can be implemented
if the granted patent is not in use for three years. The government is now considering
enacting a Law on Compulsory Licensing for Public Health.23 Cambodia also has legislation
specifically addressing counterfeit pharmaceutical products.
Major problems faced by the DIP are a lack of qualified examiners, inexperienced examiners,
and too few examiners on staff. As the two patent examiners have non-science degrees and
only a few years of experience, they lack the expertise required to assess technical patent
applications (currently, only the chief of the office is qualified to do so). The English
language is another important barrier. Other problems include a lack of search tools, and
computer and internet problems.
If the office is to expedite the patent application process moving forward, enhanced examiner
training will be a crucial primary initiative.
22
Nhem Phally, Current Status and Future Prospects on Patent of the Kingdom of Cambodia, WIPO-ASEAN
Sub-Regional Forum on Promotion of Innovation (2010).
23
BNG Legal, Intellectual Property in Cambodia (2010).
34
Chart 10 Cambodia Patent and Utility Model Procedure
Filing Application
Formality Check
Searching Examination
Substantive Examination
Notification of Amendment
Amendment
Decision to Grant
No Amendment
Decision of Refusal
Grant Patent/Utility Model
Publication
Source: WIPO-ASEAN Sub-regional Forum on Promotion of Innovation. Current Status and Future Prospects
on Patent of the Kingdom of Cambodia, (2010)24
Trademark Application
Trademark applications and registrations have risen considerably during the period 20052010, from 1,581 applications to 3,969 applications. Foreign trademark applications were the
majority every year, contributing 75.1% of the total, on average. Despite the fact that
domestic trademark applications represented a small percentage, they have increased
gradually since 2006, probably because of increases in Foreign Direct Investment (FDI),
together with the support, from the Cambodian government, of business promotion and trade
facilitation.25 From 2005-2010, about 82.9% of trademark applications were granted whereas
only 3.6% were refused and 0.6% were withdrawn. According to a report by the U.S.
Department of State, Since 1991, the Ministry of Commerce has maintained an effective
trademark registration system, registering more than 35,500 trademarks (nearly 6,599 for
U.S. companies) under the terms of a 1991 sub-decree, and has proven cooperative in
preventing unauthorized individuals from registering U.S. trademarks in Cambodia.26
24
World Intellectual Property Organization,

http://www.wipo.int/edocs/mdocs/aspac/en/wipo_inn_bkk_10/wipo_inn_bkk_10_ref_cambodia.pdf
25
U.S. Department of State, 2010 Investment Climate Statement Cambodia, March 2010,
http://www.state.gov/e/eeb/rls/othr/ics/2010/138045.htm (accessed May 27, 2011)
26
Ibid.
35
Table 9 Trademark Applications and Registrations in Cambodia

Application
Registration
Year
Refused
Withdrawn
1,910
44
1,198
1,553
68
10
312
1,066
1,378
120
13
3,099
437
1,874
2,311
131
28
2,271
3,077
698
2,418
3,116
160
22
840
3,129
3,969
652
2,384
3,036
50
21
3,998
12,048
16,046
2,845
10,459
13,304
573
101
Domestic
Foreign
Total
Domestic
Foreign
Total
2005
358
1,223
1,581
391
1,519
2006
864
698
1,562
355
2007
552
2,206
2,758
2008
578
2,521
2009
806
2010
Total
Source: Intellectual Property Department
Trademark Procedures
The D/IPR of the Ministry of Commerce has administrative authority for receiving
applications and granting trademarks. The application can be in either Khmer or English.
Cambodia grants a registered mark from member countries of the Paris Convention priority
registration in Cambodia. After filing an application, granting of the mark usually takes from
four months to one year. Trademark protection is granted for 10 years with a possible
indefinite renewal for successive ten-year periods. The mark is given to the first entity to file
an application, even if the mark is not used. A registered mark not used after five years can be
nullified.
During the trademark registration process, objections to applications may be raised with the
D/IPR within 90 days of the applications publication in the Official Gazette of the Ministry
of Commerce. Such objections, however, can delay the procedure.
IP officials believe the most crucial problem causing delays in the trademark procedure is an
insufficient number of examiners. The ratio of applications per trademark examiner in 2010
was relatively high at approximately 794 applications. As the number of trademark
applications is increasing every year, more examiners are required to effectively handle the
workload.
Another major problem is the offices slow internet connection. Each trademark registration
requires an online search, and it is extremely difficult to search the large database with the
current limited connectivity. Other problems, common among ASEAN IP offices, include the
lack of qualified and experienced examiners, insufficient search tools and computer
hardware, and poorly prepared applications.
Furthermore, examiners are not effectively communicating with applicants regarding
application updates and notifications; reportedly, it is common for weeks to pass between a
trademarks issuance and its owners notification, and the communication is often delivered
after the applicants deadline to respond has expired. In order to alleviate these issues, the
36
office should establish a central repository where applicants can check the status of their
applications, alongside a streamlined, uniform procedure for handling applications.27
Beyond these procedural hold-ups, concerns exist that the lack of a definitive policy for
determining the successful fulfillment of the requirement of descriptiveness leads to
seemingly arbitrary rejections of some applications. The office should clearly define,
communicate, and adhere to these requirements.
To further accelerate the procedure, it is advised that applicants hire a local agent to file their
applications as these agents will have more specific expertise and experiences on the
registration process.28
Automation and Information Technology

Cambodia uses patent and trademark search databases from the Internet and from
PATENTSCOPE. In addition, physical trademark documents are scanned and stored in the
IPAS system. Prior art searches are not currently publicly available, but instead must be
performed at the office of the Registrar. There are 30 computer workstations on one server.
Most computers have Intel Pentium 3 and 4 processors with internet bandwidth of 1 Mbps.
As the IT equipment is unsophisticated and the internet connection is limited, the system
must be improved to facilitate a faster and more convenient registration process.
Enforcement
The legal framework for the enforcement of Cambodias IP laws offers a number of
enforcement provisions compliant with TRIPS. Many departments and authorities have
enforcement responsibilities in their respective fields including the National Police, the
Economic Police Department, the Ministry of Commerce, Customs and the Excise
Department.29
Infringement of IPR can result in three outcomes: charge for damages and/or specific relief in
civil court, suspended clearance of infringing goods, and criminal prosecution.
The patent owner is entitled to take civil action against an infringer such as an injunction and
compensation. Criminal penalties are also available, varying from a fine of KHR five million
to KHR twenty million, one to five years imprisonment, or both.30 The trademark owner can
request criminal prosecution of the infringer. The penalty for standard infringement is KHR
five to ten million, one month to a years imprisonment, or both. The penalty for
counterfeiting is KHR one to twenty million, one to five years imprisonment, or both.31
27
Experts opinion
BNG Legal, Cambodian Trademark FAQ, May 10, 2010, http://www.expatadvisory.com/articles/asia/southeast-asia/cambodia/phnom-penh/cambodian-trademark-faq (accessed May 6,
2011).
29
Sisowath D. Chanto, Cambodia Industrial Property (2009), 4.
30
David Haskel, Patent Law in Cambodia, September 14, 2007, http://www.hg.org/article.asp?id=4828
31
Trademark Law in Cambodia, September 14, 2007, http://www.hg.org/article.asp?id=4827 (accessed March
31, 2011).
28
37
By contrast, the DIP and D/IPR are not responsible for enforcement; rather, their role is to
mediate the IP conflict and to provide consultation to enforcement bodies. DIP and D/IPR
play a mediator role in seeking compromise between the owner and the infringer. In this
regard, they will request both parties to provide the relevant documents or evidence to
support their legal ownership in the contested period. This face-to-face dispute settlement
enables both sides to explain and clarify their rights in the presence of a competent registrar.
If the parties do not reach a common agreement, the registrar will propose suitable alternative
options.
Most of the departments, however, suffer from insufficient experience and know-how. There
is also a lack of coordination among the various authorities in charge of enforcement, which
has led to ineffective enforcement. Further frustrating IP enforcement, the courts lack
knowledge and experience in handling IP cases. In the future, Cambodia should consider
establishing a court to specifically handle such cases. While Cambodia presently sees only a
few IP disputes per year (about 10 per year concerning trademarks), it is likely that the
number of IP cases will rise once all the relevant laws are in place. Alternatively, the
commercial court being planned currently could serve as an IP court.
Recommendations
1. Cambodia should place greater emphasis on improving the institutions dealing with
IPR, either by implementing a stronger and more powerful coordination mechanism
or, preferably, by creating an integrated IP agency, as exists in some other ASEAN
countries.
2. Cambodia should invest in providing an adequate administrative infrastructure for IP.
This could potentially be secured via international assistance from bodies such as
WIPO and the WTO, and/or national and regional organizations (USA, Japan, EU,
etc.).
3. Information technology improvements to the department are needed. These
improvements should address basic information technology infrastructure needs such
as adding more new-model workstations, developing a functioning network,
improving Internet connection speed and access, and implementing a modern
information system for managing administrative procedures.
4. An extended training program, and various workshops and seminars are needed to
meet the needs of the different staff, including substantive legal training for lawyers in
the fields of trademarks, patents, utility models, and industrial designs, training in the
drafting of IP legislation, and specialized training for examiners, copyright agents,
judges and customs agents.
5. An IP information center system, similar to WIPOs Intellectual Property Digital
Library, should be developed to collect information on the countrys IP. Furthermore,
an online registration system should be implemented as it is easier for applicants to
register their IP without going to the Intellectual Property Department. This online
system would provide added convenience and faster registration.
38
6. Enforcement agents will benefit from training and an instructive manual.

7. Cambodian patent and trademark offices will benefit from a network with local
universities. Support is needed to establish and encourage collaboration in such a
network that will not only help patent examiners do their job, but also assist
applicants prepare applications.
8. Public awareness on IPR should be strengthened through outreach programs.
9. A patent manual is needed.
39
II. INDONESIA
Overview
Indonesia is the largest country in Southeast Asia in terms of both geography (1,904,569 sq.
km) and population (242 million as of July 2010). Its population is the fourth largest in the
world behind China, India, and the United States. In 2010, its GDP was USD 1.03 trillion,
and per capita GDP was USD 4,300 when adjusted for purchasing power parity (PPP). Real
GDP growth was 6% in 2010, a significant increase from the previous year.
Foreign Direct Investment (FDI) totaled USD 81.2 billion in 2010 and USD 72.8 billion in
2009. The export value of Indonesian goods was USD 146.3 billion in 2010, while the value
of imports totaled USD 111.1 billion, giving Indonesia a positive trade balance. Exports were
directed mainly toward Japan, Singapore and the United States, while imports came primarily
from other ASEAN countries and China.
Industry and services represent more than 80% of Indonesias GDP (47.6% and 37.1%,
respectively). The most dynamic sector is manufacturing in heavy industries including
petroleum and natural gas, textiles, mining, cement, chemical fertilizers, plywood and
rubber.32
Indonesia has a relatively solid IP system in place. This system originated from earlier Dutch
codes of law. When Indonesia gained independence, it inherited the legal system established
by the Dutch, including membership in the Berne Convention, previously signed by the
Dutch on behalf of Indonesia.33 The Indonesian government has further improved its IP
system in recent years.
Legal Framework
On an international level, Indonesia is party to the essential treaties pertaining to IPR,
including the Berne Convention for the Protection of Literary and Artistic Works (with a
reservation on Article 33), the Paris Convention for the Protection of Intellectual Property,
the Patent Cooperation Treaty (PCT), the WIPO Performances and Phonograms Treaty
(WPPT), and Trade Related Aspects of Intellectual Property Rights (TRIPS). Indonesia,
however, is party to neither the Madrid Agreement nor the Madrid Protocol, and thus is not a
member of the Madrid Union.
At the national level, Indonesias IP legislation has been substantially amended in recent
years. In 2001, a new law on patents (Law No. 14 State Gazette of RI of 2001) was enacted,
and is currently in effect. Since then the Patent Law was modified with the following
amendments in accordance with the TRIPS Agreement, ratified by Indonesia in 1994.34 The
32
Central Intelligence Agency, https://www.cia.gov/library/publications/the-world-factbook/geos/id.html

(accessed January 23, 2011).
33
EUROPEAID, Intellectual Property Rights: Acquisition, Scope and Enforcement Malaysia, Indonesia,
China and Vietnam, http://iprasia.org/storage/contentsfiles/0_99/1/Asia_Invest_Final_version_041108__PGFPR_-2_051108_IK.pdf (accessed January 24, 2011).
34
Baker & McKenzie and Hadiputranto Hadinoto, Indonesia: Intellectual Property Guide (2009), 36.
40
Trademark Law, Law No. 15 State Gazette of RI of 2001 no.110, was enacted on August 1,
2001. This law was also intended to bring Indonesian trademark law into conformity with the
TRIPS Agreement. Additionally, Government Regulation No. 51 of 2007 on Geographical
Indications (GR 51) was enacted on September 4, 2007. GR 51 is an implementation
regulation of the provision in Article 56 of the Trademark Law.
In addition to the above legislation, the following IP-related laws have been enacted: the
Designs Law 2000; the Trade Secrets Law 2000; the Integrated Circuit Layout Design Law
2000; the Plant Variety Protection Law 2000; and the Copyright Law 2002.
A draft Trademark Bill was issued in 2009, and circulated in March 2010. The new
legislation is expected to become law in 2011, and is intended to streamline the trademark
registration process, reducing average registration time to around 12 months.
The most recent update related to patent law is a Presidential Decree released on June 7, 2010
entitled Presidential Decree no. 37 of 2010, regarding procedures and requirements for the
recording of patent assignments. Prior to this new regulation, it was impossible to record
assignments of granted patents; therefore, the name of the patentee could not be changed
when ownership changed. This caused uncertainty as to who held the certain right of the
patent. The issuance of the Presidential Decree encompasses all matters relating to the
recording of patent assignments. Under the decree, the transfer of a patent must be registered
with the Directorate General of Intellectual Property Rights via required documentation and
the payment of a fee.35
Overall, two government regulations and one presidential decree were issued between 2005
and 2010 as follows:
Government Regulation No.2 of 2005 on the profession of IP consultants

Government Regulation No. 51 of 2007 on Geographical Indications (GR 51)
Government Regulation No.38 of 2009 on new official fees for IPR application filings
Presidential Decree no.37 of 2010 on procedures and requirements for the recording
of patent assignments36
Currently, the Directorate General of Law and Regulation is preparing a new government
regulation on License Agreement and Compulsory License.37 The government is also drafting
a regulation concerning the revision of patent protection, covering issues such as patent
application, publication and substantive examination.38
35
Migni Myriasandra Noerhadi, Report of the 58th Council Meetings, (2010): 4,

http://www.apaa2010.kr/meeting/down/National_Group_Reports/APAA_2010_Recognize_Group_Report%20f
or_Jeju_Korea_Final_Indonesia.pdf (accessed January 21, 2010).
36
Baker & McKenzie and Hadiputranto Hadinoto, Indonesia: Intellectual Property Guide, 5.
37
Ibid.
38
Cita Citrawinda Noerhadi and Prayudi Setiadharma, Report of the APAA 58th Council Meetings (2010).
41

The Directorate General of Intellectual Property Rights (DGIPR) was created by a decree of
the President of the Republic of Indonesia in 1998 and is part of the Ministry of Law and
Human Rights. It is the successor, through multiple steps, of the first public laws in the field
of IPR established in 1894 during Dutch colonial rule.
DGIPR is responsible for providing an effective and efficient IPR system and for developing
an IPR administration system that helps encourage national development. The DGIPR is not
an autonomous body it is a part of the central administration of the Ministry of Law and
Human Rights. Currently, all application fees go to the central government, and the
government returns 25% of the total to the DGIPR. This percentage is expected to increase in
the near future in order to meet the offices increasing demands.
DGIPR has seven units:
Secretariat of the Directorate General

Directorate of Copyright, Industrial Design, Layout Design of Integrated Circuits,
and Trade Secrets
Directorate of Patents
Directorate of Trademarks
Directorate of Cooperation and Development
Directorate of Information Technology
Directorate of Investigation
The DGIPRs total staff in 2010 comprised 537 employees, an increase of five percent from
2006. Despite this overall increase, there has been minimal change in the numbers of staff in
the Directorate of Patents and the Directorate of Trademarks. In 2010, there were 134 staff in
the Directorate of Patents and 148 in the Directorate of Trademarks. Of these, 71 are patent
examiners and 43 are trademark examiners.39 Established in April 2011, the Directorate of
Investigation is the newest division, with 13 investigators among its total staff of 22.
Table 10 Number of DGIPR Staff in 2006 - 2010
Directorate/Type of personnel
Number
2006
2007
2008
2009
2010
130
127
131
129
134
70
70
70
72
71
144
144
142
144
148
43
43
43
43
43
Directorate of Copyright
62
63
64
68
72
Directorate of Cooperation and
38
35
37
40
36
Directorate of Patents
Patent examiners
Directorate of Trademarks
Trademark examiners
39
Eka Fridayanti, Presentation of Country Report (2008), in WIPO-SIDA Training on Copyright and Related
Rights in the Global Economy,
http://www.google.co.th/#q=Indonesia+DGIPR+Budget&hl=th&biw=1259&bih=839&prmd=ivns&ei=8FI9TZa
oCoXsrQfvwJDxCA&start=20&sa=N&fp=524bfab90b81a456 (accessed January 24, 2010).
42
Number
Directorate/Type of personnel
2006
2007
2008
2009
2010
Directorate of IT
38
36
37
37
36
Secretariat of Directorate General
99
107
103
96
111
511
512
514
514
537
Development
Administrative staff
Total
Source: DGIPR
Table 11 Number of Examiners by Educational Profile

Degree
Office
Bachelor
Master
Doctoral
High
school
Science
Nonscience
Science
Nonscience
Science
Nonscience
Patent
examiners
53
15
Trademark
examiners
25
12
Source: DGIPR
A majority of the 114 patent and trademark examiners possess at least a bachelors degree.
Specifically, 77.5% of patent examiners have a degree in science, which is necessary to
examine patent applications related to science and technology. Some 74.6% of the patent
examiners have bachelors degrees, whereas 23.9% graduated with a masters degree. Only
2.8% of the patent examiners, however, have a masters degree in science.
Of the total 43 trademark examiners, 58.1% have a bachelors degree, and 27.9% have
masters degrees. All of the trademark examiners come from non-science fields.
Less than 5
years
5-10 years
10-15 years
15-20 years
More than 20
years
Patent
examiners
11
14
41
Trademark
examiners
11
12
13
Office
Source: DGIPR
43
Indonesian patent examiners are highly experienced; 57.7% have more than 15 years of
experience and 19.7% have between 10 and 15 years. On the trademark side, 30.2% of the
examiners have more than 15 years of experience and 27.9% have 10-15 years; Indonesian
examiners then, are very experienced compared to their counterparts in most other ASEAN
countries.
In terms of salary, a new patent examiner receives around IDR 2,487,800, slightly below the
salary of an order engineer.40 The maximum salary of a patent examiner is approximately
IDR 4,603,800, which is rather low for an engineer with extensive experience. A new
trademark examiner receives about IDR 2,061,700, comparable to a human resource assistant
in the private sector. A highly experienced trademark examiner earns a relatively low salary
of IDR 4,515,800, well below that of an HR training manager with five to six years of
experience.41 In 2011, the parliament agreed to increase staff compensation via a new
scheme, currently paying employees an additional 70% of their standard pay; moving
forward, the remuneration percentages will be adjusted in accordance with each staffs level
(from level 1 to 17).
Based on Presidential Regulation Number 14 of 2011, remuneration to the patent examiner at
level 6 to 10 will be between IDR 2,095,000 - 3,352,000, while for the trademark examiner at
level 5 to 10, remuneration will be between IDR 1,904,000 - 3,352,000.
In April 2011, the Directorate of Patents changed its organizational structure to include a
Sub-Directorate of Classification and Search in charge of classification and search to support
patent examiners and third parties who need the data search information. It currently has nine
candidate examiners who previously handled classification and search procedures as patent
examiners. In 2012, 12 candidates, prepared by the Directorate of Patents, will undergo onthe-job training to be appointed as patent examiners.
Patent Applications
Indonesia ratified the Patent Cooperation Treaty (PCT) in 1997, and most patent applications
(81.61%) come via the PCT, especially for foreign applications (99.86%). Domestic patent
applications represent 6.8% of the total applications; however, when factoring in petty patent
applications, this proportion improves slightly to 10.8% of the total.
Domestic patent applications filed through the PCT in June 2010 showed a marked increase,
indicating the increased awareness of local applicants to register patents through this channel.
Similarly, foreign patent applications increased dramatically, while foreign petty patent
applications remained the same. This situation may reflect the impact of the global economic
crisis.42 Looking more closely at country of origin, EU countries make up the greatest
percentage of applicants, followed by the United States, Japan and Indonesia (Chart 11).
40
Kelly Services Indonesia, Indonesia Employment Outlook and Salary Guide, 2009/2010,
http://www.kellyservices.co.id With a degree and 2-3 years of experience Order engineer handling and
technical review; fabrication drawings to vendors and customers; mechanical design; & QA/ QC inspection.
41
Kelly Services Indonesia, Indonesia Employment Outlook and Salary Guide, 2009/2010,
http://www.kellyservices.co.id
42
Cita Citrawinda Noerhadi and Prayudi Setiadharma, Report of the APAA 58th Council Meetings.
44
Table 13 Patent applications received by year, broken down by domestic and foreign filers
Patent
Petty Patent
PCT
Year
Non PCT
Total
Domestic Foreign
Domestic Foreign
Total
Domestic Foreign
Total
Total
2001
2,901
2,905
208
813
1,021
197
24
221
4,147
2002
2,976
2,982
228
633
861
157
48
205
4,048
2003
2,620
2,620
201
479
680
163
29
192
3,492
2004
2,989
2,990
226
452
678
177
32
209
3,877
2005
3,536
3,537
234
533
767
163
32
195
4,499
2006
3,805
3,811
282
519
801
242
26
268
4,880
2007
4,357
4,362
279
493
772
209
34
243
5,377
2008
11
4,278
4,289
375
469
844
214
34
248
5,381
2009
3,761
3,763
413
342
755
247
38
285
4,803
2010
11
4,596
4,607
497
401
898
251
38
289
5,794
Total
47
35,819
35,866
2,943
5,134
8,077
2,020
335
2,355
46,298
43
Source: WIPO and DGIPR
Chart 11 Numbers of patent application based on country (1991-2009)
Number of patent application based on country

(1991-2009)
25000
20000
15000
10000
5000
0
Source: DGIPR44
43
World Intellectual Property Organization, http://world-intellectual-property

organization.com/edocs/mdocs/aspac/en/wipo_inn_bkk_10/wipo_inn_bkk_10_ref_indonesia.pdf
44
World Intellectual Property Organization, http://world-intellectual-property
organization.com/edocs/mdocs/aspac/en/wipo_inn_bkk_10/wipo_inn_bkk_10_ref_indonesia.pdf
45
The number of requests for substantive examination has increased steadily each year.
Notwithstanding, there were only a few patents granted to local applicants. Generally, the
number of granted patents has differed significantly between local applicants and foreigners.
Domestic granted patents have accounted for only 4.6% of the total since 2005. (Table 14)
Table 14 Numbers of patent granted from 2003 to June 2010
Year
Patent
Petty Patent
Domestic
Foreign
Total
Domestic
Foreign
Total
2003
16
2,828
2,844
61
67
2004
33
2,610
2,643
78
21
99
2005
24
1,634
1,658
60
13
73
2006
33
1,728
1,761
61
12
73
2007
70
1,741
1,811
79
20
99
2008
219
1,944
2,163
69
204
273
2009
102
2,282
2,384
81
25
106
2010
508
4,997
5,505
251
38
289
Total
1,005
19,764
20,769
740
339
1,079
Source: DGIPR45
Table 15 Number of patent refused and withdrawn from 2003 to June 2010
Patent and Simple Patent
Year
Refused
Withdrawn
2005
Domestic
63
Foreign
44
Total
107
1,291
2006
37
19
56
817
2007
13
13
26
1,527
2008
16
21
547
2009
38
58
96
1,254
2010
29
84
113
2,121
185
234
419
7,557
Total
Source: DGIPR
Of the total refused applications, the percentage of refused foreign applications (55.8%) is
slightly higher than that of domestic applications (44.2%). For the period of 2003 to June
2010, the number of refused applications was a negligible 1% of the total applications.
Withdrawn applications, on the other hand, accounted for 17.3% of the total.
45
Noerhadi, Report of the 58th Council Meetings, 4.
46
The annual percentage of pending applications between 2005 and 2010 was around 5.2% of
total patent and petty patent applications.46
Patent Procedures
Chart 12 shows the complete Indonesian patent procedure, including formality examination,
search, and substantive examination. The first stage of patent procedure in the national phase
is filing. Patent applicants must submit their application in the Indonesian language on the
prescribed forms to the Patent Office. Foreign patent applications must be filed by a
registered patent consultant in Indonesia. The filing process adheres to the first-to-file
principle, meaning that a patent, if approved, will be granted to the first person to file.
The typical duration for the entire process is six years: 36 months before the request for
substantive examination and 36 months after that request. This substantial pendency period is
explained by the aforementioned large volume of pending applications. The DGIPR has taken
an initial step toward maximizing process efficiency by adopting a standard language of
formed paragraphs for notifying applicants on the status of their claims.
According to DGIPR, the average time required to register a patent is 5.6 years under the
normal method and 4.9 years via PCT, which expedites the international search and
international preliminary examination phases. In reality, many applicants experienced a
longer pendency period of 7-8 years.47
Table 16 Number of Application per Patent Examiner
2006
2007
2008
2009
2010
No. of Application
4,880
5,377
5,381
4,803
5,652
Patent Examiners
70
70
70
72
71
Application/Examiner
70
77
77
67
80
Source: Calculated from DGIPR data
In 2010, there were 71 patent examiners. Table 11 shows that most of the examiners have a
technical background, with 77.5% of examiners possessing a science degree. Most of the
examiners are also very experienced; 57.7% have more than 15 years of experience and
19.7% have between 10 and 15 years. Nonetheless, examiners will still benefit from trainings
on patent searching and examination. The handling of domestic files, for which no search
reports exist, takes a significantly longer time than do foreign files. On average, a patent
examiner is responsible for 74.2 applications per year, spends 20 hours on a given file, and is
able to handle 60 full files per year. The examiners follow EPO guidelines for search and
examination.
A shortage of examiners is reportedly the most common problem leading to delays in the
patent procedure; these delays are exacerbated by the inadequacy of existing search tools,
Internet connection problems, and computer hardware problems.
46
47
Expert opinion
47
Furthermore, applications in emerging fields, such as nanotechnology, biotechnology, and

inventions related to computers, require more time and specialized knowledge from
examiners. To alleviate this problem, Indonesia received technical trainings for patent
examiners in new fields from WIPO-KIPO and WIPO-JPO, among others. For general
training of patent agents, the program is run by local universities in cooperation with the
Ministry of Education for around six months at a fee of approximately IDR 25 million (USD
2,500).
Most patent applications that failed to be granted were incomplete or poorly drafted. Some
applications are improperly translated into Bahasa Indonesian, causing the misunderstanding
of claims and the protection of patents. Consequently, heightened public awareness, together
with applicant or patent agent training, would help to decrease the number of application
failures.
Chart 12 Procedure of Patent Application

Patent Application
Correction has been done
Formalities
Examination
Documents do
not meet the
requirement
Chances for
Correction
Application Considered
To Be Rejected
Correction has
not been done
Publication
No Request for Substantive Examination
Requesting a Substantive
Examination
Result/Report
Granted
To Be Rejected
Notification
Substantive examination
result does not meet the
requirement
Unsatisfied
Answer
To Be Rejected
File an
Appeal
Appeal Is Granted
Appeal
Commission
Published in the
BRP
Unsatisfied
Appeal Is Rejected
Commercial
Court
Source: DGIPR Regional Intellectual Property Office and Widjojo Law Firm & Consultant
48
Court for
Cassation
A point of concern that remains is the excessive, unnecessarily long final phase of the patent
procedure. While examination is squarely the responsibility of the Patent Department, the
flow of patent files from approval to issuance is out of the Departments hands. All patent
certificates and other written communications to the applicants must be signed, and while
patent examiners may sign communications, only the Director of the DGIPR is permitted to
sign the certificate. With an average of 4,377 grants issued per year, each entailing various
written communications, official letters and a certificate, the required formal approval creates
a major bottleneck within the patent system. However, DGIPR intends to solve the problem
by changing the examination procedure in 2011. Previously, an examination required three
examiners for each application, and stipulated that the decision be signed by the director.
Moving forward, there will be only two examiners per application, and the formality
examination can be signed by the head of the patent division. This streamlining of the
procedure should decrease registration time.
To decrease registration times further, oral proceedings between applicants and examiners
must be facilitated continually in order to enhance understanding of how to draft applications
and claims. DGIPR expects that this method will contribute significantly to solving the
backlog issue in 2011.48
Just this year, DGIPR has launched two special programs aimed at reducing the backlog of
applications. First, the offices administration has allowed for examiners to work extra hours
at increased pay; also, if applicants or their agents delay in responding to application issues,
the office now has the power to reject the application.
Trademark Applications
The number of trademark and service mark applications filed between 2000 and 2010 is
shown in Table 17. Domestic trademark applications represent 75.4% of the total applications
and grew at an average rate of 15.5% per year.
From 2000-2010, 70.8% of trademark applications were granted, whereas 14.6% were
refused, and only 0.3% were withdrawn. Over this period, approximately 1.3% of
applications were still pending annually.49
The main reasons that trademark applications fail to result in registration are due to bad faith.
The first-to-file system adopted by Indonesia has led to abuses of well-known foreign
trademarks by local malefactors, who register these marks long before actual sales start. Such
opportunistic applications often file the applications without obstacle unless the genuine
owner has diligently filed early in Indonesia. Sometimes they are able to circumnavigate
marks in other classes, as the trademark office search systems are inadequate. Some pirate
registrations are used on lookalike products; others are held until the real owner buys the
mark.50
48
The law stipulates a backlog as an application that is still in the process after 36 months from the filing date.
49
50
Kusumadara, Afifah. Problems of Enforcing Intellectual Property Laws in Indonesia

http://www.ialsnet.org/meetings/business/KusumadaraAfifah-Indonesia.pdf (accessed April 18, 2011).
49
Moreover, some trademark applications did not meet legal requirements, also causing the
application to be refused. For example, the mark may contradict public order, morality, or the
existing law; the mark may be public property; or the mark may be similar in principle or
entirety to other registered marks or well-known marks for the same goods.51
Table 17 Statistics on Application and Registration of Trademarks and Service Marks
(2000 - 2010)
Application
Year
Registered
Refused
Withdrawn
14,841
22,098
923
180
12,520
38,648
35,878
3,969
117
20,423
9,581
30,004
23,356
2,421
84
2003
28,317
8,023
36,340
35,353
3,527
83
2004
35,626
13,685
49,311
23,187
3,044
16
2005
30,734
10,082
40,816
28,404
3,563
94
2006
36,644
16,005
52,649
24,677
6,291
105
2007
32,181
11,078
43,259
34,165
11,519
142
2008
33,555
14,051
47,606
26,543
11,900
130
2009
37,759
5,018
42,777
25,087
9,102
127
2010
43,269
4,525
47,794
35,774
8,668
214
Total
334,878
109,167
444,045
314,522
64,927
1,292
Domestic
Foreign
Total
2000
10,242
4,599
2001
26,128
2002
Source: Directorate General of Intellectual Property Rights, Indonesia
The complete trademark procedure is presented in Chart 13. The nine-month substantive
examination is essential. The shortest possible duration of the procedure is 16 months, when
there is no opposition to the application. The longest possible duration is 24 months. The
term of protection lasts 10 years from the filing date. A renewal application must start 12
months before the end of the protection period.
The average time to register a trademark is 18 to 24 months.52 Taking the Office for
Harmonization in the Internal Market (OHIM) as a benchmark, 24 months is 33% longer than
the 18 month limit within which the OHIM must notify WIPO.
51
Budiardjo, Ali., Nugroho and Reksodiputro, Guide to Doing Business in Indonesia, March 2005, p.25-26.
http://www.prac.org/newsletters/Ali_2005.pdf (accessed April 18, 2011).
52
Patrick Mirandah Co. (PMC), www.mirandah.com (accessed January 23, 2011).
50
Chart 13 Procedure of Trademark Application (Based on Law No.15 Year 2001 on

Trademark)
REGISTRATION
(Article 7-17)
SUBSTANTIVE
EXAMINATION
30 days since date of receipt (Article 18[1])

Substantive Examination for 9 (nine) months [Article
19(3)]
Publication in BRM [Article 20 [1])
PUBLICATION (Article 21)

10 days after approval to register
REJECTED
Written Notification (30 days after the date of receipt)
PUBLICATION (Article 22)
OPPOSITION
3 months after published in BRM
(Article 24)
REBUTTAL
(Article 25)
2 months
A copy of this correspondence must be

sent to applicant within 14 days from
receipt (Article 24[3])
ACCEPTED
RE-EXAMINATION
REJECTED
(Article 26 [2]) for 2 (two) months
REJECTED
REGISTERED
DELETION
(Article 61)
CANCELLATION
(Article 68)
(Article 27[1])
30 days after end of
publication
APPEAL (Article 31[3])

for 3 (three) months
ACCEPTED
REJECTED
REJECTED
ACCEPTED
10 years
RENEWAL
Starting in 12 months before end of mark protection
(Article 35[2])
Source: DGIPR Regional Intellectual Property Office and Widjojo Law Firm & Consultant
The draft Trademark Bill, which was circulated in March 2010, aimed at reducing the
registration time to 12 months. Shortening the process would occur through 1) allowing
trademark applications to be published for opposition purposes before examination by the
Trademark Office, and 2) shortening the timeframe for reviewing an application from 9 to 6
51
months.53 Due to computer hardware problems and the inadequacy of existing search tools,
the shorter timeframe is expected to be difficult to achieve unless the IT problems are
effectively addressed. Although Indonesia is not yet a member of the Madrid Protocol, this
new bill would provide for filing using the Madrid Protocol.
Reportedly, the possible problems that could lead to delays in the patent procedure, in order
of importance, are computer hardware problems, inadequacy of existing search tools, lack of
qualified examiners and lack of experienced examiners.
Table 18 Number of Applications per Trademark Examiner
No. of Application
Trademark Examiners
2006
52,649
43
1,224
2007
43,259
43
1,006
2008
47,606
43
1,107
2009
42,777
43
995
2010
47,794
43
1,111
Source: Calculated from DGIPR data

Examiners utilize prior art search tools from Esp@cenet (European Patent Office),
PATENTSCOPE (WIPO including PCT) and USPTO. DGIPR also received assistance
from EPO, and is currently using the Global Patent Index (GPI) for two year trial basis at no
cost.
Additionally, Indonesia employs the Industrial Property Digital Library (IPDL) internal
system, a realization of cooperation between the Ministry of Law, DGIPR, and Japan
International Cooperation Agency (JICA), to search for domestic information on patents and
trademarks. Applicants and examiners can search patents, petty patents and trademarks by
filling out search conditions on the IPDL website. However, the existing national database is
insufficient. Such searches are limited as the system only shows the bibliography of the
application.
Trademark data at the General Register of Trademarks can be searched to discover conflicts
with previously registered marks. The search process, however, can take a long period of
time since neither domestic nor foreign prior trademark data are computerized. Pending
trademark applications are published in the Trademark Journal, and a search of back issues of
this journal may be requested. However, these data have not yet been computerized and,
consequently, the search must be performed manually. This process can take three to four
months. Registered trademarks are published in the State Gazette.
53
Muhammad Iqsan Sirie and Eli Moselle, Upcoming Revision to Trademark Law May Not Solve Slow
Registration Process, (2010), http://en.hukumonline.com/pages/lt4bcda930e4035/upcoming-revision-totrademark-law-may-not-solve-slow-registration-process (accessed January 23, 2011).
Humphreys & Co., Malaysia and Indonesia Trademark Update, WTR Weekly Trademark Update, September
9, 2010, http://www.humphreys.co.uk/articles/trade_marks_1563.htm (accessed January 23, 2011).
52
DGIPR is equipped with 660 computers and 38 servers. The majority of the computers have
Intel Core 2 duo processors with an Internet speed of 4 Mbps. There were significant
improvements in the offices IT equipment in 2009 as approximately half of the computers in
the patent division were replaced with new machines. The hardware problem has been
partially solved; however, due to the current situation in which old computers remain and the
system is occasionally impaired by viruses, IT assistance is still needed.
In April 2010, the DGIPR signed a MOU with the Korean Intellectual Property Office
(KIPO) on technological cooperation to develop the IP office automation system based on the
technologies used by KIPO, and valued at USD 40 million.54 However, in late December
2010, the Minister of Justice and Human Rights Affairs, together with the Director General of
IPR, reviewed the MOU, as the system was considered expensive and different from others
being used throughout the region. In 2011 the Director General of IPR signed a MOU with
WIPO for a new IPA system that is used by other ASEAN IPR offices.
In the near future, the DGIPR also plans to develop additional automated programs as
follows:
E-filing an electronic filing system for patents, trademarks, industrial designs and
copyrights
IPR E-gazette digital IPR publication information using media Compact Disk
Other developments:
- DGIPR Corporate Portal and Knowledge Center Development
- WAN and DGIP net
- Data Warehouse and Disaster Recovery Center
- Electronic IP Documentation Code Standard and IP Documentation Type
- Remote connection of mobile offices55
Enforcement
The responsibility of DGIPR in the area of enforcement is limited, making it essential for the
Commercial Court and State Police to enforce the laws. However, the DGIPR does have a
role to play in the enforcement of IPR, including:
Making experts available to the Court and Police

Representing the government in civil disputes
Investigating any complaints concerning IPR
Sending warnings to the managers of shopping centers and stores regarding the sale of
counterfeit products
Sending letters to companies regarding the repercussions of buying pirated computer
systems
Organizing specialized training courses for law enforcement officers, including
police, public prosecutors, judges and civil service investigators.
54
Korean Intellectual Property Office, Korean IP Office Automation System Exported to Indonesia,
Korea.net, May 7, 2010, http://www.korea.net/news.do?mode=detail&guid=46494 (accessed January 26, 2010).
55
World Intellectual Property Organization, http://www.world-intellectual-propertyorganization.com/edocs/mdocs/aspac/en/wipo_reg_ip_mnl_10/wipo_reg_ip_mnl_10_ref_u_indonesia.pdf
53
As of April 2011, DGIPRs newly established Directorate of Investigation is generally

responsible for law enforcement, and especially for crime investigation. Most cases involve
trademarks, copyrights, and designs, such as spare car parts, with only 2-3 cases of patent
infringement per year.
Chapters XII, XIII, XIV, and XV of the Patent Law No. 14 are explicit on the subject of
enforcement and disputes, and essentially give responsibility for the adjudication of IP crimes
to the Commercial Court. Upon a decision of that court, a cassation (appeal) may be filed
with the Supreme Court.
The law contains some criminal provisions in the event of infringement. According to article
130 of the Patent Law, Any person who deliberately and without right infringes the rights of
a patent holder shall be sentenced to imprisonment of at most four years and or a fine of at
most IDR 500,000,000. For simple patents, sentences can be as severe as two years
imprisonment and fines of up to IDR 250 million.
Trademark Law No.15, Chapter XV, Articles 90 to 94 includes civil and criminal provisions
for trademark infringement. The maximum fine for trademark violations is IDR 1 billion
and/or a maximum five years of imprisonment. Apart from this, Article 1365 of the Civil
Code provides a basis for punishing all unfair competition, including IP infringement,
whereas Article 382bis of the Criminal Code provides a basis for action against misuse of
trademarks or trade names. Trademark cases can be settled through the Commercial Court,
arbitration or other alternative forms of dispute resolution, such as negotiation, mediation and
conciliation.
The responsibility for investigation belongs to Indonesias State Police (POLRI) and civil
servant investigators (PPNS). Nevertheless, alternative dispute resolution methodologies,
such as mediation, arbitration and conciliation, are available and encouraged in place of
litigation through a Court of Law.56
In civil procedures, the General Courts are responsible for IPR cases. Trademark, patent and
copyright disputes are under the jurisdiction of Central Jakarta District Court. An appeal can
be filed in the Supreme Court of Indonesia with special panels of justices. This was so
determined in order to have IPR cases professionally adjudicated by specialized justices.57
In the past, Indonesia has been known for its weak legal enforcement of IP laws. The
enforcement of the laws was considered ineffective due to a lack of human and financial
resources. However, since 2006, the Indonesian government has set up a national taskforce to
deal more effectively with IP infringement under Decree No. 4 of 2006 regarding the
Establishment of a National Task Force. All activities of the national taskforce are supposed
to be in accordance with Intellectual Property National Policy (IPNP). In accordance with the
taskforces strategic direction, all related government agencies are working together,
especially the police, the customs and the public prosecutors office. There is supposed to be
a system for sharing IP counterfeiting cases between these agencies as well.58
56
DGIPR, Enforcement of Intellectual Property in Indonesia, 3-4.

Mustafa, Marni Emmy. Enforcement of Intellectual Property Rights in Indonesia, March 2006.
http://www.training.iprsupport-jpo.jp/en/modules/smartsection/makepdf.php?itemid=62
58
Brett McGuire, Indonesia IP Taskforce Steps up to the Plate, The WTR Daily Newsletter, February 4,
2010, http://www.iprights.com/content.output/913/913/Resources/Articles/Indonesia%20%20IP%20taskforce%20steps%20up%20to%20the%20plate.mspx (accessed January 21, 2010).
57
54
Moreover, the director general of DGIPR intends to speed up the case decision process of the
IP courts from four months to only one month, and intends to increase the penalties for
infringement as well.59 Although achieving this will be a challenge, the effort is a good start
toward needed improvements.
Recommendations
1. Establish the DGIPR as an autonomous body so that it may keep all user fees it
receives and exercise control over important operational aspects such as examiner
recruitment
2. Reduce backlogs and pendency time by improving access to search tools and
eliminating bottlenecks created by unnecessary formal approvals
3. Improve the IT infrastructure significantly for administrative management procedures
4. Strengthen staff training, particularly in the areas of PCT handling, examination and
IT
5. Allow for convenient communication between applicants and patent examiners in
order to speed up the patent registration process
6. Improve database, hardware, and search tools
7. Improve training for examiners and administrative staff
8. Increase public awareness and applicant or patent agent training in order to decrease
the number of application failures
59
Brett McGuire, Intellectual Property Revamp Holds Much Promise, The Jakarta Globe, November 17,
2010, http://thejakartaglobe.com/business/brett-mcguire-intellectual-property-revamp-holds-muchpromise/342204 (accessed January 21, 2010).
55
III. LAOS
Overview
In 2010, the GDP of the Lao Peoples Democratic Republic reached USD 15.68 billion. With
a population of 6.47 million, per capita GDP was USD 2,400, when adjusted for purchasing
power parity. Laos real GDP growth rate increased from 7.5% in 2009 to 7.8% in 2010. The
composition of GDP, by sector, was 38.5% from services, 31.7% from industry and 29.8%
from agriculture. The countrys major trade partners were its neighbors, Thailand, China and
Vietnam. Principal export commodities were wood products, coffee, electricity, tin, copper
and gold, while key imports included machinery and equipment, vehicles, fuel and consumer
goods.60
Legal Framework
IP policy and administration in Laos have made significant progress in the past five years.
Laos has received useful assistance from organizations such as the WIPO, which helped
establish the countrys IP legal framework and provided instruction on its operation.
Additionally, the ECAP II, a program funded by the European Patent Office (EPO) and the
Office for Harmonization in the Internal Market (OHIM), assisted Laos in enhancing its
knowledge regarding the benefits of developing IP legislation. Concurrently, the French
Government also provided support on the development of the Geographical Indication
System in Laos, which included assistance in drafting and promulgating related laws and
regulations. Moreover, IP professionals, supported by Japans Association for Overseas
Technical Scholarship (AOTS), assisted foreigners in obtaining registrations for patents and
trademarks in Laos.
In order to develop an IP regime in Laos, it is important to ensure that all established laws,
regulations, and decrees are implemented. In addition, the dissemination of knowledge,
particularly among politicians and high-ranking officials, will be useful moving forward.
Furthermore, the importance of IP in economic development must be promoted within both
the public and private sectors, while the general public must be made aware of relevant
benefits for product and service quality and safety.
The Lao government recognizes the important role of IPR in the nations development.
Consequently, it has sought to modernize and strengthen its IP administration. IP protection
is seen as an incentive for investment and economic development.
Laos is currently a member of WIPO and the Paris Convention. In 2006, Laos joined the
Patent Cooperation Treaty (PCT). As of 2010, the country is also preparing to join the Bern
Convention for the Protection of Literary and Artistic Works.
There have been three key developments in IP legislation in Lao:
60
Central Intelligence Agency, https://www.cia.gov/library/publications/the-world-factbook/geos/la.html,

(accessed on March 14, 2011).
56
The Prime Ministers Decree on Trademark Registration No. 06/PM dated January
18, 1995, and the expanded regulation No. 1466/STEA-PMO amended on March 7,
2002. Both were intended to improve protection of trademarks.
The Prime Ministers Decree on Patent, Petty Patent and Industrial Design No. 01/PM
dated January 17, 2002, and the expanded regulation No. 322/STEA-PMO.
The Intellectual Property Law of the Presidential Office of Lao PDR No. 06/PO dated
January 14, 2008.61
In 2010, Lao was in the process of completing a comprehensive law to protect patents, utility
models, industrial designs and other areas of IPR in order to more fully meet its obligations
under the 1979 Paris Convention for the Protection of Industrial Property, to which the
country acceded in 1998.

In 1990, the government established the Department of Intellectual Property, Standardization
and Metrology (DISM) within the Science, Technology and Environment Agency (STEA),
which has since come under the National Authority for Science and Technology (NAST),
attached to the Prime Ministers Office. The DISM, which has branch offices in all provinces,
consists of five divisions: the Industrial Property Division (IPD), the Copyright Division, the
General Affairs Division, the Standards and Quality Division and the Metrology Division.
The IPD is subdivided into four sections: Trademark and Geographical Indication, Patent and
Petty Patent, Industrial Design and Plant Variety Protection.
Chart 14 Organization Chart of DISM
Director General
Metrology Division
Standard and Quality

Division
Deputy Director General
General Affairs
Division
Copyright Division
Industrial Property
Division
Source: Youtrichanthachak, Sida. Digitalization and Dissemination of Intellectual Property (IP) Information
and Utilization of Effective Search Tools.62
61
WIPO and UNESCAP, Current Intellectual Property Situation in Laos, October 2008,
http://www.unescap.org/tid/projects/iprt_lao.pdf (accessed on March 14, 2011).
57
DISM has four main roles: 1) to administer IP matters in Lao; 2) to encourage and promote
inventiveness, creativity, technology transfer and technological research; 3) to cooperate with
international organizations and other countries in the field of IP; 4) to draft IP laws and
regulations to ensure the protection of IPR.
In 2010, the IPD had roughly 15 employees, excluding staff in provincial offices. Each
provincial office has at least two staff members, and some offices have trainees to assist with
rising workloads.63 The number of patent examiners has remained constant, at two since
2006, whereas the number of trademark examiners fell to two persons in 2010. All examiners
have bachelors degrees in non-science fields. Both trademark examiners have less than five
years of experience, while the patent examiners have between 5 and 15 years. Although a
computer system is important to the search and registration of trademarks, the IP office has
only one IT staff person to support the system. More details are shown in Table 19 Table 21.
Currently, the limited staff suffices, given the small volume of applications received. The
starting salary of patent and trademark examiners is above the countrys minimum wage at
KIP 670,000, whereas the highest examiner salary is KIP 810,000. 64 While these government
salary rates are low compared to salaries in the private sector, job security for government
workers is higher.
DISM is funded by, and sends revenues to, the central government. Its annual revenues in
2010 were KIP 80 million, an increase of 60% from total revenues in 2006. However, in the
past its revenues always exceeded the budgets allocated from the government. The allocated
budgets were viewed as inadequate to make necessary improvements to DSIMs services.
Table 19 Industrial Property Division Personnel
Number of staffs
Type of personnel
2006
2007
2008
2009
2010
Patent, Petty Patent and Industrial

Design Section
Trademark Section
IT staff
Total
11
12
13
15
15
*Patent examiners (assistant

examiners included)
*Trademark examiners (assistant

examiners included)
Source: NAST
62

http://www.wipo.int/edocs/mdocs/aspac/en/wipo_reg_ip_mnl_10/wipo_reg_ip_mnl_10_ref_u_lao.pdf (accessed
March 14, 2011)
63
The USAID funded, An Assessment of the Laoss Intellectual Property System, 68.
64
The minimum wage of the country is currently at KIP 348,000. Laos Voices, Minimum wage increase
unlikely to affect inflation, April 13, 2011, http://laovoices.com/2011/04/13/minimum-wage-increase-unlikelyto-affect-inflation/ (accessed May 23, 2011)
58

Less than 5
years
5-10 years
10-15 years
15-20 years
More than
20 years
Patent
examiners
Trademark
examiners
Office
Source: NAST
Degree
Office
Bachelor
Master
Doctoral
High
school
Science
Nonscience
Science
Nonscience
Science
Nonscience
Patent
examiners
Trademark
examiners
Source: NAST
Table 22 Range of Salary Earned by Patent and Trademark Examiner
IP Examiners
Starting
Highest
Patent examiner
KIP 400,000
KIP 600,000
Trademark examiner
KIP 400,000
KIP 600,000
Source: NAST
Patent Applications
Since 2005, the IPD has received more than 100 patent applications in total. The Division has
received 1 PCT application since 2007, the year Laos joined the treaty. Foreign applications
comprised the majority, representing more than 90% of total applications over six years.
Most of the domestic applications were for petty patents. As DISM is still awaiting results
from international search reports, no patents have been granted by the office to date.
59
Table 23 Lao Patent Applications and Registrations

Applications
Year
Patents
Granted
Refused
Withdrawn
Patents
Patents
Patents
Domestic
Foreign
Total
2005
2006
11
13
2007
21
23
2008
37
38
2009
18
18
2010
20
20
Total
111
119
65
Source: NAST and DISM

Note: Data excluded petty patents as there was no filing application.
Patent Procedure
Patents in Laos must fulfill the three general criteria of novelty, inventiveness and industrial
application. To obtain patent protection, applications for registration must be submitted to the
IPD. Priority is given to the first person who files an application for a particular invention. An
individual or legal entity of a foreign country seeking to file a patent application in Laos must
apply through a representative authorized and permitted by the DISM. The application for a
patent or petty patent must be submitted in the Lao language. In the case that the applicant is
a foreigner, the application can be submitted initially in English or French, but a Lao
translation must be submitted within 90 days from the date of filing.
After filing the application, the IPD will conduct a formality examination only, and will then
rely on foreign patent offices and the WIPO for a search and substantive examination. Patent
registration takes approximately 50 months from filing date to granting; however, the
registration period for petty patents takes only 12 months. The protection period for patents is
20 years from the filing date, with 10 years of protection provided for petty patents.66
The primary reasons for delays during the patent procedure are all related to IT and include
an insufficient Internet connection speed, computer hardware package, and internal database.
A secondary problem is a shortage of experienced and qualified examiners. A lack of trained,
professional examiners and officials with science degrees inhibits the offices efficiency.
While the number of patent examiners has remained stable since 2006, the number of
applications fluctuated over the period, affecting the ratio of applications per examiner. The
ratio, however, has generally remained acceptable; therefore, the problem most likely stems
from the education and experience of the examiners.
65
The ASEAN Project on the Protection of Intellectual Property Rights (ECAP III), http://www.ecapproject.org/archive/fileadmin/ecapII/pdf/en/information/laos/lao_ip_statistics_2000_2007.pdf (accessed March
14, 2011)
66
Tri Viet & Associates, http://www.trivietlaw.com.vn/webplus/viewer.print.asp?aid=119&l=EN, (accessed on
March 14, 2011).
60

2006
2007
2008
2009
2010
No. of Application
13
23
38
18
20
Patent Examiners
6.5
11.5
19
10
Source: calculated from NAST data
In 2010, the office received 2,417 trademark applications, a 66% increase from the previous
year. Registrations have followed a similarly dynamic trend. Total foreign applications have
greatly exceeded domestic applications every year, accounting for 95.3% of all applications,
on average. Interestingly, there were no withdrawn applications in Lao, and only six
trademark applications were refused.
Table 25 Number of Trademark Applications and Registration (2005-2010)
Year
Applications
Granted
Trademarks
Trademarks
Refused
Withdrawn
Trademarks
Trademarks
Domestic
Foreign
Total
Domestic
Foreign
Total
2005
70
1,714
1,784
42
996
1,038
2006
91
1,472
1,563
97
1,075
1,172
2007
81
1,683
1,764
58
1,366
1,424
2008
97
2,096
2,193
108
3,737
3,845
2009
88
1,508
1,596
80
936
1,016
2010
107
2,310
2,417
110
1,461
1,571
Total
534
10,783
11,317
495
9,571
10,066
Source: NAST and Youtrichanthachak, Sida. Digitalization and Dissemination of Intellectual Property (IP)
Information and Utilization of Effective Search Tools.67
Laos has adopted the first-to-file system of trademark registration. Once the trademark
owner files an application and the application has been received, the DISM will issue a filing
number with filing date to the trademark owner. A formality examination will be conducted
by trademark examiners to identify any prior registered marks that are identical with or
similar to the claimed mark. If the application does not meet requirements, or if the mark
conflicts with a previously registered mark, the Trademark Registry will inform the applicant
to amend the trademark within 90 days of the date of the notice.
67

on March 15, 2011)
61
If the mark passes the formality examination, an officer will assign a trademark number and
charge a fee to the mark owner. Next, a substantive examination of the trademark will be
conducted in accordance with the Trademark Decree Articles 10 and 12. If the mark is not in
order, an officer will notify the trademark owner of the objection to registering the trademark.
The owner of the trademark must then correct the problem, or prepare further documentation,
as required by the registration office, and re-submit the mark application. If the trademark
examination is in proper format and passes the examination, the trademark will be registered
and advertised in the Official Trademark Gazette. (Chart 15)
A Certificate of Trademark Registration is usually granted within six months of the
application date. Renewal applications take three months to process. The official charge for
registration of a trademark in Laos is KIP 1,120,000, and must be paid at the filing stage.
Once the trademark has been registered and published, the owner of any conflicting mark has
the right to file an opposition that will be officially reviewed and judged by the DISM. The
parties have the right to appeal to the DISM, the Organization for Settlement of Disputes, or
the courts. The opposition can be based on the grounds of prior registration, prior application
or non-use.
Primary reasons for delays during the trademark procedure, as in the case of the patent
process, involve IT issues. Insufficient search tools pose the biggest problem, followed by
slow internet connections and outdated computer hardware. The average ratio of applications
per trademark examiner fluctuated, with the highest ratio in 2010 at 1,209 applications per
examiner. The current number of trademark examiners is a pressing issue, as experienced
examiners are often promoted into different offices, and new officers receive neither a formal
training course nor a manual.
Table 26 Number of Application per Trademark Examiner
No. of Application
Trademark Examiners
2006
2007
2008
2009
2010
1,563
1,764
2,193
1,596
2,417
521
588
731
399
1,209
Source: calculated from NAST data
62
Chart 15 Lao Trademark Procedures

Trademark owner files
application
Formal Examination
Allocate TM number,
issue receipt and capture
data
Owner makes changes

as required
No
Substantive examination of
application
Under examination in
relation to Decree Article
10 and 12
No
Owner responds to
objection from examiner
In order
Yes
In order
Yes
Register of Trademark
No
Advertised registration in
Official Gazette
Refusal to register
Source: http://www.wipo.int/ip-development/en/pdf/asean/lao_pdr.pdf

With the support of WIPO and Japanese Funds-in-Trust, Laos uses the WIPOs Industrial
Property Automation System (IPAS) to access all IP offices for information on trademarks,
patents, petty patents and industrial designs for search, examination, granting and publication.
The system was developed by the Infrastructure Modernization Division of WIPO as part of
the world IP infrastructure.68 However, the problem of the IPAS system is that it does not
support the Lao language.69 The DISM also uses search tools from ESPACE(R) ASEANPAT
database, Esp@cenet, IPDL, USPTO, PATENTSCOPE and OHIM. Notwithstanding,
68

http://www.wipo.int/global_ip/en/activities/technicalassistance/ipas.html (accessed on March 16, 2011).
69
Sida Youtrichanthachak, Digitalization and Dissemination of Intellectual Property (IP) Information and
Utilization of Effective Search Tools,
on March 15, 2011).
63
existing search tools are insufficient for searching prior art, particularly for trademark
examinations.
The DISMs IT system has developed significantly with assistance from international
organizations, especially from WIPO. The DISM is equipped with ten computers, two servers
and six scanners. The ratio of computers to servers, equipped with Windows 2003 and 2008,
is relatively high.. Still, some of the computers are old, and the number of computers is
insufficient for the 15 staff in the division. Specifically, five staff members lack computers at
their work stations. Also, the Internet connection is extremely slow. Faster Internet service is
available from private service providers, but DISM lacks the budget to subscribe to these
services. When conducting a patent search online, it takes at least three hours to access the
main webpage. As a result, Internet connection is the key problem leading to delays in the
patent and trademark procedures.

The Lao IP Law gives protection rights to IP owners and provides remedies for violations.
The first step is an administrative remedy according to Article 115, which is an
administrative process that is more efficient than seeking a judicial decision. The owner and
violator can negotiate through an economic dispute resolution committee if the administrative
remedy fails. If conflict persists, a court proceeding will be used to resolve the dispute,
according to Article 117 of the IP Law.
Upon receiving a petition, the DISM will assign an official to collaborate with the Trade
Department, Customs Department, Economic Police and other relevant bodies in discussing
and dealing with the investigation. Based on the merits of the case in enforcement
proceedings, the office will invite the concerned parties to hear the resolution and receive a
written justification of the decision. If the parties disagree with the resolution, they may file
an appeal with the court. In the past, most cases of trademarks infringement have been settled
by DISM or higher authorities such as NAST and the Prime Minister's Office; only one case
(cotton) has been resolved by the Economic Conciliation Arbitration under the Ministry of
Justice, and no appeals have been filed to date.70
With the regional integration of IP systems and the increasing volume of trade and
investment, it is expected that the number of property infringement cases will increase in
Laos. To deal with this, several agencies have been given responsibility for the enforcement
of IPR. These agencies include NAST, the Peoples Court, the Public Prosecutors Office, the
Customs Office and the Economic Police. Each government agency, however, has distinct
responsibilities. NAST formulates enforcement policies and strategies whereas the Economic
Police perform IP inspections. Another important agency is the Economic Arbitration Office
under the Ministry of Justice, which is responsible for resolving disputes before they are filed
in court.71 DISM is the focal point for receiving complaints and communicating them to the
responsible authorities for further investigation.
70
71
IP experts opinion.
The USAID funded, An Assessment of the Laoss Intellectual Property System, 53-54.
64
Recommendations
1. Laos still requires more assistance from, and experiential exchanges with, other
country offices to improve the use of IT in its IP system. The main concerns include
modernization of the IP System, and enhanced automation of the administration of
trademarks, patents and industrial designs. Investments to ensure adequate
administrative infrastructure for DISM, especially in IT solutions including enhanced
Internet connectivity and IT equipment and staff, should be made.
2. Numbers of patent and trademark examiners need to be increased along with
necessary trainings. A training manual should be created for both patent and
trademark examiners.
3. The DISM should compile clear and streamlined office procedures for the
administration of all Industrial Property matters in written manuals.
4. Ensure compliance with PCT legislation.
5. An extended training program is required to meet the needs of the various government
and non-government stakeholders in the IP system, including substantive legal
training for lawyers in the fields of trademarks, patents, utility models, and industrial
designs, training in the drafting of IP legislation, and specialized training for
examiners, copyright agents, judges and custom agents.
6. Increase public understanding and awareness concerning the benefits of IP protection
as a mechanism to promote and encourage socio-economic development in Laos.
65
IV. MALAYSIA
Overview
Malaysia is a middle-income country with a population of 28.3 million. In 2010, it reported a
GDP of USD 416.4 billion, and its per capita GDP, adjusted for purchasing power parity
(PPP), was USD 14,700. The three sectors contributing most to GDP were services (49.3%),
manufacturing (41.6%) and agriculture (9.1%).
Malaysia has had strong FDI, amounting to USD 77.4 billion in 2010. Inflation has remained
low at 1.8%, and the real growth rate was 7.1% in 2010. The export value of Malaysian
goods was USD 192.8 billion in 2010, while the import value was USD 149.2 billion,
resulting in a positive trade balance.
Exports to Singapore, China and the U.S. accounted for almost 40% of total exports, and the
imports from those countries accounted for 36.2% of total imports. Malaysias other key
trading partners were Japan and Thailand, representing 9.8 and 5.4% of exports, and 12.5 and
6% of imports, respectively. Manufactured goods made up the majority of Malaysias total
exports, alongside electronic equipment, petroleum, liquefied natural gas, wood, palm oil,
rubber, textiles and chemicals. Among key imports were electronics, machinery, petroleum
products, plastics, vehicles, iron and steel products.72
Legal Framework
Malaysia is party to the Paris and Berne Conventions, WIPO, PCT, Nice and Vienna
Agreements and is party to the TRIPS Agreement by virtue of its membership in the WTO.
As in several ASEAN countries, the issue of exclusivity of data submitted by pharmaceutical
companies to health authorities as part of clinical trials remains controversial. The risk of
drugs being used commercially without the consent of the rights holder, however, appears
low since such a practice is prohibited in the TRIPS Agreement.
In 2011 Malaysia intends to accede to the Madrid Protocol and the Budapest Treaty on the
International Recognition of the Deposit of Microorganisms for the Purposes of Patent
Procedure. The treaty will allow the deposition of microorganisms, for the purpose of filing a
patent in Malaysia, at an international depositary authority. Thus, local applicants will not
need to deposit their microorganisms abroad, reducing costs and time involved in storing
these biological materials.73
At the national level, Malaysia has a complete set of IP laws in the British tradition. As in
other common law jurisdictions, the legislation is supplemented by the general doctrines and
principles of common law and the law of equity, such as the tort of passing off and the
72
Central Intelligence Agency, https://www.cia.gov/library/publications/the-world-factbook/geos/my.html

73
Malaysian Biotechnology Corporation, Outsourcing of Biotechnology Patent Examination-cum-Training of
Patent Examiners,
http://www.biotechcorp.com.my/Pages/IDABudapestTreaty.aspx?AudienceId=1&BreadcrumID=30%7C32
66
equitable doctrine of confidential information. Legislation in the core areas of IP (patents,

copyrights and trademarks) was passed in the 1980s, and additions encompassing areas
pertaining to integrated circuits and industrial designs were passed in the late 1990s.
Malaysias patent laws provide a 20-year term of protection for patents and a 10-year term
for utility innovations. The owner of a utility innovation may extend the initial 10-year
protection for two additional five-year terms, for a total protection period of 20 years, so long
as he proves utilization of the protected material. Although there are provisions that allow
utility innovation applications to be converted to standard patent applications if so desired by
the applicant, the conversion rate has proven to be extremely low. Patentable subject matter
in Malaysia is substantially the same as in the EPO.
In 2006 Malaysia joined the PCT and adopted an amendment to the Patents Act 1983. The
most important addition to the act was section 35B, which states that any applicant who files
an application, other than an international application with the Patent Registration Office
may request that an international search be carried out on such application by the
International Searching Authority. This means that local applicants can ask for an
International Search via the Patent Registration Office.74
Additionally, there have been several amendments of regulations intended to decrease patent
pendency time and expedite the examination procedure.
Reg. 27(1) Request for substantive examination within 18 months of the filing
date
Reg. 27C(4) Observation/amendment by the applicant within two months of the
date of mailing the substantive examination report
Reg. 10(2) Statement justifying the applicants right to apply shall be a formal
requirement under preliminary examination.75
Trademarks, both registered and unregistered, are protected under the Trademark Act 1976 as
amended by Act A1138 of 2011, which provides a framework for trademark protection and
enforcement. Trademarks are also protected through the Trade Descriptions Act 2011 when
violations are related to the marks.76

The IP office reports to the Ministry of Domestic Trade, Co-operatives and Consumerism. It
was created as a corporation with full financial autonomy in March of 2003 under the name
Intellectual Property Corporation of Malaysia (IPCM). In 2005 the acronym was changed
to MyIPO.
MyIPO is run by the Director General who reports to members of the MyIPO Board. This
board consists of nine persons including executive branch government representatives,
74
Malaysian Intellectual Property Organization, Law of Malaysia, Act A1264 Patents (Amendment) Act
2006, http://www.myipo.gov.my/acts/Patent_A1264_2006.pdf (accessed January 28, 2011).
75
Ibid.
76
Humphreys & Co., "WTR Weekly Trademark Update," September 9, 2010,
http://www.humphreys.co.uk/articles/trade_marks_1563.htm (accessed on February 20, 2011)
67
academics, IP experts, a chairman and the director general. All members are appointed by
the Ministry of Domestic Trade. The corporation comprises eight divisions and a Centre.
Patent Division
Trade Mark Division
Industrial Design Division
Geographical Indications
Division
Planning and International
Relation Division
Information Technology
Division
Legal Advisory Unit
Public Relation Unit
Internal Audit Unit
Management Services Division

Corporation Secretary
Copyright and Layout Design of
Integrated Circuit Division
Intellectual Property Training Centre
MyIPO Southern Office (Johor
Bahru)
MyIPO Northern Office (Penang)
MyIPO East Coast Office (Kuantan)
Sarawak Branch
Sabah Branch
Chart 16 Structure of Intellectual Property Corporation of Malaysia

Minister of Domestic Trade, Co-operatives and Consumerism
Member of the Corporation

Corporation Secretary ------------ Internal Audit
Unit
Director General

(Corporate)

(Industrial Property)
Patent Division
Formality Section
Examination Section
(Engineering)
Examination Section
(Applied Science)
Trademark Division
Formality Section
Search and Examination
Section
Appeal Section
Opposition Section
Planning and International

Relations Division
Information
Technology Division
Legal Advisory Unit
Sabah Branch
Sarawak Branch
Industrial Design
Division
Geographical
Indications Division
Johor Branch
Pahang Branch
Source: Intellectual Property Corporation of Malaysia (MyIPO)
68
Management Services
Division
Finance Section
Administration and
Human Resource Section
Copyright and Layout
Design of integrated
Circuit Division
Intellectual Property
Training Center
Public Relation Unit
Table 27 Number of Staff by Type

Number
Type of personnel
2004**
Management and Professional
position (a)
2006
2007
2008
2009
2010
93
113
122
122
123
225
Supporting agents (b)
179
179
179
180
180
193
Total (a) + (b)
272
292
292
302
303
418
18
18
18
18
18
62**
62
62
70
79
25
25
26
26
27
152
152
159
160
208
Trademark examiners*
Patent examiners
42
IT staff
Legal officers
Others
Source: MyIPO
* Note: For examiners in Search & Examination section only.
** Note: Preliminary assistant examiners are excluded from trademark and patent examiners.
Table 28 Revenue and Expenditure of MyIPO (RM)

2006
2007
2008
2009
2010
34,949,130
38,093,730
45,422,615
40,123,610
42,070,202
From central government
2,040,660
810,000
4,500,000
1,200,000
1,110,000
From patent registration fee
9,841,205
9,834,858
11,010,855
10,766,391
12,115,549
From trademark registration

fee
18,545,860
21,790,206
24,930,074
24,023,895
24,350,582
Industrial Design
1,627,503
1,845,583
1,933,645
1,889,045
1,869,700
Others
2,893,902
3,813,083
3,048,041
2,244,279
2,624,371
Total Expenditure
34,949,130
38,093,730
45,422,615
40,123,610
42,070,202
Personnel/ Salary
11,714,992
12,203,780
14,922,596
15,076,643
15,672,985
3,494,593
13,656,467
2,441,030
2,006,350
3,264,969
Investment
Supporting
10,819,845
11,639,200
12,382,213
16,229,612
22,630,429
1,842,750
2,230,719
4,174,787
3,159,503
1,872,548
817,511
891,883
1,317,165
958,265
494,238
Total Revenue
Operating
IT
Public awareness
Source: MyIPO
69
Table 29 Number of Patent Examiners by Educational Profile

Degree
Office
Bachelor
High
school/
Diploma
Master
Doctoral
Science
Nonscience
Science
Nonscience
Science
Nonscience
Patent
examiners
69
5*
Trademark
examiners
16
Source: MyIPO
Note: * Master Degree in Intellectual Property

Less than 5
years
5-10 years
10-15 years
15-20 years
More than
20 years
Patent examiners
31
32
12
Trademark examiners
17
Office
Source: MyIPO
IP registration fees constitute the major source of MyIPOs funding. The office sends 30% of
its revenues back to the government. (Table 28)
With 79 patent examiners, of whom five graduated with a Masters in Intellectual Property,
and with more than 60% of those examiners possessing five years of experience or more,
MyIPO needs not employ outsourced patent examiners. Most trademark examiners have
extensive experience: 17 have 5-10 years of experience and one examiner has 15-20 years. In
early 2011, MyIPO recruited 16 additional patent examiners and 5 additional trademark
examiners.
A patent examiners starting salary is about RM 2,685, whereas a highly experienced
examiner receives RM 9,796. Trademark examiners receive slightly less at RM 2,443 for a
starting position and RM 9,675 with more experience. These figures are reportedly
reasonable and competitive (well above the public sector, though slightly below private
salaries). MyIPOs corporatization enabled the office to raise its salaries, boosting the staff in
terms of both quality and quantity.
International assistance also played a role in promoting MyIPOs capability and efficiency.
Some of the training and cooperation MyIPO received include:
Search and examination trainings from EPO, JPO & KIPO

Classification Training from WIPO
Free subscriptions to EPOQUENet (1 year) and GPI (2 years) from EPO
70
MyIPO also works on the applicant side by providing training for patent and trademark
agents. The training costs approximately RM 3,400 per person, and includes coursework and
exam training (RM 2,000), four paper examinations (RM 700), and a counter-filing fee of
RM 700 (a discounted e-filing payment option is also available for RM 650). If the trainee
passes the examination and wishes to become a registered patent agent, he/she must pay an
additional fee of RM 2,670 to MyIPO.
The fee is considered reasonable, given that patent agents typically charge their clients at
least USD 2,000 for a patent application, while only USD 300 of that sum is paid as a fee to
MyIPO. Most candidates take the one-week course approximately one month before the
examination, which is administered only one time each year. Financial support is available to
interested parties in certain cases, and drafting classes for local inventors are also offered.
Patent Applications
Table 31 Application and Granted Patents and Utility Innovations (2001 - 2010)
Patent Applications in Malaysia
Application
Granted
Year
Malaysia
Foreign
Total
Malaysia
Foreign
Total
2001
271
5,663
5,934
18
1,452
1,470
2002
322
4,615
4,937
32
1,460
1,492
2003
376
4,686
5,062
31
1,547
1,578
2004
522
4,920
5,442
24
2,323
2,347
2005
522
5,764
6,286
37
2,471
2,508
2006
531
4,269
4,800
187
6,562
6,749
2007
670
1,702
2,372
338
6,645
6,983
2008
864
4,539
5,403
198
2,044
2,242
2009
1,234
4,503
5,737
270
3,198
3,468
2010
1,233
5,230
6,463
204
1,973
2,177
Total
6,545
45,891
52,436
1,339
29,675
31,014
Source: MyIPO77
From 2001 to 2005, domestic patent applications totaled, on average, 7.3% of total
applications. By 2010, the proportion had increased to 18.3%, a substantial rise in patenting
activity by Malaysians (Table 31). The office has attempted to facilitate a convenient process
for local applicants, who reportedly prefer to file their patent applications in person, by
77
Intellectual Property Corporation of Malaysia, http://www.myipo.gov.my/en/resources/statistics/160.html

71
establishing three regional IP branches across the country. Because Malaysia did not join the
PCT until 2006, all foreign applications came through the Paris Convention route, although
this situation has changed since. As shown in Table 32, the number of PCT applications
received (MyIPO as the Receiving Office) has increased steadily. In 2010, PCT applications
accounted for approximately 5.17% of the total. The largest sources of foreign applications in
2009 were the United States (32.7%), Malaysia (27.4%), and Japan (16.6%).
The number of granted patents in technical fields corresponds to the industries in which
Malaysia is most active, particularly chemistry and metallurgy (Table 33).
Table 32 PCT Applications Received from August 2006 to 2010
PCT Applications
Year
2006
2007
2008
2009
2010
Total
34
93
200
224
334
885
Applications
78
Source: MyIPO
Note: MyIPO as the Receiving Office
Table 33 Patents Granted Based on Field of Technology

Field of Technology for Granted Patents
2006
2007
2008
2009
2010
948
1,179
423
656
352
Performing Ops; Transport
1,155
1,213
421
633
379
Chemistry and Metallurgy
1,275
1,748
451
837
585
Textiles; Paper
101
109
33
53
22
Fixed Constructions
197
221
98
119
75
Mechanical Engineering
448
407
159
185
120
Physics
1,042
883
293
488
269
Electricity
1,583
1,223
364
497
320
Total
6,749
6,983
2,242
3,468
2,122
Human Necessities
Source: MyIPO79
78
79
Ibid.
Ibid.
72
Chart 17 Top Five Countries for Patent and Utility Innovation Applications in 2009
1,500
1,000
500
0
USA
Malaysia
Japan
Germany
Switzerland
Source: MyIPO80
Patent Procedures
There are five stages for patent application and registration in the national phase. The first is
to submit a patent application with the Patent Registration Office in the English language or
in Bahasa Malaysian. Foreign applications must be filed through a registered local patent
agent. Malaysia, like many other countries, uses a first-to file system.
Preliminary examination constitutes the second stage. A patent application will be examined
to see whether or not it meets the formal requirements. Then, it will be passed on to a public
inspection stage 18 months after the filing date. The patent application will not be published
in this stage, but it will be made available to anyone who demands an inspection (a prescribed
fee applies) online or using the MyIPO Public Search Room.
The next stage is a formal request for substantive examination. An applicant must request for
the examination within 18 months of the filing date. The office recently reduced this period,
from two years, in order to expedite the registration process. If a patent application is of
foreign origin, the Malaysian procedure offers applicants two options. If the patent has
already been granted in one of several other offices (Australia, Japan, South Korea, the USA,
the UK, or the EPO), the applicant can ask for a full substantive examination, or they may
request the performance of a modified substantive examination that does not require a prior
art search. If an application is successful, the Patent Office will issue a Certificate of Grant of
a Patent and publish this in the Government Gazette. However, there may be various
objections to the application during the examination stage, and the applicant should respond
to the arguments against granting the patent.81 In order to maximize process efficiency and
consistency, MyIPO utilizes a standard language of formed paragraphs in notifying applicants
on the status of their claims.
Malaysias patent laws permit compulsory licensing. This will be decided on a case-by-case
basis by a board of IP experts appointed by the Government.
80
Ibid.
Henry Goh & Co. Sdn. Bhd, Q&A Patents, Trademarks, Industrial Designs and Copyright, p.9 , January
2011., http://www.henrygoh.com.my/downloads/qanda-my-en.pdf (accessed on April 22, 2011)
81
73
In theory, the average time to register a patent is 26 months via the PCT route, and up to 38
months for Paris Convention applications. For those applying on a fast track basis where
there is a clear-cut case without objections, the process could close in as few as 20 months. In
practice, using the number of patents granted in 2009, it takes an average 5.41 years to
complete the process, perhaps due to the fact that most applications were submitted via the
Paris Convention route. Also, if we disregard five patents that took between 8 and 15 years
from application to granting, the average time required for the remaining applications is
approximately 4 years.
Table 34 Number of Applications per Patent Examiner
2006
2007
2008
2009
2010
No. of Application
4,800
2,372
5,403
5,737
6,463
Patent Examiners
62
62
62
70
79
77
38
87
82
82
Source: Calculated using MyIPO data
The inadequacy of existing search tools is the most important problem leading to delays
during the patent procedure, followed by incomplete or poorly prepared applications. Despite
MyIPOs vigorous training, poor drafting of patent specifications and applications with
patentability problems are two of the most common reasons that patent applications fail to be
registered.
Focusing on the ratio of applications per patent examiner, for the period 2008-2010, on
average, each patent examiner handled 84 applications per year. The ratio is considered to be
acceptable as those examiners have extensive experience and receive trainings periodically.
Nonetheless, the examination process is unnecessarily long; an office action is typically
issued 15-20 months from the date of the request for examination, and re-examination after a
response to an office action can take 10-15 months from receipt of the response. These
extended waiting periods can dishearten applicants, who may ultimately abandon their
applications mid-review. In order to alleviate these issues it is imperative that the office
continually revamp examiner-trainings to ensure they are relevant and specific to current
business needs.
74
Chart 18 Patent Registration Procedure in Malaysia

Filing of Application
Application Accorded Filing Date

Response filed (Compliance)
Preliminary Examination
Preliminary
Examnination
Adverse Report
Application
Refuse
Compliance
Application Laid-Open for Public

Inspection
Request not filed
Application Deemed
Withdrawn
Request for Substantive

Examination
Request filed
Adverse Report
Application
Refuse
Compliance
Registration (Certificate of Grant

Issued)
Advertisement in Goverment
Gazette
Source: Malaysian Biotechnology Corporation82
From 2000 - 2010, the proportion of domestic applications, in line with Malaysian economic
growth, had gradually risen from about one-third of the total applications to roughly one-half,
rising an average of 7.6% per year over the ten-year period.83 While foreign registrations
accounted for 60% of the total registrations in 2010, the number of domestic registrations
also increased over time, from about 25% in 2000 to 40% in 2010. However, the registration
numbers for both domestic and foreign applications dropped substantially in 2009 and
82
Malaysian Biotechnology Corporation Sdn Bhd., Intellectual Property Rights,

http://www.biotechcorp.com.my/Pages/IntellectualProperty.aspx?AudienceId=3 (accessed January 28, 2011).
83
Cumulative annual growth rate
75
2010.84 During this 10-year period, total applications grew at an average of 3.4% per year,
while registrations grew at an average of 23.2% per year. The significant growth in
registration numbers may imply higher efficiency of MyIPO. The three main countries
submitting foreign applications in 2010 were the USA (51%), Japan (30%) and China (19%).
The three main countries granted foreign registrations in 2010 were the USA (51%), Japan
(29%) and Germany (20%). (Table 35)
Table 35 Trademark Application and Registration in Malaysia
Applications
Registrations
Year
Domestic
Foreign
Total
Domestic
Foreign
Total
2000
6,303
12,500
18,803
449
1,328
1,777
2001
6,525
10,078
16,603
1,570
5,341
6,911
2002
7,661
8,785
16,446
4,056
7,072
11,128
2003
8,327
9,439
17,766
3,014
9,108
12,122
2004
10,406
10,337
20,743
3,243
8,473
11,716
2005
10,479
11,668
22,147
3,683
7,771
11,454
2006
11,209
12,840
24,049
5,651
10,108
15,759
2007
12,289
13,605
25,894
8,108
17,382
25,490
2008
12,562
13,472
26,034
9,049
18,798
27,847
2009
12,810
11,260
24,070
5,438
9,534
14,972
2010
13,009
13,260
26,366
5,797
8,548
14,345
Total
189,085
226,366
577,873
64,095
149,834
346,202
Source: MyIPO
The Malaysia Trade Marks (Amendment) Regulation 2011 became effective on February 15,
2011. The amendment brought increases in several fees, including 30-60% higher trademark
application fees, ex-parte hearing fees, and subsequent mark in a series fees. Overall,
trademark filing expenses include a RM 370 application fee (e-filing: RM 330), and a RM
650 fee for advertisement and issuance of the certificate (e-filing: RM 600).
In addition, because of the amendment, applicants can now formally request expedition of
examination provided the request is filed within four months of the application filing date and
an additional fee is paid. The grounds on which such requests will be considered are: 1)
National or public interest; 2) Evidence of potential infringement or ongoing infringement
proceedings; 3) Registration is a condition to obtaining monetary benefits from the
84
MyIPO illustration stated that the registration dropped in 2009 due to lower response for gazette. 29, 256 were
ready for gazette, but less than 50% responded.
76
government or institutions recognized by the registrar; and 4) Other reasonable grounds. The
regulation changes will only affect applications filed on or after February 15, 2011.85
Using this special procedure, the office can issue the certificate of registration six months and
three weeks after the filing date.
In theory, assuming no oppositions arise, the normal registration process should take 12-18
months. Using 2009 data, it takes approximately 2.7 years to register a trademark. With only
18 trademark examiners over the past five years (2006-2010), MyIPOs major problem is an
insufficient number of examiners, which has led to delays in the trademark procedure. As the
number of applications has increased over time, so too has the number of applications per
examiner. In 2006, one trademark examiner was responsible for 1,336 applications; in 2010
this number totaled 1,465, an increase of 10%.
Some applicants requested that clearer directions and explanations on objection from the IP
office would help to speed up the application process.
Regardless, it is important to note that a considerable part of any delay results from the
applicants side (e.g. incomplete or poorly prepared applications). Most trademark applicants
do not use agents, and usually fail to conduct a prior search, despite the examiners
recommendation. The most common reason that trademark applications fail to be registered
is that they do not conform to the requirements of registration, as required under the law.
To effectively address these issues, the office should ensure that examiners are properly
trained on their specific functions and fully aware of office standards and policies, and that
applicants are provided detailed instructions and clear process timelines.
As of December 2011, the pendency period for trademark registration was 12 months from
the date of application (for clear cut cases) in line with MyIPOs intention to shorten the
pendency period by amending the Trademark (Amendment) Regulations 2011 (effective from
15 February 2011).86 MyIPO also increased the number of trademark examiners in the Search
& Examination section in 2011 in order to speed up the process of trademark registration.
No. of Application
Trademark Examiners
2006
24,049
18
1,336
2007
25,894
18
1,439
2008
26,034
18
1,446
2009
24,070
18
1,337
2010
26,366
18
1,465
Source: Calculated using MyIPO data
Chart 19 Malaysia Trademark Application Procedure
85
Henry Goh & Co Sdn Bhd, http://www.henrygoh.com/downloads/tm-regulations.pdf (accessed on March 7,

2011)
86
Intellectual Property Corporation of Malaysia, http://www.myipo.gov.my/images/pressrelease/pendency.pdf
(accessed on January 9, 2012)
77
Source: MyIPO

The MyIPO now provides online services in many areas, such as online search, filing and
application status enquiry. This online filing system, however, was only established in
February of this year, and various issues are still being addressed. These platform glitches
include incomplete records, deactivated actions (renewal and PCT applications), and
incorrect fee schedules. With time and incremental improvements, the system should prove
beneficial.
Any applicant can easily conduct a search. An online quick search can be accessed without
charge at https://iponline.myipo.gov.my/ipo/main/search.cfm; however, the applicant must
78
register as a member to conduct advanced searches, which entail service fees. The applicant
can search patent and trademark information by filling out search criteria, and can also search
other IP offices including Australia, China, Japan, Korea, UK, USA, EU and WIPO. In
addition, applicants can file an application online using documents in digital format.
Other international search tools employed by MyIPO include Esp@cenet, IPDL, USPTO,
PATENTSCOPE, E-search and MyISS; the latter two make up the internal database.
MyIPO has also received a one-year free trial of the search system called EPOQUENet and
GPI from EPO. During that period, MyIPO will be equipped with ten lines for GPI and five
lines for EPOQUENet.
For trademarks, the existing problem is incomplete information of old trademark

applications. Domestic trademark applications from 1930-1997 are not fully digitized, and
electronic copies of these data cannot always be read. MyIPOs Trademark division
suggested that a central database of all trademark precedents would further benefit trademark
examiners. Consequently, MyIPO is currently developing a comprehensive system for
trademark information called Integrated Trademark System, or ITMS. It is an in-house
system adapted from the EPO format. The system is expected to be completed in 2012, and is
intended to decrease the trademark registration time to only nine months.
MyIPOs annual IT budget during 2006-2010 was RM 2.7 million, on average. The office is
equipped with modern technology and equipment, including 450 computers, 70 servers, 200
printers, and 115 scanners. The majority of its computers are equipped with Intel Core i3 or
i5 processors. The internet speed at headquarters is 10 Mbps and the speed at branches is 2
Mbps. The specification of IT infrastructure of MyIPO is very high.
Still, the inadequacy of available search tools is a crucial problem for both the patent and
trademark divisions. Moreover, representations of some old trademarks in the database are of
poor quality. Some representations are not easily categorized using the Vienna Codification,
leading to inaccuracy and inconsistency during search and examination procedures.

In general, IPR owners in Malaysia have various methods to enforce their rights. These
include civil action, criminal action, and administrative action. Civil action and criminal
action can be taken in trademark infringement cases. Patent infringements, however, are not
considered criminal, but civil crimes. Apart from judicial measures, it is possible to take
administrative measures in certain cases.
According to the Patent Act 1983 of Malaysia, the patentee has the right to institute Court
proceedings against any person who has infringed or is infringing the patent. The offender
can be sentenced to a fine of up to RM 15,000. The responsibility of enforcement falls
primarily on the Enforcement Division of the Ministry of Domestic Trade, Cooperative and
Consumerism (MDTCC). The Enforcement Division detects, deters and detains
counterfeiters according to complaints filed by IPR owners. The Customs Department further
serves an enforcement role.
79
IP disputes can be settled by other forms of conflict resolution. Malaysia has established the
Regional Arbitration Centre for alternative dispute resolution methods, such as arbitration
and mediation. While such methods are easier and far less expensive than court hearings, they
are often still unpopular as both parties must agree voluntarily to use them, and they do not
entail the power to enforce rulings.87
Recommendations
1. In order to expedite the registration procedure, MyIPO should increase the number of
staff at all levels, and provide several trainings on search and examination in new
technologies such as computer related inventions, biotechnology and nanotechnology.
Simultaneously, MyIPO should cooperate with the private sector to continually
update knowledge in emerging industries.
2. Trainings of Trainers are needed for senior examiners so that they can provide junior
examiners with basic knowledge, and be less dependent on assistance from
international organizations. Standardized materials and manuals, aligning with
USPTO or EPO, should be provided.
87
P. Kandiah, IP Enforcement in Malaysia, http://www.21coe-win-cls.org/english/activity/pdf/2/90-94.pdf

(accessed April 22, 2011).
80
V. MYANMAR
Overview
As of 2010, Myanmar had a population of 53.4 million people with a per capita GDP of USD
1,100 when adjusted for purchasing power parity. Real GDP growth in 2010 was reported at
3.1%. The composition of GDP by economic sector in 2010 reflects Myanmars significant
dependence on agriculture (43.2%) and relatively minor involvement in industry and
manufacturing (20%). Services accounted for 36.8% of the total economy.88
The government changed the official English name of the country from "the Union of
Burma" to "the Union of Myanmar" in 1989; however, the name Burma is still widely used.
Exports amounted to USD 7.84 billion in 2010, whereas imports were about USD 4.53
billion. Myanmars main export markets were Thailand (46.6%), India (13%) and China
(5.7%). Major import sources were China (33.1%), Thailand (26.3%) and Singapore (15.2%).
Key exports were natural gas, wood products, pulses, beans, fish, rice, clothing, jade and
gems. Main imports were fabric, petroleum products, fertilizer, plastics, machinery, transport
equipment, cement, construction materials, crude oil and food products. US economic
sanctions prohibit the import of goods of Burmese-origin into the United States. While US
exports to Myanmar (other than financial services) are permitted, very little trade flows in
this direction.
Legal Framework
Myanmar, although a member of neither the Paris Convention nor the Madrid Agreement,
has been a member of the WTO since 1995 and is thus party to the TRIPS Agreement.
Myanmar also joined WIPO in 2001, but has struggled to draft and implement legislation
compliant with the TRIPS Agreement.
The original Myanmar Patents and Designs Act was enacted in 1939, and six years later was
replaced with the Myanmar Patents and Designs Act of 1945. As that Act was later revoked,
there is no current legislation specifically pertaining to patents and designs.89 Patents and
designs are now protected under Section 54 of the Specific Relief Act (1877) and the
Registration Act (1908).90
As with patents and designs, there are no detailed laws dealing with trademarks. The Penal
Code 1861, Section 478 provides only two lines defining a trademark, saying that a mark
used for denoting that goods are the manufacture or merchandise of a particular person is
called a trademark.91 In this interim period, trademarks may be registered under section 18(f)
88
Central Intelligence Agency, https://www.cia.gov/library/publications/the-world-factbook/geos/bm.html,

89
U Tin Ko Win, Legal Status of Intellectual Property Rights in Myanmar,
http://www.unescap.org/tid/mtg/ip_myan.pdf (accessed on March 30, 2011).
90
Myanmar Trademark and Patent Law Firm, http://www.myanmarpatent.com/patent.htm (accessed on March
30, 2011).
91
U Tin Ko Win, Legal Status of Intellectual Property Rights in Myanmar,
http://www.unescap.org/tid/mtg/ip_myan.pdf (accessed on March 30, 2011).
81
of the Registration Act by means of declaration, which is a solemn statement of facts made
by the trademark owner.
A new IP law is being drafted by The Office of the Attorney General (OAG) in compliance
with the TRIPS Agreement, with completion scheduled for 2013.92

There is no IP office in Myanmar. The Myanmar Scientific and Technological Research
Department (MSTRD) in the Ministry of Science and Technology (MOST) is the main
government agency responsible for IP management. Within the MSTRD is the IP Section,
which employs 20. (Table 37) The support staff in the IP Section is responsible for
coordination of IP matters, particularly for patents and designs among separate domestic
agencies, and among ASEAN and international offices. Meanwhile, the Ministry of
Commerce is responsible for the coordination of trademarks.
Trademarks and patents can be registered with the Myanmar Registry Office of Deeds and
Assurances, which is under the Ministry of Agriculture and Irrigation. There is no application
examination, and thus, no patent or trademark examiners.
Table 37 Number of staffs in the IP section
Number
Type of personnel
2006
2007
2008
2009
2010
Administrators
IT staff
Legal officers
Supporting staff
10
Others
Total
12
14
16
20
20
Source: Ministry of Science and Technology
Myanmar has received some international assistance on IP. In 2005, WIPO sponsored a
Patent Information and Patent Searching Training Course in Myanmar. There were also
technical collaborations with other foreign agencies, such as JICA and KOICA.
92
The ASEAN Project on the Protection of Intellectual Property Rights (ECAP III), http://www.ecapproject.org/ASEAN_IP_Legislations_Myanmar (accessed on March 30, 2011).
82
Table 38 Statistics on Application and Registration of Trademarks (2005 - 2010)
Year
Application
Granted
Domestic
Foreign
Total
Domestic
Foreign
Total
2005
2,446
1,330
3,776
2,446
1,330
3,776
2006
2,637
1,518
4,155
2,637
1,518
4,155
2007
1,747
906
2,653
1,747
906
2,653
2008
2,857
1,796
4,653
2,857
1,796
4,653
2009
3,961
1,931
5,892
3,961
1,931
5,892
2010
3,821
2,149
5,970
3,821
2,149
5,970
Total
17,469
9,630
27,099
17,469
9,630
27,099
Source: The Ministry of Agriculture and Irrigation

The number of trademark applications in Myanmar grew at about 10% from 2005-2010. A
majority of the applications were domestic; on average domestic applications accounted for
64.46% of the total, and all applications were granted trademark registration.
Procedure
As there are no specific laws regarding the subject matter, patents and trademarks can be
registered as stated in Section 18(f) of the Registration Act 13 (1908). However, no patent
registration system is in place.
The first step in the trademark registration procedure requires an applicant to issue a formal
statement called a Declaration of Ownership to the Office of the Registrar of Deeds and
Assurances. After that, an application for registration must be filed within four months from
the date of the Declaration. There is no formality examination, opposition, nor publication of
a Gazette/ Journal/ Booklet, apart from checking that applications conform to the Registration
Act. Once the registration is completed, it is optional but recommended that the owner
publishes a Cautionary Notice in a local newspaper to establish ownership of the trademark
and ward off potential infringers.93 The registration process takes approximately 4-6 weeks
from the filing date to complete. It is advisable that the trademark owner publish a notice of
trademark ownership in the local newspaper every two years since an official patent and
trademark search system does not exist, and any searches must be done by examining
newspapers.
93
Myanmar (Burma) Trademarks and Service Marks,

http://www.tillekeandgibbins.com/publications/Articles/ip_registration/tm_myanmar.htm (accessed on May 18,
2011).
83
It should be noted that the protection period of patents and trademarks is not mentioned in the
law; however, trademarks can be renewed by re-registration or republication three years after
the first filing.94
A trademark can be registered even if it is not used. In general, the trademark procedure only
takes one month or less, as it does not entail an examination stage.95
The common reasons that trademark applications fail to be registered are unqualified marks
and applicants who exceed the four-month period for filing for registration after the
Declaration.

No patent and trademark search system is available for the public in Myanmar.
Consequently, applicants need to search through newspapers, the Internet or law firms
databases. There is, however, a central database that is used for trademark searches and for
procedural administration. All trademark application documents are kept in both hard and
soft copy.
There are eight computers with two servers in the IP section office. The majority of
computers have Intel Pentium 4 processors at 2.8 GHz. The network capacity of the office is
poor; the office Internet speed is only 256 Kbps.
In preparation for the establishment of an official IP office, there is an urgent need for the
Myanmar government to improve its basic IT infrastructure; for example, it should add more
workstations and develop a functional network with high-speed Internet.
Enforcement
To date, IP rights in Myanmar are protected under application of general laws including the
Penal Code and some civil laws like the rights of the trademark owner. Existing laws that
can be used to enforce IPR include the following;
The Myanmar Copyright Act (1914)
The Myanmar Merchandise Marks Act (1889)
The Registration Act (1908)
The Television and Video Law (1996)
The Computer Science Development Law (1996)
National Drug Law (1996)
Traditional Drug Law (1996)
Motion Picture Law (1996)
The Electronic Transactions Law (2004)
The Ministry of Science and Technology is a focal point for most IP matters. The Attorney
Generals Office, the Ministry of Science and Technology and other related ministries work
94
Myanmar Trademark and Patent Law Firm, http://www.myanmarpatent.com/trademark.htm#trademark

search (accessed on March 30, 2011).
95
Expert opinion.
84
together to enforce IPR issues. Any disputes related to trademarks are adjudicated by relevant
Court and Registration Offices in conformity with the decree on Courts.
Recommendations
1. Myanmar needs new legislation on patents and trademarks in order to build its IP
system to international standards. It needs to align with international IP conventions
and treaties such as the TRIPS Agreement, and organize a specialized IP office
dedicated to IPR. These actions would dramatically improve not only the efficiency
of the IP office, but also the procedures for the registration and enforcement of IPR in
Myanmar.
2. Myanmar is the only country in ASEAN that is largely non-compliant with TRIPS
provisions. The registration of patents and trademarks in Myanmar does not meet the
international standard, which would require new legislation on patent and trademark
law.
3. Myanmar needs to develop an information technology infrastructure and system to
effectively handle IP applications.
4. An extended training program is needed to meet the needs of various IP professionals,
including substantive legal training for lawyers in the fields of trademarks, patents,
utility models, and industrial designs, as well as training in the drafting of IP
legislation and specialized training for examiners, IP agents, judges and customs
agents.
5. Myanmar needs to pass a specific trademark law and more stringently enforce IP
rights. The current principles of common law in place are not sufficient to deal with
the main problems of trademark registration and protection.
85
VI. THE PHILIPPINES
Overview
In 2010, the Philippines GDP was USD 353.2 billion and real growth was measured at 7.3%,
rising rapidly from 1.1% in 2009. Per capita GDP, adjusted for purchasing power parity, was
approximately USD 3,500. The sectors that contributed most to the Philippines economy
were services (54.8%), industry (31.3%) and agriculture (13.9%). The overall trade balance
of the Philippines was slightly negative in 2010, with exports of USD 50.72 billion and
imports of USD 59.9 billion.
Key sources of imports were Japan (12.5%), the United States (12%), China (8.8%),
Singapore (8.7%) and South Korea (7.9%). The two most important export markets for the
Philippines were the United States and Japan, accounting for 18% and 17% of all Philippine
exports, respectively. The next largest recipients of Filipino exports were the Netherlands
(9.8%), Hong Kong (8.6%) and China (7.7%).
Legal Framework
The Philippines is a signatory to most of the worlds major IP treaties, including the Paris and
Berne Conventions, the Rome Convention, the Budapest Treaty, WIPO Convention, PCT,
WCT and WPPT. It is also a WTO member, and thereby party to the TRIPS Agreement.
At the national level, Filipino legislation on IP is comprehensive. The fundamental IP laws
are found in the Republic Act No. 8293, The Intellectual Property Code of the Philippines
(January 1998). A corresponding set of rules and regulations dealing with inventions,
trademarks, industrial designs, and utility models was enacted in December 1998. Four other
Republic Acts of significant importance since 2001 were the Electronic Commerce Act (June
2000), the Act on the Protection of Layout Designs of Integrated Circuits (August 2001), the
Act on the Protection of Plant Varieties (June 2002), and the Act on Optical Media.
Rules and regulations on trademarks, service marks, trade names and marked or stamped
containers were amended by Office Order No. 17 (1998), Office Order No. 08 (2000), Office
Order No. 20 (2001), Office Order No. 40 (2002), Office Order No. 39 (2002) and Office
Order No. 49 (2006).96
In 2008, the Intellectual Property Code was amended by the Republic Act No. 9502 to
expand the definition of patentable and non-patentable inventions to cover drugs and
medicines. This amendment led to greater access to foreign medicines at economical prices,97
but sparked concerns in the private sector that it would adversely impact the patentability of
pharmaceutical products and processes, limit IP rights for pharmaceutical innovators and
violate the TRIPS agreement. The core change was in Section 22 of the IP Code as follows:
96
The Intellectual Property Office of the Philippines, http://www.ipophil.gov.ph/main2.php?contentid=14

97
Ignacio Sapalo, Philippines: Changing the Law to Reduce Cost of Medicines, September 1, 2008,
http://www.managingip.com/Article/1999472/Philippines-Changing-the-law-to-reduce-cost-of-medicines.html
86
The following shall be excluded from patent protection: Discoveries,

scientific theories and mathematical methods, and in the case of drugs and
medicines, the mere discovery of a new form or new property of a known
substance which does not result in the enhancement of the known efficacy
of that substance, or the mere discovery of any new property or new use for
a known substance, or the mere use of a known process unless such known
process results in a new product that employs at least one new reactant.
For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites,
pure form, particle size, isomers, mixtures of isomers, complexes, combinations
and other derivatives of a known substance shall be considered to be the
same substance, unless they differ significantly in properties with regard to efficacy.
Some IP practitioners have questioned whether this clause meets the requirement of Article
27 on Patentable Subject Matter of TRIPS, which states: patents shall be available for any
inventions, whether products or processes, in all fields of technology, provided that they are
new, involve an inventive step and are capable of industrial application ... The IPOPHL,
however, maintains that the law is fully compliant with the countrys TRIPS obligations.
As of 2011, the Republic Act No. 9502, specifically the Implementing Rules and Regulations
(IRR), was in the process of being further revised on the matters of dispute settlement
practices.98
The Intellectual Property Office

The Intellectual Property Office of the Philippines (IPOPHL) was created by Republic Act
No. 8293 in January 1998. It replaced the Bureau of Patents, Trademarks, and Technology
Transfer (BPTT) created in 1967.
The year 1998 marked the beginning of the IPOPHL as an autonomous organization. It
received a government subsidy, which was progressively reduced, until 2005. Since 2006
IPOPHL has been a self-sustaining organization with its own management and financial
structure.
IPOPHLs autonomous status enabled the office to pursue several efficiency measures under
its application backlog reduction policy; these centered around flexible management and
included hiring new examiners trained in important emerging technology fields (e.g.
nanotechnology and biotechnology) and carefully allocating and managing examiner
workloads.
IPOPHL has six bureaus as follows:
The Bureau of Patents

The Bureau of Trademarks
98
Asian Patent Attorneys Association 58th Council Meeting,

http://www.apaa2010.kr/meeting/down/Patents_Committee_PDF/COUNTRY_REPORTS_Patents_2010.pdf
87
The Bureau of Legal Affairs

The Documentation, Information and Technology Transfer Bureau
The Management Information Services and Electronic Data Processing Bureau
The Administrative, Financial and Human Resource Development Service Bureau
IPOPHL also established IP Satellite Offices (IPSO) branch offices - in eight cities
including Cebu, Davao, Legaspi, Angeles, Baguio, Lloilo, Cagayan de Oro and General
Santos to provide IP services across the country.99
Essential to its 2011 Strategic Roadmap, the IPOPHL has begun working toward its 2020
Vision of becoming a 3D IP office, highlighted by a system that is demystified, developmentoriented and democratized. Unique, strategic examples of each of these three organizational
pillars, respectively, include: engaging online social networks to promote the use of the IP
system and services of IPOPHL, supporting local IPs through business development and
commercialization assistance programs, and by developing a market-oriented balanced
scorecard for IPOPHL through effective institutional planning, performance monitoring and
benchmarking.100
The IPOPHL staff comprised approximately 248 people in 2010, most of whom were patent
examiners in the Bureau of Patents and administrative personnel. In 2011, 15 new staff will
be trained to become patent examiners. There were 52 patent examiners and 29 trademark
examiners, a slight decrease from 2006. The total number of staff also has declined since
2006.
99
The Intellectual Property Office of the Philippines, Annual Report 2008-2009, 1-5.
The Intellectual Property Office of the Philippines,
http://www.ipophil.gov.ph/whatsnewfile/02bd3c8b_IPOPHL%20Roadmap%202011%5B1%5D.pdf (accessed
June 22, 2011)
100
88
Chart 20 Structure of the Intellectual Property Office of the Philippines
IPOP
Operation, IP Policies &

International Relations
Bureau of
Trademarks
Bureau of
Patents
Management & Support

Services
Management
Information Service
Bureau of
Legal Affairs
Documentation,
Information &
Technology Transfer
Bureau
Financial,
Management &
Administrative Service
Source: Intellectual Property Office of the Philippines 101
Table 39 Number of IPOPHL staff

Number of staff
Type of personnel
2006
2007
2008
2009
2010
Bureau of Trademarks
43
43
40
35
36
- Trademark examiners
(excluding preliminary
assistant examiners)
34
34
32
28
28
Bureau of Patents
70
69
65
61
63
- Patent examiners (excluding

preliminary assistant
examiners)
56
55
53
51
50
Bureau of Legal Affairs
27
25
25
25
23
Documentation, Information and

Technology Transfer Bureau
25
25
25
23
25
Management Information Service
27
27
26
22
23
Financial Management and

Administrative Service
68
67
64
60
60
Others
20
18
15
15
18
101
The Intellectual Property Office of the Philippines, http://www.ipophil.gov.ph/main.php?contentid=4

(accessed March 3, 2011)
89
Number of staff
Type of personnel
Total
2006
2007
2008
2009
2010
280
274
260
241
248
Source: IPOPHL

Degree
Office
Bachelor
Master
Doctoral
High
school
Science
Nonscience
Science
Nonscience
Science
Nonscience
Patent
examiners
31
14
Trademark
examiners
12
12
Source: IPOPHL
Almost all of the patent examiners, 48 of 50, in IPOPHL have at least a bachelors degree in
science; some go on to obtain a masters degree in business administration (MBA).
Trademark examiners mostly have degrees in non-science fields. Some 42.9% have a
masters degree.
Office
Less than 5
years
5-10 years
10-15 years
15-20 years
More than
20 years
Patent
examiners
22
17
Trademark
examiners
17
Source: IPOPHL
Note: the number of examiners in the table above is slightly inconsistent with the total number of examiners
noted previously.
Almost 45% of patent examiners have five to ten years of experience. The rest have more
than ten years. Similarly, most trademark examiners have more than five years of experience.
Only 7.1% have less than five years.
The salary range of patent and trademark examiners in Philippines is relatively high. The
starting salary of both patent and trademark examiners is approximately PHP 20,352, and the
highest salary as a chief examiner is PHP 55,587. Based on data from the Bureau of Labor
and Employment Statistics of the Philippines, the starting salary of examiners is nearly the
same as that of programmers and electronic engineers, which are considered good average
salaries at approximately PHP 20,000 per month. This is also fairly competitive for trademark
examiners, who usually possess a non-science degree. On the other end of the experience
90
spectrum, the examiners highest salary of PHP 55,587 is comparable to that of professionals
in the legal and finance sectors who receive an average monthly salary of PHP 55,626.102
The IPOPHL has successfully employed outside experts to help the office identify its key
stakeholders and to facilitate a series of workshops geared toward restructuring office
processes and procedures in order to most effectively serve the needs of its various clients.
The office reported that these engagements have been extremely productive in streamlining
and improving IPOPHLs services.
Patent Applications
The number of domestic patent applications decreased slightly from 2000 to 2010. The
cumulative annual growth rate of the total applications in this period was -0.7%. The
beginning of the period saw a substantial decrease in the number of foreign patent
applications in 2001 and 2002. This can be largely attributed to the PCT coming into force in
the Philippines. Under the Paris Convention, applications had to be filed abroad in other
Convention member countries no later than 12 months from the first filing date. Under the
PCT, however, entry into the national phase takes place 31 months after the filing date. This
led to a substantial rise in the number of PCT applications by 2004. (Table 42)
The number of invention patent applications increased steadily during the period 2003 to
2010. Foreign applications, accounting for 93.7% of the total applications in the past ten
years, outnumbered domestic applications every year. While the percentage of domestic
patent applications has been constantly low, domestic utility model (petty patent) applications
consistently represent 90% or more of the total utility model applications per year.
During this ten-year period, granted foreign patents accounted for most of the granted patents
at 98.3%. In 2008, the number of granted inventions dropped drastically, possibly due to the
amendments of the Republic Act No. 9502, which may have had an impact on patent
approval decisions. The effect of the amendments was also apparent in the 9.5% drop in the
number of application in 2009. The situation changed considerably on the granting side; the
number of granted inventions doubled from 838 inventions in 2008 to 1,679 inventions in
2009. This was due to the change made by the Bureau of Patents on the granting procedure to
simultaneously issue the notice of allowance and the certificate of the grant.
Table 42 Applications and Granted Inventions, 2000 - 2010
Applications and Granted Inventions in Philippines
Year
Application
Granted
Domestic
Foreign
Total
Domestic
Foreign
Total
2000
154
3,482
3,636
566
574
2001
135
2,470
2,605
1,082
1,089
2002
149
769
918
12
1,112
1,124
2003
141
1,801
1,942
13
1,160
1,173
2004
157
2,538
2,695
18
1,434
1,452
102
What is the Average Salary in the Philippines? http://www.gopinoy.com/advice/salary-guide/what-is-theaverage-salary-in-the-philippines.html (accessed May 25, 2011)
91
2005
210
2,762
2,972
15
1,638
1,653
2006
223
3,038
3,261
24
1,191
1,215
2007
225
3,248
3,473
29
1,785
1,814
2008
216
3,095
3,311
41
797
838
2009
172
2,825
2,997
22
1,657
1,679
2010
167
3,224
3,391
13
1,140
1,153
Total
1,213
18,192
19,405
144
8,208
8,352
Source: IPOPHL103
Table 43 Applications and granted utility models from 2005 to 2010

Applications and Granted Utility Models in Philippines
Application
Granted
Year
Domestic
Foreign
Total
Domestic
Foreign
Total
2005
519
27
546
296
14
310
2006
519
22
541
282
18
300
2007
395
32
427
715
58
775
2008
512
33
545
405
52
457
2009
496
48
544
405
52
457
2010
579
35
614
326
48
374
Total
3,020
197
3,217
2,429
242
2,673
Source: IPOPHL104
Patent pendency is estimated to have decreased in recent years due to IPOPHLs backlog
reduction policy. The average pendency period fell from 4.9 years in 2008 to 4.7 years in
2009. Similarly, the pendency period of utility model applications dropped from 11.4 months
in 2008 to 10.8 months in 2009.105
According to IPOPHLs definition, any applications submitted more than four years prior to
the current date are considered backlogs. In 2010, there were 13,330 pending applications, of
which 1,718 were backlogs; the rest were submitted in the year 2007 or later. To ensure a
timely patent registration process, IPOPHL hired and trained 15 new patent examiners in
2010 to handle examinations.
103
The Intellectual Property Office of the Philippines, http://www.ipophil.gov.ph/main.php?contentid=49

(accessed March 3, 2011)
104
The Intellectual Property Office of the Philippines,
http://www.ipophil.gov.ph/main.php?contentid=49 (accessed March 5, 2011)
105
The Intellectual Property Office of the Philippines, Annual Report 2008-2009, 14.
92
Patent Procedures
Patent applications must be filed through the Receiving Section under the Bureau of Patents
of the Intellectual Property Office of the Philippines. IPOPHL uses the first-to-file system,
and uses an English-language application. After receiving an application, the formality
examination, search and classification of the technology of the application will take place.
Subsequently, the result will be published in the IPOPHL Gazette 18 months after the filing
date. An initiative of its end-to-end office review, and in order to avoid unforeseen delays at
the end of this waiting period, IPOPHL now prepares publication materials two months in
advance. The applicant must request the substantive examination within six months of the
publication date. Utility model applicants are not required to request a substantive
examination. If the applicant does not make a request within the time limit, the application
will be automatically withdrawn. If there is no rejection, the application will be granted and
published in the Gazette. The protection term for inventions is 20 years, and seven years for
utility models.106 The whole patent procedure typically takes about four to five years. To
streamline the procedure, IPOPHL now employs a standard language of formed paragraphs in
processing applications.
IPOPHL typically allocates 150-180 applications to an examiner, depending on the field, to
finish within six months. Therefore, on average, one examiner works on 30 applications per
month or 360 applications per year. Unless applications are of a new technical field, this is
manageable. Thus, a lack of qualified examiners in emerging fields, such as biotechnology
and nanotechnology, is the most urgent problem. Despite extensive experience, IPOPHL
patent examiners are not familiar with the new fields, making it almost impossible for them to
adequately examine these applications. IPOPHL addressed this problem by hiring new
graduates with training in the required fields.
An inadequate number of examiners is no longer a primary problem for IPOPHL, but
approximately eight more examiners are needed due to a forecasted increase in patent
applications as a result of IPOPHLs heavy marketing activities.
106
The Intellectual Property Office of the Philippines, http://www.ipophil.gov.ph/main2.php?contentid=19

93
Chart 21 Patent Application Flowchart

APPLICATION
FORMALITY
EXAMINATION
SEARCH
PUBLICATIION OF UNEXPECTED
APPLICATION IN THE IPO GAZETTE
REQUEST FOR SUBSTANTIVE

EXAMINATION (WITHIN 6 MONTHS
FROM THE DATE OF APPLICATION)
SUBSTANTIVE EXAMINATION
APPLICANT IS NOTIFIED OF
REASONS FOR REFUSAL
OPINION AND/OR AMENDMENT
DECISION TO GRANT A PATENT
FINAL REFUSAL BY EXAMINATION
PUBLICATION OF PATENT IN
THE IPO GAZETTE
APPEAL TO DIRECTOR OF PATENT

FINAL REFUSAL BY DIRECTOR
ISSUANCE OF PATENT CERTIFICATION

APPEAL TO DIRECTOR GENERAL
FINAL REFUSAL
REFUSAL
COURT OF APPEALS
APPEAL TO SUPREME COURT
REFUSAL
Source: Intellectual Property Office of the Philippines (IPOPHL)
Beyond this, the Philippines office is taking the USPTOs lead and conducting an end-to-end
process review of its current policies and procedures to further improve office efficiency;
these include the close monitoring of examiners by division heads, and a streamlining of the
certificate notification process whereby the office director must sign and approve each
94
certificate only once, after all processing has been handled. The latter strategy, alone,
reduced this part of the process from 6-12 months to a mere two.
Apart from these internal problems, incomplete applications can lead to further process
delays via several rounds of application amendments. Consequently, some applicants may
lose interest in pursuing the registration, and eventually withdraw their applications.
2006
2007
2008
2009
2010
3,802
3,900
3,856
3,541
4,005
Patent Examiners
56
55
53
51
52
68
71
73
69
77
No. of Applications
Source: calculated from IPOPHL data. Number of applications includes patent and utility model applications.
The number of trademark applications grew at an annual growth rate of 4.7% during 20002010, whereas the number of trademark registrations grew at 14.7%. Domestic trademark
applications increased by 7%, and foreign applications by 2.3%. The trend for domestic
applications is on the rise. Domestic and foreign trademark registrations grew at 26.4% and
9.3%, respectively. Registration of both foreign and domestic trademarks, however, declined
substantially in 2008 and 2009, but increased in 2010.
From 2005-2010, few trademark applications were refused or withdrawn, representing 1.9%
and 0.7% of total applications, respectively. Some applicants failed to submit responses to
IPOPHL and, consequently, abandoned their applications. Many refused cases were due to
applicant failures to search the IPOPHL database for conflicting marks prior to filing.
Table 45 Trademark Application and Registration by Origin
Applications
Registrations
Year
NS
Foreign
Local
Total
NS
Foreign
Local
Total
2000
5,648
4,975
10,624
2,306
545
2,853
2001
4,536
5,125
9,661
3,145
477
3,625
2002
4,740
6,281
11,023
3,091
661
3,756
2003
4,969
6,847
11,821
2,563
611
3,177
2004
5,272
6,870
12,143
5,099
1,694
6,798
2005
5,681
7,047
12,729
6,816
3,208
10,024
2006
6,169
8,323
14,494
7,634
5,030
12,666
2007
6,391
8,687
15,078
10,195
7,433
17,629
2008
6,978
8,874
15,853
7,286
6,588
13,875
95
Applications
Registrations
Year
NS
Foreign
Local
Total
NS
Foreign
Local
Total
2009
6,079
8,833
14,915
5,408
4,903
10,311
2010
7,080
9,763
16,844
5,603
5,675
11,278
Total
17
63,543
81,625
145,185
21
59,146
36,825
95,992
Source: Intellectual Property Office of the Philippines (IPOPHL)

Note: NS means not specific.
Table 46 Refused and Withdrawn Trademark Applications by Origin

Refused
Withdrawn
Year
Domestic
Foreign
Total
Domestic
Foreign
Total
2005
29
11
40
19
16
35
2006
274
82
356
103
61
164
2007
330
70
400
95
60
155
2008
274
52
326
92
17
109
2009
333
91
424
56
29
85
2010
182
40
222
42
25
67
Total
1,422
346
1,768
407
208
615
Source: Questionnaire
Registration of trademarks and service marks is governed by the Trademark Regulations as
amended by Office Order No.49 (2006). Trademarks and service marks are protected by
Philippines laws for 10 years from the date of issue.
When a trademark application is submitted to IPOPHL, it first goes through examination,
which takes approximately 4 to 6 months from the filing date. IPOPHL then issues a Notice
of Allowance and publication for purposes of opposition; this occurs within 5 to 7 months of
the filing date. Then the applicant pays the publication fee and IPOPHL publishes the
application in the Official Gazette to allow for opposition. Any opposition must be made
within 30 days from the release of IPOPHLs Official Gazette. If no opposition is filed,
IPOPHL then issues a Notice of Issuance; this takes place two to three months from
publication of the application. The applicant then pays the issuance and publication fees
within two months from mailing date of notice of issuance. IPOPHL then issues the
certificate of registration. Normally, the average time for the entire trademark procedure is
about ten months.107
107
CVCLAW Center, http://www.cvclaw.com/trademarks.php (accessed May 31, 2011)
96
In practice, it can take up to 18 to 24 months to complete a trademark registration.

Reportedly, the backlog is caused by many factors. The important problem leading to delays
during the trademark procedure involve incomplete or poorly prepared applications.
Moreover, applicants sometimes fail to submit responses to official actions in time.
In addition, since there are many requests for application amendments from trademark
examiners, the system should facilitate electronic communication between examiners and
applicants in order to expedite the process.
As shown in Table 47, the number of applications per trademark examiner gradually
increased since 2006. The annual average ratio was 495 applications per trademark examiner.
However, this number also depends on other variables such as the examiners experience and
competence. The number of trademark examiners dropped by five persons to only 29
examiners in 2010, from 34 in 2006. This led to the increase in the number of applications
per examiner.
Table 47 Number of Application per Trademark Examiner
2006
2007
2008
2009
2010
14,494
15,078
15,853
14,915
16,844
Trademark Examiners
34
34
32
28
29
426
443
495
532
580
No. of Application
Source: calculated from IPOPHL data
97
Chart 22 Philippines Trademark Procedures
Source: IPOPHL

The patent search tool used in the Philippines is the Philippine Patent Online Search System
(PhilPAT), which is available to the public. Users can search patents based on specific
information such as titles, keywords and patent numbers. PhilPAT is under the IPOPHLs
Industrial Property Digital Library for Patents (IPDL-Patents) Project to upgrade IP
technology. The office has also implemented the PCT-EDIS to enable access to PCT data
from the WIPO server. In addition to these systems, IPOPHL is currently using the EPOs
GPI on a trial basis, and has also considered employing Thomson Reuters; but as the latter
system proved too expensive for its limited value-added, the office looks to more fully utilize
(or join) the GPI moving forward.
In addition to these search tools, IPOPHL developed an information management system
focused on the reclassification of patent documents in accordance with the International
Patent Classification (IPC) system. As of December 2009, more than 7,500 documents were
classified related to industries such as food processing, pharmaceuticals, electronics,
98
nutraceuticals and home furnishings. In addition, the office has installed, with the assistance
of the JICA, the PACSYS package to facilitate the patent administration system.108
Currently, IPOPHL is developing its own integrated IP management system (IIPMS) based
on WIPOs Industrial Property Automation System (IPAS), customized to its IP business and
administrative process and integrated with its existing systems. The IPAS allows for fully
automated IP processes and easily adapts to changes in laws, rules, and regulations. A final
outcome of the system will be a more efficient and transparent IP system that will enable the
IPOPHL to follow best practices and international standards in delivering timely and quality
services. The system is expected to be finished by the end of 2012.109
While patent applications cannot be filed online, trademark applications may be filed at
https://trademarks.ipophil.gov.ph/tmonline/, called TM Online or the Trademarks Online
Filing System. TM Online is an electronic system for filing applications for the registration of
trademarks, service marks, geographical indications, and other marks of ownership. There are
three Office Orders related to the streamlining of the online trademark filings: 1) Office
Order 140: Streamlining of Trademark Registration; 2) Office Order 141: Amendment of TM
Regulations on Publication in the IPOPHL e-Gazette and Rule 414 on TM Applications Filed
Online; and 3) Office Order 142: Internal Implementing Guidelines for Office Order No. 140,
Streamlining of Trademark Registration. Nevertheless, only corporate clients, via the Banco
de Oro's debit payment, can use the system. This limits individual applicants who do not use
law firms services.
IPOPHL trademarks related e-services also include TM Search and TM Gazette. Prior to
filing a trademark application, the trademark database can be searched on TM Search. TM
Gazette is the IPOPHL e-Gazette that publishes the marks applying for protection. The marks
will be published in the e-Gazette Trademarks after publication fees are paid in full by the
applicants.
IPOPHL is well equipped with approximately 339 computers, 20 servers, 168 printers and 41
scanners. Most computers in IPOPHL have Intel Core 2 Duo processors, and the internet
bandwidth is 4.5 Mbps.
Table 48 Annual IT Budget during 2007-2009
Year
Annual IT Budget (million pesos)
2007
2008
70
35
2009
30
Source: IPOPHL
Enforcement and Settlement
108
The Intellectual Property Office of the Philippines, Annual Report 2008-2009, p.17.
Marcial Corazon, Accelerating & Innovating Into 2012, a presentation at WIPO Regional Workshop on
Digitization and Dissemination of Intellectual Property Information (IP) Information and Utilization of Effective
Search Tools, December 7, 2010, Makati City Philippines.
109
99
According to the Republic Act No. 8293 of the IP Code, IPOPHL itself has no direct
enforcement rights; rather, it is responsible for administering IPR policies which are enforced
by the Supreme Court and the Regional Trade Courts, the Philippines National Police (PNP),
the Bureau of Customs (BOC) and the National Bureau of Investigation (NBI). These
agencies activities have led to a number of operations to combat counterfeit goods.
Recently, IP enforcement efforts have increased. There were many developments of IPR
enforcement, especially the enactment of the Presidents Executive Order No.736 in June
2008. The Order set up the National Committee on Intellectual Property Rights (NCIPR) as
a permanent unit to promote and intensify IPR enforcement in the Philippines.110 With
cooperation from a variety of government agencies, operations seized counterfeit goods
worth over four billion pesos in 2010.111
In the case of patent infringement, the offender shall be punished by imprisonment for a
period of not less than six months, but not more than three years and/or a fine of not less than
PHP 100,000, but not more than PHP 300,000.112 Criminal penalties for trademark
infringement include imprisonment from two to five years and a fine ranging from PHP
50,000 to PHP 200,000.113
Administrative enforcement as an alternative measure can be effective, and the Bureau of
Legal Affairs, as part of the IPOPHL, is responsible for implementing mediation for interpartes cases or launching arbitration procedures for IP dispute resolution. The offices
alternative dispute resolution initiatives, including hiring mediators and establishing a
mediation office, have been strongly supported by the Supreme Court.
Recommendations
1.
The handling of PCT applications should require less manpower due to the
existence of the international search reports, written opinions, and preliminary
examination reports. The lighter load will likely free resources, which should be
redirected to address the substantial backlog of patent applications.
2.
More examiners are needed.
3.
To expedite the trademark and patent application processes, examiner-applicant

electronic correspondence should be allowed.
4.
A dedicated server is needed for the GPI system.
110
NCIPR, 2009 Accomplishment Report,

http://www.ipophil.gov.ph/document/5caa99ad_NCIPR_2009_ACCOMPLISHMENT_REPORT_B.pdf
111
Summary of IP Enforcement Data, http://www.ipophil.gov.ph/document/c9a3ab7b_Stat2010.pdf; (accessed
on March 24, 2011).
112
The ASEAN Project on the Protection of Intellectual Property Rights (ECAP III), http://www.ecapproject.org/archive/archive/how_to_enforce_your_ipr/philippines.html (accessed on March 24, 2011).
113
Ibid.
100
VII. SINGAPORE
Overview
Singapores GDP in 2010 reached USD 292.4 billion; with only 4.74 million people, per
capita GDP, adjusted for purchasing power parity, was roughly USD 57,200the sixth
highest in the world. Recovering from a contraction of 1.3% in 2009, the GDP growth rate
reached 14.7% in 2010.
Singapore benefits from a large amount of foreign direct investment (FDI). In 2009
Singapore attracted FDI of USD 52.9 billion, or about 18% of GDP. Strong IPR protection
has helped attract the more than 1,500 United States firms currently operating there.114
Major export markets for Singapore in 2010 were Hong Kong (11.6%), Malaysia (11.5%)
and the United States (11.2%,) with a total value of USD 351.2 billion, whereas main sources
of imports were the United States (14.7%), Malaysia (11.6%) and China (10.5%), with a total
value of USD 310.4 billion in 2010. It should be noted, however, that re-export activities
increase Singapore trade figures significantly.
The services sector was the main component of Singapores economy, representing 72.8% of
GDP, especially business services, transport and storage, and hotels and restaurants, followed
by industry at 27.2% (Singapore was inactive in the agricultural sector).115
Legal Framework
Singapore is party to most IP treaties, including the Paris and Berne Conventions, the WCT,
WPPT, PCT, Madrid Protocol, Nice Agreement, Budapest Treaty, and the UPOV
Convention. Additionally, Singapore is a member of the WTO and thus party to the TRIPS
Agreement.
National legislation includes acts concerning copyrights, geographical indications, integrated
circuits, trademarks, designs and patents. The Singapore Patent Act was promulgated in 1994,
and subsequently amended in 1995, 2002 and 2005. The latest major amendments to the Act
were issued in 2007 to align the law with two changes in PCT regulations. All of the
amendments of Patent and Trademark legislation are shown below.116
Patents Act (Chapter 221), effective February 23, 1995

Patents Act (Cap 221, 2005 Ed)
Patents (Amendment) Act, 1995, effective November 24, 1995
Intellectual Property Office of Singapore Act, 2001, effective March 30, 2000
Patents (Amendment) Act, 2001, effective August 31, 2001
114
Department of Statistics, Singapore,

http://www.singstat.gov.sg/stats/themes/economy/biz/foreigninvestment.pdf (accessed March 28, 2011).
115
Central Intelligence Agency, https://www.cia.gov/library/publications/the-world-factbook/geos/sn.html
116
Patrick Mirandah Co., http://www.mirandah.com/Patent_System_in_Singapore.aspx (accessed March 27,
2011).
101
Patents (Amendment) Act, 2004, effective July 1, 2004

Trademark Act, amended by Act no. 3 of 2007, effective June 2, 2007

The Intellectual Property Office of Singapore (IPOS) has been under the Ministry of Law
since 2001. It is the main government agency for four purposes: advising the government on
IP matters; administering the national IP laws; promoting IP awareness; and providing
development infrastructure for the IP system in Singapore.
IPOS is an autonomous agency of the Ministry of Law under the governance of a director
general, two deputy directors-general, and 16 senior managers. There are five divisions and
19 departments and registries with about 170 staff in 2010.117 The Registries Division is
responsible for granting rights for all IP in Singapore including patents, trademarks, designs,
and plant varieties. The division also includes the Computerization Department and the
Customer Service Department. The Computerization Department oversees the strategic use of
information technology for all users of IP systems. The Customer Service Department
maintains and improves all operational procedures in the area of customer service.
IPOS is a self-sustaining body. Its operating income comes from revenue generated by
registration fees. The largest share of registration fees, approximately 56.1% of total in 2010,
was derived from patents. Employee expenses, 47.8% of total expenditures, represented the
majority of operating costs. More details of the IPOS income and expenses are provided in
Table 49.
Table 49 IPOS Income and Expense (USD)
2009
2010
Operating income
Registration fees
- Patents
- Trademarks
- Designs
- Madrid
- Patent agent
- Hague
Other fees and charges
33,111,052
18,358,620
7,680,231
603,919
6,363,980
71,320
32,982
346,210
30,271,373
16,971,380
7,587,421
518,713
5,086,534
75,070
32,255
202,281
Total
33,457,262
30,473,654
12,563,922
13,165,579
10,873,891
11,277,828
1,244,577
1,316,012
Operating expenditure
Employee benefits expense
-
Wages and salaries

Employers contribution to defined contribution
scheme
117
Liew Woon Yim, Asian Symposium on Intellectual Property Protection & Cooperation,
http://www.jpo.go.jp/torikumi/ibento/ibento2/pdf/asia_sympo_siryo/singapore_e.pdf (accessed on March 27,
2011).
102
Staff welfare
267,073
267,073
Staff training
178,381
178,381
Maintenance of office premises and computers
4,620,173
5,243,764
Rental of office premises
4,720,452
3,428,767
General and administrative expenses
5,949,879
3,398,947
Depreciation expense
3,193,990
2,298,700
31,048,416
27,535,757
2,408,846
2,937,897
Total
Operating surplus
Source: IPOS Annual Report 2009/2010 p.70-88.
Patent Applications
The overall number of patent applications increased from 2005 to 2007, and then dropped
slightly in 2008, partly due to the global economic downturn. Domestic patent applications
grew at a cumulative annual growth rate of 9.7% during this period, indicating progress in the
nations technology development and IP interests. Nevertheless, domestic patent applications
made up only 7.7% of total applications. (Table 50)
The top five domestic filers generated 44.5% of all Singaporean applications, and two filers
the Agency for Science, Technology and Research (208 applications) and Chartered
Semiconductor Manufacturing Ltd. (92) substantially outpaced the rest. The vast majority
of applications come via the PCT every year. In 2009 the United States had the highest
number of applications, especially from Qualcomm Incorporated (407 applications), followed
by Japan, Singapore, Germany and Switzerland. (Chart 23 and Table 51)
From 2005 to 2009 there were 2,459 granted patents out of 3,562 domestic applications, or
about 69%. The proportion was 75% for foreign patents. Most of the granted patents were in
Class C (Chemistry; Metallurgy), Class G (Physics) and Class H (Electricity).118 (Table 52)
118
Classified by the International Patent Classification (IPC) System
103
Table 50 Applications and Granted Patents (2005 to 2009)

Year
Domestic
Application
Foreign
Non-PCT
PCT
Total
Domestic
Granted
Foreign
Total
2005
572
1,834
6,199
8,605
557
7,120
7,677
2006
626
1,615
6,923
9,164
434
6,959
7,393
2007
729
1,813
7,413
9,955
476
7,001
7,477
2008
808
1,562
7,322
9,692
512
5,774
6,286
2009
827
1,654
6,255
8,736
480
5,129
5,609
Total
3,562
8,478
34,112
46,152
2,459
31,983
34,442
Chart 23 Five Leading Countries Filing Patent Applications in Singapore
4,000
3,000
2729
2,000
1,000
711
827
240
400
400
356
510
110
108
0
USA
Japan
Singapore
Germany
National
Switzerland
PCT
Table 51 Top Five Domestic and Foreign Filers According to Patent Application in 2009
Domestic Applications
Name
Agency for Science, Technology and
Research
Chartered Semiconductor
Manufacturing Ltd
Foreign Applications
Amount
Name
Amount
208
Qualcomm Incorporated (US)
407
92
Interdigital Technology Corporation

(US)
119
Nanyang Technological University
24
F. Hoffmann-La Roche AG (CH)
111
Creative Technology Ltd
23
Lam Research Corporation (US)
108
National University of Singapore
21
Novartis AG (CH)
97
Source: IPOS Annual Report 2009/2010 p.52.
104
Table 52 Patents granted based on International Patent Classification System (IPC)

Field of Technology for Granted Patents
2008
2009
1,285
1,295
986
960
1,760
1,681
Class D Textiles; Paper
47
51
Class E Fixed Constructions
184
134
Class F Mechanical Engineering
289
233
Class G Physics
1,703
1,443
Class H Electricity
1,537
1,443
Class A Human Necessities

Class B Performing Operations; Transporting
Class C Chemistry; Metallurgy
Source: IPOS Annual Report 2009/2010 p.63.
Patent Procedure
IPOS is unique in ASEAN in that it has no patent examiners. Applications are processed
either by outsourcing substantive examinations or through a certification process that uses
patents granted by other patent offices as the basis for granting local patents.
Outsourcing of patent examinations is done primarily for domestically filed applications not
utilizing the PCT route. IPOS has agreements with the Hungarian, Austrian and Danish
patent offices to conduct substantive examinations of such patent applications. The
examination results produced by these offices serve as the patentability decisions of the
IPOS.
Alternatively, international applications and domestic applications submitted through the
PCT route may make use of the IPOS certification process. In such cases, an applicant would
need to provide IPOS with proof of a patent issued by a patent office with ISA designation
that corresponds with the patent application in file with the IPOS. If the IPOS is able to match
the granted patent with the corresponding application on file, the IPOS certifies the
application and grants a patent for Singapore.
Otherwise, the patent procedure comprises the normal stepssubmission, date of filing,
search and examination, and grant. Since 2003, applicants have been able to submit an
application online via ePatents, or to submit paper copies at the Registry of Patents. If the
applicant files earlier in a Paris Convention or WTO country, the applicant may claim this
earlier application as priority within 12 months of the filing date of the earlier application.
The Registry of Patents will perform a preliminary examination. If the application complies
with all requirements, the search and examination can then be processed. IPOS offers three
105
variations of the process: an all-local approach119, an all-foreign approach120 and a

combination of local and foreign approaches121.
The publication of the application typically takes place 18 months after the priority date or
the date of filing in the Patents Journal, and a search report is not compulsory for publication.
If there is no objection, the patent will be granted. The national term of a granted patent is 20
years from the filing date. It can be extended if there is 1) an excessive delay on the part of
IPOS, 2) an unreasonable delay from another foreign patent office, or 3) an unreasonable
delay for the approval of bringing pharmaceutical products to the market. For revocation or
reexamination, a request must be filed with IPOS.
Since 2004, applications may follow one of two examination tracks. The Fast Track, which is
used by default, requires that a fee for the patent grant be paid within 42 months of the filing
date. The Slow Track requires that the payment occur within 60 months. A request for
moving from the former to the latter must take place prior to month 39. 122 From first filing to
final approval, average patent registration times range widely, from three to six years. As
patent registration at IPOPHL depends almost entirely on foreign offices proceedings, no
measures to significantly decrease registration times are currently foreseeable.
IPOPHL applicants first challenge arises in deciding between pursuing a local (outsourced)
and a foreign registration. Both processes are complicated, and distinctions between the two
are not straightforward to many applicants. Local-route applicants may face another major
problem significant discrepancies exist between the three partner offices (Austria, Hungary
and Denmark), not only in procedures (i.e. case handling), but also in office competencies.
Furthermore, as IPOS recently lost IP Australia as an outsourcing partner (its only
international partner), patent applicants may no longer perceive local Singaporean-issued
patents as having international-standard status.
Under the IPOS current self-assessment system, by which applications are not rejected by
unsatisfactory substantive examination results (i.e. an unpatentable invention may still be
granted a patent if the applicant successfully fulfills all formal procedural obligations), few
applications fail to be registered. Flexible formal requirements (most application deadlines
can be extended) further substantiate this fact.
Trademark Application
The number of foreign trademark applications was much higher than that of domestic
applications during the 2000-2008 period. A 2004-2007 influx of foreign applications
reached a peak in 2006, but started to decline in 2007 and 2008.
119
All-local approach, the applicant can request either a search-then-examination or a combined search-andexamination process.
120
All-foreign approach, the applicant can present the search and examination results of the grant of a
corresponding international application; therefore, it is not necessary for the Registry of Patents to do a further
search and examination.
121
Combination approach, the applicant can request for an examination relying on the search results of the grant
of a corresponding international application.
122
Intellectual Property Office of Singapore,
http://www.ipos.gov.sg/leftNav/pat/Applying+for+a+Patent+in+Singapore.htm (accessed on March 27, 2011).
106
Domestic applications, on average, accounted for 19.3% of the total number of trademark
applications, whereas domestic registrations accounted for 16.6% of the total number of
registrations in this period. Overall, the number of domestic and foreign applications grew at
a rate of -2.6% and -2.5%. On the registration side, the number of domestic registrations grew
at a much higher rate (7.6%) than that of foreign registrations (2.6%). (Table 53)
Table 53 Number of Trademark Applications and Registrations in Singapore
Year
Application
Domestic
Foreign
Registration
Total
Domestic
Foreign
Total
2000
5,187
17,062
22,249
1,970
13,052
15,022
2001
3,281
16,992
20,273
2,487
14,225
16,712
2002
3,343
16,732
20,075
3,388
19,553
22,941
2003
4,254
17,032
21,286
5,735
28,790
34,525
2004
4,839
18,409
23,248
4,063
17,238
21,301
2005
5,067
21,919
26,986
4,154
17,534
21,688
2006
4,852
24,364
29,216
3,865
22,055
25,920
2007
4,602
19,781
24,383
5,393
25,238
30,631
2008
4,209
13,964
18,173
3,544
16,073
19,617
Total
39,634
166,255
205,889
34,599
173,758
208,357
Source: IPOS
Table 54 Percentage of Local Based and Foreign Based Trademark Application

No. of applications by
local-based entities
Year
2010
4,336 (25%) (by application)

6,407 (21%) (by class)
2009
6,048 (21%) (by class)
2008
6,049 (18%) (by class)
No. of applications by
foreign-based entities
24,704 (79%) (by class)
Total
17,404 (by application)
31,111 (by class)

22,214 (79%) (by class)
28,161 (82%) (by class)
28,262 (by class)

34,210 (by class)
2007

5,411 (17%) (by class)

26,749 (83%) (by class)

32,160 (by class)
2006
4,852 (17%)
29,216
Source: IPOS
123
Most trademark applications are filed in Class 9, with an average of 3,200 applications each
year. The second highest number of trademarks is filed in Class 42, with an average of 1,460
123
Intellectual Property Office of Singapore,

http://www.ipos.gov.sg/topNav/pub/sta/tra/No.+of+Trade+Mark+Applications+in+Singapore.htm (accessed
March 25, 2011).
107
applications each year.124 The fewest applications are filed in Class 15 (musical instruments),
with an average of only 33 applications annually. (Table 54)
It takes approximately six to twelve months to register a trademark in Singapore. The term of
protection is 10 years from the date of application, and can be renewed. Singapore allows
registrations of trademarks, certification marks, and collective marks.
Once an application is accepted, it goes through a formality examination by the Registry of
Trade Marks to ensure all the required information has been submitted and fees have been
paid. Then, trademark examiners will conduct a search and examination to ensure the mark is
distinctive from other registered marks and conforms to the law. Next, the mark will be
published in the Trade Marks Journal, open to opposition by any interested party. If there is
no opposition, or once opposition is resolved, the mark will be registered and a registration
certificate will be issued. (Chart 24)
Before filing an application for the registration of a trade mark in Singapore, it is advisable to
first conduct a search of the existing trade marks in the records maintained by the Registry of
Trade Marks. This is to ensure that there is no prior trade mark that is identical or similar to
the one intended for registration, particularly in the area of business. As the IPOPHLs
exceedingly strict examination of distinctiveness and conflicting marks often results in
application complications, and even rejections, this prior search is very important. The search
can be conducted through the IPOS Public Search Area or via eTradeMarks.
IPOS provides three public sources for IP information search that cover both existing and
published applications.
The first source, ePatents, provides only patent-related information as a one-stop service for
patent applicants. The applicant can submit an application online via Online Internet Service
(OIS). The applicant can also search patent information and journals. Data on patents from
1937 are available on the website free of charge for personal users. The database of this
website contains Singapore patents only. The applicant can select searchable criteria by using
simple search, advanced search or specification search. Patent records, especially for older
information, are not always comprehensive.
Trademark users can access e-Trademarks through the websites listed below. The system is
meant to be as a one-stop solution providing electronic filing of trademark transactions.
124
Class 9 are Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring,
signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments
for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for
recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic
vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data
processing equipment and computers; fire-extinguishing apparatus.
Class 42 are Scientific and technological services and research and design relating thereto; industrial analysis
and research services; design and development of computer hardware and software.
108
http://tmsearch.ipos.gov.sg/eTMSearch/eSearchOption.jsp for an online trademarks

search. This website is a search engine providing general information on marks and
classification. There are three main options for the trademark registration search:
Similar Mark Search, Online Trade Marks Search and Classification of Goods and
Services.125
http://www.ipos.gov.sg/main/oursvcs/EZIP/etm/intro.html for online submission of
trademark applications.
Another search tool is Surf IP which provides searches on patents, trademarks and industrial
designs through www.surfip.gov.sg. The data on this website is derived from several foreign
IP offices; USPTO, IPOS, WIPO, EPO, SIPO (China), CIPO (Canada), KIPO (Korea),
Patentmaps (PM), TIPO (Taiwan), UK-IPO, TIPIC (Thailand) and JPO (Japan). The
applicants are able to select different types of searches by entering only a word or sentence,
or by searching from title, abstract, claims, description, applicant, and inventor name.
125
Classification of Goods and Services search function allow users to check the classification of product by
choosing 34 Goods and Services under the Nice Agreement to which Singapore is a signatory (Nice
Classification). The class headings of the Nice Classification give general information about the types of goods
and services which belong to each class. A specification indicating the class heading does not amount to a claim
for all the goods or services in that class. This list is not exhaustive and serves as a quick reference to help you
locate the correct class.
109
Chart 24 Singapore Trademark Procedures

Stage
Registry
Applicant
Application will be checked for completeness and

whether representation of the mark provided is
acceptable. A Trade Mark no. and date of
application will be allocated
Inform applicant in writing if

there is amendment required or
deficiencies spotted
To make amendment or correct deficiency

spot otherwise application is withdrawn
Search
Search for the conflicting mark, geographical

names, and conformance to the International
Classification of goods and Services
Reject the application if the mark

conflicts with the search criteria
Examination
Examine if the Trade Mark is registrable in

accordance with the Trade Mark Act
Inform applicant of objections, if

any, and allow applicant to revert.
Opponent
Submission of Trade Mark

Application
Formality Examination
To modify/amend Trade Mark and

submit new application
To overcome any objections raised

by the Registrar of Trade Mark
Upon acceptance, the application will be published

in the Trade Mark journal which may be accessed
by any member of the public
Publication
Notice of
opposition
Opposition
Proceedings
Any interested party may oppose

the registration of the mark within
2 months of the publication
Opponent files Notice of

Opposition
Applicant to serve a counter-statement.
Otherwise, application is deemed withdrawn
Opponent to file evidence in support
of this opposition. Otherwise,
opposition is deemed withdrawn
Outcome of hearing in
favor of the applicant
A hearing before the Registrar takes place
followed by a decision at the hearing. If
opposition is dismissed in favor of the
applicant, the applicant proceeds to registration.
Otherwise the application be refused
Successful Registration
Application Refused
110
Source: Intellectual Property Office of Singapore, http://www.ipos.gov.sg/NR/rdonlyres/44095045-6D9743E5-91D1-948F670B9031/452/tmapp_flowchart.gif
Enforcement
IPOS is the leading government agency in policy-making and drafting legislation dealing
with IP enforcement. Several other agencies, however, are in charge of other aspects of IPR
enforcement. These include Customs, the Police, the Immigration and Checkpoints Authority,
the Ministry of Law and the Attorney Generals Chambers as the public prosecutor.126
Patent and trademark infringement can be penalized via civil action. For patent infringement,
civil remedies include an injunction to stop the infringing activity and an award of damages
based on the profits gained by the infringing party and/or losses suffered by the rights holder.
For trademark infringement, civil remedies include a sanction to stop the infringing action
and to demand the profits gained by the infringing party or damages for the loss suffered.
There is no specialized court for IP. All civil actions are initiated in the Subordinate Courts or
the High Court, and appealed to the Court of Appeals.127
However, IPOS offers alternative dispute resolution through the Hearings and Mediation
Division. The stakeholders will be asked to consider negotiation, Case Management
Conferences (CMCs)128 and pre-hearing reviews. Most patent disputes are resolved by
hearings whereas most trademark disputes are resolved by CMCs and pre-hearing reviews.129
Recommendations
1. IPRs are clearly well-protected in Singapore through modern administrative
procedures and effective enforcement mechanisms. However, IPOS practice of
outsourcing all search and examination work to three different offices creates the risk
disparity between the results of examinations and the final decisions on granting
patents. All search and examinations should be outsourced to one international office.
2. Provide a local appeal procedure so that any adverse decision of the contracting patent
office can be appealed to IPOS, with a further right of appeal to the Singapore Court.
3. The technical expertise of the IPOS should be strengthened through recruitment
and/or training.
4. The two-track system leads to a long pendency period in light of the rapid
obsolescence of certain technologies, especially in those fields in which Singapore
specializes.
5. The IPOS should abandon the self-assessment system, granting patents only to
those applications receiving positive examination results.
126
Liew Woon Yin, Asian Symposium on Intellectual Property Protection and Cooperation,
http://www.jpo.go.jp/torikumi/ibento/ibento2/pdf/asia_sympo_siryo/singapore_e.pdf (accessed March 27,
2011).
127
ASEAN Project on the Protection of Intellectual Property Rights (ECAP III), http://www.ecapproject.org/archive/archive/how_to_enforce_your_ipr/singapore.html (accessed March 27, 2011).
128
IPOS implemented Case Management Conferences (CMCs) as a formal dispute resolution for every case
since 2009.
129
IPOS, Annual Report 2009/2010, 64.
111
6. IPOS should review its current trademark registrability standards and consider
adopting a more straightforward examination process for the benefit of trademark
applicants.
7. The Singaporean administration may want to consider an IPOS under the Ministry of
Trade and Industry, as opposed to its current organization within the Ministry of Law,
as this refocused office might better serve the countrys development agenda (i.e. an
office set up to serve industry via IP policy and implementation could more efficiently
respond to business trends and needs.
112
VIII. THAILAND
Overview
The total GDP of Thailand in 2010 was USD 580.3 billion, resulting in a per capita GDP of
USD 8,700, adjusted for purchasing power parity. After Singapore and Malaysia, Thailand
has the third highest per capita GDP in ASEAN. The main components of Thailands
economy are industry (45.6%), services (44%) and agriculture (10.4%).
With exports reaching USD 191.3 billion and imports at USD 156.9 billion in 2010,
Thailands trade balance was positive. Primary export destinations include the United States
(10.9%), China (10.6%) and Japan (10.3%). On the import side, products are mainly arriving
from Japan (18.7%), China (12.7%), and Malaysia (6.4%).
Thailands main exports are textiles, footwear, fishery products, rice, rubber, jewelry,
automobiles, computer parts and electrical appliances. Key imports include capital goods,
intermediate goods, raw materials, consumer goods and fuels.130
Legal Framework
Thailand is party to the Berne Convention and is a member of WTO and thereby party to the
TRIPS agreement. Additionally, Thailand became a signatory to the PCT in September 2009.
Thailand is now studying the impacts of accession to the Madrid Protocol. A working group
of legal experts from both government and the private sector has been established to oversee
accession to the Protocol.131
Thailand has promulgated laws dealing with patents, first in 1979 with the Patent Act BE
2522, then with subsequent amendments in 1992 and 1999 by the Patent Act No. 2 and No. 3,
respectively. In the field of trademarks, new legislation was enacted in 2000 (Trademarks Act
No. 2, BE 2543). There is an intention, with redrafting ongoing, to amend the Patent Act as
well as the Trademark Act. A chronology of Thailands IP history is presented as follows:
1914
1936
1961
1963
The Trademarks and Trade Names Act, B.E. 2457 (1914) was promulgated.
The Trademark Act, B.E. 2474 (1931)
The Trademark Act (No. 3), B.E. 2504 (1961)
In 1923 a unit dealing with patent law was established as a division of the
Department of Commercial Registration.
1978 The Copyrights Act, B.E. 2521 (1978)
1979 The Patents Act, B.E. 2522 (1979)
1991 The Trademark Act B.E. 2534 (1991) was promulgated, repealing the
Trademark Acts of 1931 and 1961.
130
Central Intelligence Agency. https://www.cia.gov/library/publications/the-world-factbook/geos/th.html

131
Department of Intellectual Property.
http://www.ipthailand.go.th/ipthailand/index.php?option=com_content&task=view&id=613&Itemid=331
113
1992 The Department of Intellectual Property (DIP) was established to take the
principal role in registering IPR in accordance with Thai law. The Patents Act
(No. 2), B.E. 2535 (1992)
1997 The Central Intellectual Property and International Trade Court was founded.
1999 The Patents Act (No. 3), B.E. 2542 (1999) [the current patent law, amending the
Patents Act, B.E. 2522 (1979)] and The Protection of Plant Varieties Act, B.E.
2542 (1999)
2000 The Trademarks Act (No. 2), B.E. 2543 (2000) [the current trademark law] and
The Protection of Layout-Designs of Integrated Circuits Act, B.E. 2543 (2000)
were promulgated.
2002 The Trade Secrets Act, B.E. 2545 (2002)
2003 The Protection of Geographical Indications Act, B.E. 2546 (2003)
2005 The Manufacture of Optical Discs Act, B.E. 2548 (2005)
2009 Accession to the Paris Convention for the Protection of Industrial Property and
the Patent Co-operation Treaty (PCT) in December 2009.
In 1992, with the passage of Patent Act No. 2 (B.E. 2535), the Department of Intellectual
Property (DIP) was created as a part of the Ministry of Commerce. The DIP is responsible
for:
1) Performing work in connection with the protection of intellectual property rights
under the IP law.
2) Performing work in connection with the protection of IP.
3) Performing work in connection with registration for protection of IPR under
international agreements or cooperation.
4) Promoting the protection of IPR both domestically and overseas.
5) Conducting reforms and revisions for legislation related to the protection of IP.
6) Performing work in connection with the suppression of intellectual property
infringement.
7) Promoting activities leading to the creation, management and commercial exploitation
of IP.
8) Handling the settlement of IP disputes.
9) Performing such other activities as prescribed by law to be under the responsibility of
the Department of Intellectual Property.
The DIP structure is illustrated in Chart 25.
The DIP is not an autonomous body and does not have the authority to manage its own
budget. In 2010, the government allocated THB 226.1 million for DIP operations, whereas
the revenue of the DIP, from registered fees, booklets and other sources, neared THB 385
million. Until now the DIPs revenues have always been much greater than the budget
allocated from the government. Repatriation of these funds should be reconsidered, as there
are still a great number of projects yet to be undertaken by the office that will require
sufficient funds to be successful (i.e., increasing the workforce, establishing measures for
efficient and effective enforcement of IP, IT system upgrades, etc.). The office reportedly
seeks to undergo a clean-sweep of its processes in order to increase application turnover and,
consequently, is currently struggling with existing channels to corporatize its operations. The
forthcoming ASEAN Economic Community may well be an effective medium through which
to facilitate future efforts toward autonomy. Accordingly, the office has commissioned
114
Chulalongkorn University to conduct a study on office corporatization, and to engage

ASEAN and other international organizations in supporting the office in progressing toward
this goal. Thai officials affirmed that government bureaucracy will pose the greatest
challenge to the DIP moving forward.
Table 55 Budget of the DIP by Type (THB)
Budget of the DIP (THB Million)
Type of Budget
2007
2008
2009
2010
2011
Personnel
76.9
80.4
92.1
95.5
100.6
Operating
61.6
68.4
115.2
110.0
105.1
Investment
15.4
32.7
20.7
14.9
19.6
Supporting
0.5
2.7
2.6
2.6
2.7
Others
4.0
5.4
13.8
3.1
88.2
158.3
189.5
244.4
226.0
316.2
Total
Source: Annual Report 2008, 2009, 2010, Department of Intellectual Property, Ministry of Commerce of
Thailand
Chart 25 Structure of the Thai Department of Intellectual Property

e art ent of Intelle t al Pro ert
Copyright Office
Office of the
Secretary
Intellectual
Property
Management
Office
Administration
System
Enhancement
Group
Patent Office
Office of
Prevention and
Suppression of
Intellectual
Property Rights
Legal Office
Design Office
Internal Audit
Trademark
Office
Promotion and
Development Division
PCT Receiving
Office
Source: Adjusted from Annual Report 2010, Department of Intellectual Property, Ministry of Commerce of
Thailand
115
Table 56 Revenue and Budget of the DIP

Revenue of the DIP (THB Million)
Type of Revenue
2006
2007
2008
2009
2010
Registered Fee
336.2
357.9
360.2
349.9
383.8
2.1
2.0
1.6
1.4
1.3
338.3
359.9
361.7
351.3
385.0
Booklets and
Others
Total Revenue
Thailand
Table 57 presents the total number of staff employed by the DIP. The year 2009 marked a
significant development in the Thai Patent Office as the number of patent examiners almost
doubled from 24 in 2001 to 41 in 2009 (with 42 in 2010). However, not all the examiners
worked on invention applications. In fact, in 2010 only 17 examiners were substantive
examiners, responsible for invention applications. These examiners work in three main
groups: biotechnology and pharmaceutical products; chemistry; and engineering, electrical
and physics. The rest, including assistant examiners, worked on design patent and petty
patent applications.
The number of trademark examiners in 2001 was 24, but has declined to 18 in 2010.
Table 57 Number of Personnel in the DIP
Number of personnel in the Thai Department of Intellectual Property
Type of Personnel
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
Patent Examiner
24
24
29
29
29
29
29
29
41
41
Trademark Examiner
Administration
position
Legal Officer
Supporting Staff &
Others
Subtotal
Permanent Contract
Employees
Temporary Contract
Employees
Government
Employee
21
21
18
18
18
18
18
20
16
18
13
13
13
15
15
15
15
16
15
16
18
18
26
26
26
26
26
26
32
32
83
82
114
112
111
111
110
107
128
122
159
158
200
200
199
199
198
198
232
230
45
45
45
43
42
42
39
38
36
36
86
101
116
133
134
134
137
138
139
139
Total
290
304
361
376
375
375
374
374
407
405
Government Officials:
Thailand
116
Most patent examiners have a degree in science; 11.9% possess a bachelors degree and the
rest have a masters degree in non-science. Most of the examiners have experience of less
than 10 years; 23.8% have 10 to 15 years of experience and 11.9% have 15 to 20 years of
experience. (Table 58 and Table 59)
Slightly more than half (55.6%) of the trademark examiners graduated with a bachelors
degree. The rest have a masters degree. All of these degrees are in non-science fields. More
than half of the trademark examiners have more than 10 years of experience. (Table 58 and
Table 59)
Degree
Bachelor
Office
Master
Doctoral
Science
Nonscience
Science
Nonscience
Science
Nonscience
Patent
examiners
37
Trademark
examiners
10
Source: DIP

Office
Less than 5
years
Patent
examiners
Trademark
examiners
5-10 years
10-15 years
15-20 years
More than
20 years
10
27
2
Source: DIP
The starting salary of both patent and trademark examiners is THB 12,000. For a junior level
with experience between 0-5 years, this is much better than the minimum salaries in many
fields, including engineering, human resources, and finance and accounting. The maximum
salary of THB 50,000 for a senior level with 5-10 years is considered low, compared to the
previously mentioned fields, in which salaries often reach six figures.132
Patent Applications
In Thailand, a patent is categorized as either an invention or a design, while utility models are
referred to as petty patents. During 2000 to 2010, on average, most of the patents were
designs, whereas only 15.3% were inventions. Overall, the numbers of domestic patent
applications are much lower than that of foreign applications. Applications originating from
132
Adecco. Thailand Salary Guide 2011, p.1.
117
Thailand amounted to approximately 38.4% of total applications (Table 60). From 2005
onward, the volume of patent applications has been relatively stable at around 10,000 per
annum.
Total applications fell by 43.1% in 2010 due to Thailands joining of the PCT in January of
that year. The drop occurred mostly in foreign invention applications.
Table 60 Number of Patent Application in Thailand
Year
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
Total
Thai
2,500
2,504
3,030
3,426
3,428
4,258
3,564
3,478
3,637
4,196
3,539
37,560
Number of Patent Application in Thailand

Total of Patent
Invention
Foreign Subtotal
Thai
Foreign Subtotal
5,246
7,746
561
4,488
5,049
5,490
7,994
534
4,798
5,332
4,696
7,726
615
3,874
4,489
5,148
8,574
802
4,141
4,943
5,514
8,942
819
4,554
5,373
6,627
10,885
891
5,449
6,340
6,257
9,821
1,040
5,221
6,261
6,861
10,339
945
5,873
6,818
6,924
10,561
902
5,839
6,741
5,534
9,730
1,025
4,832
5,857
2,000
5,539
891
1,034
1,925
60,297
97,857
9,025
50,103
59,128
Thai
1,939
1,970
2,415
2,624
2,609
3,367
2,524
2,533
2,735
3,171
2,648
28,535
Design
Foreign
758
692
822
1,007
960
1,178
1,036
988
1,085
702
966
10,194
Subtotal
2,697
2,662
3,237
3,631
3,569
4,545
3,560
3,521
3,820
3,873
3,614
38,729
Source: DIP Website
Table 61 Number of Patent Registration in Thailand

Number of Patent Registration in Thailand
Year
Total of Patent
Invention
Design
Thai
Foreign
Subtotal
Thai
Foreign
Subtotal
Thai
Foreign
Subtotal
2000
164
580
744
45
371
416
119
209
328
2001
418
1,098
1,516
58
738
796
360
360
720
2002
635
1,831
2,466
39
1,063
1,102
596
768
1,364
2003
797
1,529
2,326
56
950
1,006
741
579
1,320
2004
867
1,177
2,044
57
659
716
810
518
1,328
2005
505
817
1,322
62
491
553
443
326
769
2006
568
1,310
1,878
118
1,003
1,121
450
307
757
2007
662
1,162
1,824
118
830
948
544
332
876
2008
781
1,404
2,185
62
904
966
719
500
1,219
2009
768
1,242
2,010
59
787
846
709
455
1,164
2010
889
1,215
2,104
48
724
772
841
491
1,332
Total
7,054
13,365
20,419
722
8,520
9,242
6,332
4,845
11,177
Source: DIP Website
118
Table 62 Statistics of Petty Patent Application and Granted

Statistic of Petty Patent Application and Granted
2000
Thai
555
Application
Foreign
61
Thai
108
Registration
Foreign
17
Total
616
Total
125
2001
745
66
811
341
51
392
2002
1,148
74
1,222
376
13
389
2003
1,290
54
1,344
476
11
487
2004
1,390
64
1,454
364
28
392
2005
1,561
91
1,652
592
17
609
2006
1,968
94
2,062
750
41
791
2007
1,354
81
1,435
852
50
902
2008
1,423
92
1,515
638
73
711
2009
1,416
51
1,467
451
43
494
2010
1,238
90
1,328
634
51
685
Total
14,088
818
14,906
5,582
395
5,977
Year
Source: DIP Website
Based on available data, from 2000 to 2010 the average pending rate of patent applications
was approximately 7.2% per year, while the rate for petty patent applications was about 5.4%
per year. Since the rejected and abandoned numbers are not available, the pending rate
calculated here will most likely be overestimated.133
Patent Procedure
All types of patent applications must be filed at the Registration Section of the Patent Office
in the Department of Intellectual Property, or via registered mail to the office. When a patent
application for an invention has been filed and a fee paid, and after the preliminary
examination is complete, the responsible officer will publish the application for 90 days. If
there is no opposition, the applicant must request an examination within five years of the
publication date. The Patent Office Department will do a prior art search and then grant the
patent if the application qualifies. To accelerate the search and substantive examination
process, applicants can request IP Australia to conduct the examination; however, as this
alternative approach requires a hefty additional fee, it is not very popular, accounting for only
five applications per year. In the case of a patent on product design, the applicant is not
required to request an examination; the office will do the examination automatically, 90 days
after the publication. Every granted patent must be signed by the Director General within
three days of the receipt of application; this policy, in the absence of the Director General,
results in unnecessary process pendency. Patents receive 20 years of non-renewable
protection, counted from the filing date. A petty patent is protected for six years and is
renewable for two years, up to a maximum of ten years from the filing date.
133
119
Thailand became the 142nd contracting state of the PCT on December 24, 2009. The
implementation of the PCT is not retroactive, and applies only to PCT applications filed on or
after December 24, 2009. Thailands DIP officially opened the PCT Thailand Receiving
Office on September 29, 2009, and as of October 2010, the office has received 42 PCT
applications.
A PCT application seeking protection in Thailand has 30 months after the filing date of the
PCT to file a national phase application. All the necessary documents must be translated into
the Thai language. Currently, international applications filed by nationals or residents of
Thailand can use the following offices as a competent ISA and IPEA: the Japanese Patent
Office, European Patent Office, Korean Intellectual Property Office, State Intellectual
Property Office of the Peoples Republic of China, and the United States Patent and
Trademark Office.
Chart 26 Flow Chart of Patent for Invention Application
Source: Annual Report 2009, Department of Intellectual Property, Ministry of Commerce of Thailand
PCT allows 8 to 18 months to complete the national filing. This should benefit Thai patent
applicants as they can receive a 90% discount for the PCT application fee as well as a 75%
120
discount for the EPO examination fee.134 In addition, the applicants are able to evaluate their
applications, using the examination results of an international examination, to decide whether
it is worthwhile to file the application in the national phase in other countries. However, a
problem is expected due to the time limitation; having to wait for the PCT examination
results (the 28th month), foreign PCT applicants will have only two months to prepare
necessary documents and translate their applications into Thai when filing in the Thailand
national phase. This time restraint is typically difficult to meet. Although there is a grace
period that allows a delay in submission of the translated applications, legitimate reasons (i.e.
beyond translation issues) are required.
In theory, the patent procedures should take an average of 33 months. In reality, this could
take up to five to six years or more. Patent applications in physics and biotechnology fields
can reportedly take 5-9 years. The primary problem causing the delay is an insufficient
number of examiners, and as the government limits the size of the offices staff, this barrier
currently appears insurmountable. During 2001 to 2008, on average, a patent examiner is
responsible for 561 applications per year, including invention, design and petty patent
applications. The situation improved in 2009 and 2010 due to additional examiners and fewer
applications, a result of the PCT; applications per examiner in 2009 and 2010 were 273 and
164, respectively. However, this average may be underestimated because, as mentioned
above, there were only 27 examiners who examine invention patent applications. Taking into
account only invention patent applications and the related examiners, the average applications
per examiner was 421 in 2008 and 254 in 2009, before a drastic decrease in applications in
2010 which led to an average of 71. Before 2010, each invention examiner would have to
finish roughly more than one invention application for every working day in a year. To
alleviate the backlog problem, the DIP also outsources some patent search and substantive
examinations to competent outside agencies, with additional fees incurred on applicants.
Incomplete and poorly prepared applications are also important factors. A majority of
domestic applicants, such as small inventors, prepare their applications themselves, rather
than hiring a law firm to do the job, as they cannot afford to pay the associated high fee. For
cases in which applicants do not have sufficient knowledge to prepare applications, patent
examiners often need a long period of time to examine and provide feedback and suggestions.
Another problem occurs with foreign applications; although most of the foreign applicants
only need to submit their translated examination results or foreign-granted patent documents,
the translations are often poor, making the applications unclear and difficult to examine.
Most foreign applications are in English language; this causes another serious issue for
examiners, who have great difficulty in reading the applications technical descriptions.
In the past, the DIP has provided several remedies to alleviate the domestic problem. These
include organizing patent agent training courses for the public, whose members must pass a
test and be registered to become a patent agent, and the signing of 15 MOUs with
government agencies and educational institutions which provide patent agent training for
their personnel in an attempt to create patent agents who can charge inexpensive fees. Both
methods helped to alleviate the problem, but they did not eradicate it; despite the trainings,
these patent agents often still lack necessary skills and experience. Most of the trained agents
do not become full-time patent agents. Presently, the DIP offers a patent training course for
about THB 80,000 for 100 hours.
134
It is worth noting that this discount is made possible by a government incentive to encourage Thai locals to
file patent applications; if the office were to be corporatized, the application fee would likely need to be
increased to support the independent office, and this may deter locals from filing for patent protection.
121
A lack of experienced examiners also leads to delays in the patent registration procedure.
Table 59 shows that more than 60% of the examiners have less than five years of experience.
Other problems include insufficient search tools and a lack of qualified examiners. The DIP
is not currently hiring new examiners, and the office is skeptical of new technology training
initiatives for seasoned employees. Firstly, these examiners are often unwilling or unable to
abandon established habits; also trainings take time away from staff members already
overbooked schedules. The office desires to bring in young examiners freshly trained in
emerging fields; however, under limitations imposed by the present administration, this is not
possible.
In Thailand, the number of domestic trademark applications has always exceeded that of
foreign applications. According to Table 63, domestic applications accounted for about
65.7% of the total trademark applications. In terms of total trademarks registered, domestic
registrations accounted for 60.7%. On average, in the past ten years, 60% of registered
trademarks were domestic.
Table 63 Trademark Application and Registration in Thailand
Trademark Application and Registration in Thailand
Year
Application
Foreign
11,560
Total
27,055
Domestic
7,686
Registration
Foreign
6,531
2000
Domestic
15,495
Total
14,217
2001
16,712
9,407
26,119
11,453
8,484
19,937
2002
21,518
8,591
30,109
13,281
9,865
23,146
2003
23,335
9,714
33,049
11,440
6,543
17,983
2004
26,414
10,554
36,968
15,918
7,614
23,532
2005
24,275
12,148
36,423
18,497
8,948
27,445
2006
21,171
12,401
33,572
15,595
8,520
24,115
2007
20,140
13,415
33,555
14,769
9,871
24,640
2008
21,950
13,472
35,422
12,574
9,367
21,941
2009
24,733
11,354
36,087
11,981
10,502
22,483
2010
24,781
12,875
37,656
13,268
8,562
21,830
Total
240,524
125,491
366,015
146,462
94,807
241,269
Source: Department of Intellectual Property, Thailand
Trademarks, service marks, certification marks and collective marks may be registered. Wellknown marks are also protected. The trademark application process takes roughly 10-15
months, but can take up to 12-18 months from the date of application filing. As in other
countries, protection starts on the application filing date. The term of protection is 10 years
122
and can be renewed for another 10 years indefinitely, so long as the owner of the trademark
still exercises his/her right to renew within the terms prescribed by the law.
The mark of an application that is found to meet all the distinct properties and registration
criteria will be published in the Trademark Gazette for 90 days. If there is no objection, the
mark is granted registration.
The primary problem reported to cause delays in the trademark procedures was an
insufficient number of examiners. With only 18 trademark examiners in 2010, each examiner
faced 2,092 applications per year. This is over 800 applications more than the average in
2001, when there were 21 examiners.
Incomplete or poorly prepared applications were the second most common cause of delay. In
many cases, marks were not sufficiently distinctive from existing trademarks. Applicants also
often failed to comply with the registration instructions.
Other less common problems were insufficient search tools and computer hardware and
internet problems.
Currently, a newly drafted law to improve the DIPs trademark capabilities awaits
endorsement by the Parliament. Beyond reducing the trademark publication period from 90
to 60 days, the amendment would clear the way for the registration of certain nonconventional trademarks including scent and sound marks.135
The Department of Intellectual Property has begun the development of an IP information
technology system (Phase II) to provide information and registration through the Internet.
Patent examiners at the DIP utilize many search databases, including JPO (Japan), KIPO
(Korea), EPO, USPTO, SIPO (China), WIPO, Australia and Germany, as well as its internal
database. Applicants can search patent information online at http://patentsearch.moc.go.th
free of charge. The search results show patent data including an abstract and drawing.
Moreover, applicants can purchase a Thai gazette CD-ROM with patent information from
November 2006 to present for 250 Baht from the DIP.
Trademark applications can now be filed online at www.ipthailand.org. The online system
allows applicants to fill and submit an online form as well as attach the trademark files they
want to register. The system allows two methods of fee payment: online via United Overseas
Bank (UOB) (Thai) and via a UOB counter. The applicant can register, pay the fee, check the
application status and search the trademark database.
In terms of hardware, each of the DIPs 450 staffers has a computer work station typically
equipped with an Intel Core 2 Duo processor, the office is supported by 50 servers. The
internet bandwidth is fast and stable with the capacity of a 10 Gbps fiber optic network.
The internal database at the DIP needs a major transformation. In the past, the DIP
outsourced its database system creation and maintenance to IT companies. Each project must
be finished within one year. Problems often occur due to insufficient budgets, inadequate
135
Expert interview
123
time (one year), and the poor quality of work provided by outsourced firms. The office is
currently working with local universities to improve in-house patent search processes.
Presently, WIPO has agreed to help install the Industrial Property Automation System (IPAS)
system (version IPAS Java) in order to modernize IP services toward a paperless system. It is
projected that the system will be complete in 2014. Additionally, DIP receives the two-year
free trial of EPOQUENet from EPO; however, the office reports that examiners require
training from the EPO if they are to effectively employ this complicated system.
Chart 27 Trademark Procedure
Filing of Application
Preliminary Examination
Correction of
Application
Voluntary
Agreement
Registration
Order
Agreement Failed
(Registering Firstly
Filed Application
Agreement
Successful
No counterstatement
Counter-statement
(within 90 days)
Registrar's
Decisions
No
Appeal
Appeal to the
Commission
(within 90 days)
Publication
(90 days)
Opposition
Rejection
Order
No
Appeal
Appeal
Successful
Appeal
dismissed
Discharging the
Application
No
Opposition
Appeal to the
Commission
(within 90 days)
Judicial Review
(within 90 days)
Discharging the
Registration
Application
Source: Annual Report 2009, Department of Intellectual Property, Ministry of Commerce of Thailand
124

The main IPR enforcing bodies in Thailand are the Central Intellectual Property and
International Trade Court (CIPITC), the Royal Thai Police (Economic and Technological
Crime Suppression Division, Central Investigation Bureau; Metropolitan Police Bureau; and
Provincial Police Bureaus 1-9), and the Department of Special Investigation (DSI). Further,
the Department of Intellectual Property (DIP) itself has a responsibility to implement relevant
laws of enforcement, and cooperate with other organizations on the oversight of IPR
enforcement.
Thailand has created a number of entities to deal specifically with IP enforcement. The
Headquarters for Economic Investigations and Inquiries was established in 1992. To prepare
the courts for impending legal disputes, an Intellectual Property and International Trade
Court was instituted in 1997, followed in 1999 by the Office of Intellectual Property and
International Trade Litigation. In 2002, the Special Investigation Department was established
to handle the unique challenges of IPR enforcement. In January 2009, the Commission on
Intellectual Property Infringement Prevention and Suppression was established with the
duties of formulating policies and strategies on the prevention and suppression of IP
infringement, and of directing, inspecting and monitoring work performance of governmental
agencies and related bodies. The name of the commission was later changed to the National
Intellectual Property Policy Commission.136
Following the DIPs establishment of the Prevention and Settlement of Intellectual Property
Disputes Office in 2002, many disputes have been referred to the Office for Mediation and
Arbitration. During the period October 2009- September 2010, 41 IP disputes were
successfully mediated by the office, and the office has successfully settled more than 300
disputes since its establishment.137 About 98% of IP disputes were settled by mediation. This
is because mediation is a simple process without the involvement of an arbitrator or the
courts, and is therefore typically less expensive. It is important that the office recruit a
separate staff to handle these mediation hearings, so as not to take already limited work time
away from examiners.
A criminal action in a trademark case can lead to penalty fines from THB 200,000 to THB
400,000 and/or imprisonment of two to four years. The penalty fines are similar in the case of
patent infringement, but imprisonment can be from six months to two years.
Recommendations
1. A ministerial order is required to allow PCT applications to submit an application
first in the original language in the national phase so as to meet the deadline, and then
later submit the translated application in the Thai language.
2. It is clear that the number of examiners is too few for Thailands workload, and
efforts should be made to recruit additional patent examination staff. However, the
DIP head counts, like all other governmental agencies, have been frozen by the Office
136
137
Department of Intellectual Property, Annual Report 2009, 61.

Department of Intellectual Property, Annual Report 2010, 70.
125
of Civil Service Commission, and its budget controlled by the government. Its staff
salaries must comply with the government employee scale. These factors make it
difficult for the DIP to increase the number of examiners and attract highly qualified
candidates. It is recommended that the DIP become an autonomous body in order to
solve the significant backlog problem.
3. The training of the examining staff should be strengthened. Language training should
also be provided to examiners in order to speed up examinations, and also to allow
examiners to cultivate knowledge from training programs provided by Englishspeaking experts. Moreover, there should be trainings that allow examiners to gain
knowledge about leading technologies in each field.
4. Clear instruction manuals for each search tool are needed to help examiners in the
search and examination process. A well drafted patent application model should be
utilized to help applicants in drafting applications.
5. Streamlined, technical assistance from the major IP offices, including information
sharing on office-relevant best practices, interactive on-site learning (i.e. examiner
training by EPO representatives at the DIP office), and tailor-made IT and database
solutions. Furthermore, the office suggested that the USPTO and EPO should shift
their Southeast Asian focus, away from demanding enforcement and toward
enhancing administrative capability.
6. University-office collaboration is essential for furthering Thailands innovation
capacity. The DIP should provide IP awareness training and education, and guidance
in an IP manual for university researchers, while clarifying and simplifying
application requirements, in order to encourage and enable professors to file more,
and better, patent applications.
7. Communication between the office and university and private sector stakeholders
would allow for a productive, multidisciplinary approach to discovering and
responding to constant technological changes.
8. An IP curriculum developed by universities in collaboration with the DIP will
increase local IP awareness.
9. Process improvements should be addressed within the DIP to ensure optimal
efficiency. For example, after a paper application is filed at the front desk of the DIP,
it is transported to a secretarial desk where it must be manually transposed into
electronic form, increasing chances for error while allocating limited time and
resources on this superfluous worker the office should consider streamlining this
process.
10. The office should draft a revised application review handbook of standardized
technical language and formatting requirements, clearly outlining all regulations in
detail. These regulations should be consistently adhered to by examiners, and made
available to applicants to assist them in preparing their IP applications. This measure
would result in a more accurate and efficient application review process.
126
IX. VIETNAM
Overview
Vietnam is undergoing a rapid economic transformation, becoming increasingly marketoriented. The countrys induction into the WTO in 2007 has encouraged strong annual
growth in international trade and foreign direct investment (FDI) activities as well as
indigenous entrepreneurship. Vietnam felt the impact of the global economic crisis in 2009,
but the country recovered quickly in 2010.
Vietnams GDP in 2010 amounted to USD 278.1 billion or about USD 3,100 per capita when
adjusted for purchasing power parity. Vietnams real growth in 2010 was 6.8% and inflation
was 11.1%. Contributions to GDP by sector were 20.5% from agriculture, 40.2% from
industry and 39.2% from services. In 2010, FDI was approximately at USD 60 billion.
Economic activities related to FDI directly employ hundreds of thousands of skilled and
experienced workers.
Vietnam had an overall negative trade balance in 2010, with exports worth USD 70.76 billion
and imports worth USD 81.73 billion. Vietnams major import sources were China (16.42%),
Singapore (9.61%) and Japan (8.96%), whereas the largest recipient of Vietnamese exports
was the United States. Leading exports are crude oil, marine products, rice, coffee, rubber,
tea, garments and footwear. Key imports include machinery and equipment, petroleum
products, fertilizer, steel products, raw cotton, grain, cement and motorcycles.138
According to Benoit Battistelli, president of the European Patent Office, Vietnam is a
typical example of dynamic development in the ASEAN region. IP has risen as an economic
tool. Vietnams recent experience shows that patents are an effective tool for encouraging
innovation and enhancing competition and economic development.139 There is no doubt that
activities dependent on the protection of IP will play an important role in Vietnams
economic future.
Legal Framework
Vietnam has ratified many of the major international IP treaties, including the Berne and
Paris Conventions, WIPO Convention, PCT, Geneva Convention, Rome Convention,
Brussels Convention, Madrid Agreement and Madrid Protocol. Vietnam joined the WTO in
2006.
Vietnams legal system uses the 1995 Civil Code, amended in 2005. Vietnams current IP
Law was issued in 2005 and amended in 2009 to improve the IP system and to comply with
TRIPS. In addition, there are several Governmental decrees and Ministerial circulars guiding
the implementation of IP provisions of the Civil Code and the IP Law.
138
Central Intelligence Agency, https://www.cia.gov/library/publications/the-world-factbook/geos/vm.html

(accessed February 14, 2011).
139
Ha Noi Talks about Patent Protection, Vietnam news, January 13, 2011,
http://www.dztimes.net/post/business/ha-noi-talks-about-patent-protection.aspx (accessed February 14, 2011).
127
As of 2010-2011, Vietnam is in the process of constructing a national IP strategy plan to

build a more standardized law that supports IP rights and creations. Also, there are several
draft decrees and directives pending approval in 2011.

The Intellectual Property Office of Vietnam was created by decree in 1982, and has been
developed in successive steps since that time. In January 1982, the State Committee
promulgated Decree No. 125/HDBT on the organization of the State Committee for Science
and Technology, which declared the establishment of the National Office of Invention the
predecessor of the National Office of Industrial Property - now referred to as the National
Office of Intellectual Property (NOIP).
NOIP is subordinate to the Ministry of Science and Technology (MOST). The DirectorGeneral and the Deputies Director-General of the NOIP are appointed by the Minister to
serve five-year terms. The Director-General then appoints the heads of divisions and bodies
within NOIP. The NOIP organization comprises 19 divisions including two branch offices in
Ho Chi Minh City and Da Nang. (
128
Chart 28)
129
Chart 28 Organization Chart of the NOIP

Director General
TA QUANG MINH
Deputy Director
General
HOANG VAN TAN
Deputy Director
General
PHAM PHI ANH
Deputy Director
General
TRAN HUU NAM
General
Administrative
Office
Legislation and
Policy Division
Invention Division
No. 1
Trademark Division
No. 1
International
Cooperation Division
Registration Division
Invention Division
No. 2
Trademark Division
No. 2
Organizational
and Personnel
Division
Industrial Design
Division
Invention Division
No. 3
Geographical
Indication Division
Enforcement and
Appeal Division
IP Information
Centre
Supporting and
Consulting Centre
IT Division
Research and
Training Centre
Branch Office in Ho
Chi Minh City
Branch Office in Da
Nang City
Source: NOIP
NOIP is a semi-autonomous organization. Of the entire application fee, 85% is collected by

the office whereas 15% is sent back to the government. The Ministry of Science and
Technology provides additional funding to the office.
Under various frameworks of bilateral and multilateral cooperation, Vietnam received many
training courses for NOIP officials. For example, with assistance from WIPO, EPO, USPTO,
JPO, SIPO and KIPO, NOIP was able to organize trainings on patent and trademark search
and examination for more than 100 staff members in 2010.140 Two academic institutions, in
140
National Office of Intellectual Property of Vietnam, Intellectual Property Activities Annual Report 2010,
p.19.
130
Hanoi and Ho Chi Minh, and supported by NOIPs expertise, provide patent agent training
courses lasting six months at a fee of USD 200.
The total number of staff increased from 253 in 2008 and 2009, to 294 in 2010. The year
2010 alone marked a sizeable change in the number of NOIP staff, with 41 staff added to the
office, a 16.2% increase from the previous year. About half of those were new patent and
trademark examiners. Of the NOIPs total staff, 53 were patent examiners and 63 were
trademark examiners.
An examiners salary is not competitive compared to the private sector. The range for patent
and trademark examiners salary is between USD 300 1,000. However, there is an incentive
for examiners called the point system. The target point for each examiner is determined to
be one point per month. The point is determined by each examiners activities. For example,
if the examiner conducts the formality examination, the examiner will receive 0.1 points. If
the examiner does not reach the target, his salary will be decreased. (Vietnam examiners
receive two types of salary. The first is the government salary that cannot be changed unless
permitted by the government. This amounts to one-third of the whole salary. The other part is
the additional, adjustable salary from the NOIP.)
Table 64 Type and Number of Staff in the NOIP
Number
Type of personnel
2008
2009
2010
General Administrative Office
31
31
34
International Cooperation Division
10
11
11
Legislation and Policy Division
15
12
12
Invention Division 1, 2, and 3
45
44
56
Trademark Division 1 and 2
54
56
59
Industrial Design Division
11
11
12
Geographical Indication Division
13
Registration Division
29
31
32
Enforcement and Appeal Division
Organizational and Personnel Division
IT Division
13
12
19
IP Information Centre
17
15
17
Branch Office in Ho Chi Minh City
11
Branch Office in Da Nang City
Total
253
253
29
*Patent examiners (excluding preliminary

assistant examiners)
41
41
53
*Trademark examiners (excluding preliminary assistant examiners)
52
54
63
Source: NOIP
131
All of the patent examiners at the NOIP possess a science degree, 73.6% bachelor, 20.8%
master and 5.7% doctoral. Most of the examiners (67.9%) have less than five years of
experience, whereas 28.3% have more than 10 years of experience. (Table 65 and Table 66)
Most of the trademark examiners, 65.1%, have a non-science degree. Nearly all possess a
bachelors degree. About 28.6% of the trademark examiners have 5-10 years of experience,
and 23.8% have more than 10 years, whereas 47.6% have less than five years. (Table 65 and
Table 66)
Degree
Bachelor
Office
Master
Doctoral
Science
Nonscience
Science
Nonscience
Science
Nonscience
Patent
examiners
39
11
Trademark
examiners
22
36
Source: NOIP

Less than 5
years
5-10 years
10-15 years
15-20 years
More than 20
years
Patent
examiners
36
Trademark
examiners
30
18
Office
Source: NOIP
Patent Applications
Table 67 reflects recent growth in resident applications. Foreign applications have always
made up more than 90% of the total patent applications. The trend for foreign applications as
a percentage of total applications, however, is downward. In 2010, foreign applications
accounted for only 91.4%, compared to 96% in 2001. This being said, more than 96% of total
patents granted are foreign patents, and there has yet to be any major increase in the number
of domestic patents granted.
Unlike other ASEAN countries, the number of patent applications far outnumbered that of the
utility model applications. (Table 68) From 2005-2010, taking into account refused and
withdrawn applications, an average of 11.19% of the applications were pending.
132
Table 67 Applications and Granted Patents (2001 2010)

Patent Applications in Vietnam
Application
Granted
Year
Vietnam
Foreign
Total
Vietnam
Foreign
Total
2001
52
1,234
1,286
776
783
2002
69
1,142
1,211
734
743
2003
78
1,072
1,150
17
757
774
2004
103
1,328
1,431
22
676
698
2005
180
1,767
1,947
27
641
668
2006
196
1,970
2,166
44
625
669
2007
219
2,641
2,860
34
691
725
2008
204
2,995
3,199
39
627
666
2009
2010
Total
258
306
2,632
3,276
29
29
677
793
1,665
20,057
2,890
3,582
21,722
257
6,997
706
822
7,254
Source: NOIP and Annual Report 2009, 26-28.
Table 68 Applications and Granted Utility Solutions (2001 2010)

Utility Solutions Applications in Vietnam
Application
Year
Granted
Vietnam
Foreign
Total
Vietnam
Foreign
Total
2001
35
47
82
17
26
2002
67
64
131
21
26
47
2003
76
51
127
28
27
55
2004
103
62
165
44
25
69
2005
182
66
248
41
33
74
2006
160
76
236
45
25
70
2007
120
100
220
49
36
85
2008
116
168
284
48
27
75
2009
2010
Total
133
215
1,207
120
84
838
253
299
2,045
45
35
373
19
23
250
64
58
623
Source: NOIP and Annual Report 2009, pp.29-30.
133
Chart 29 Top Five Countries for Patent and Utility Solution Applications in 2010
1,000
800
600
400
200
0
USA
Japan
Vietnam
Source: Annual Report 2010, 46.
As shown in
134
Germany
Taiwan
Chart 29, the largest sources of applications in 2010 were the United States (832
applications), Japan (823 applications), and Vietnam (521 applications).
Patent Procedures
The patent procedure in Vietnam is similar to procedures in other ASEAN countries. The first
stage entails filing the Vietnamese language application with the National Office of
Intellectual Property of Vietnam (NOIP), or with one of its twobranch offices. The second
stage is a formality examination that is supposed to take place within one month of the filing
date. After it is accepted, the application is published in the Official Industrial Property
Gazette Volume A, within 19-20 months from the filing date. The PCT application is
supposed to be published within two months of the acceptance date.
Subsequently, an applicant or a third party must file a request and pay a fee for the
substantive examination within 42 months of the filing date for invention patents, and 36
months for utility solutions. This examination will take place approximately 9-18 months
after the request date. If an applicant does not request the examination within the time limit,
the application will be withdrawn. In this stage, examiners can refer to the examination
results issued by EPO, USPTO, JPO, and etc. to expedite the process. As there are no
guidelines for patent examinations stated in the IP law, the examinations differ between
patent examiners. If the application is granted, the granted patent is published in the Official
Industrial Property Gazette Volume B, and is recorded in the National Register of Inventions.
If the application is refused, the applicant can appeal for amendments within two months of
the date of refusal.141
In 2010, there were 53 patent examiners handling 3,666 patent applications, including utility
solution applications. Therefore, each staff person worked on an average of 69 applications
per year, a decrease of 23.2% from 2008 as a result of the additional 12 patent examiners.
(Table 69)
The process for patent applications begins when the receiving division forwards the
application to the patent division, at which point the Director distributes the specific
application to an examiner with related knowledge and experience. After examination, the
application will be returned to the registration division. The whole patent procedure usually
takes approximately 24-36 months. Unfortunately, there may be delays caused by late
examinations or late requests from applicants themselves.142 Some applications are not filed
through PCT; this extends examination time in the national phase.
Table 69 Number of Applications per Patent Examiner
No. of Applications
Patent Examiners
141
2008
2009
2010
3,483
3,143
3,666
41
41
53
National Office of Intellectual Property of Vietnam, Patent Examination Procedure,
http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAgent&UN
ID=56102697F6E208DD4725767B001FE339 (accessed February 17, 2011).
142
Expert opinion
135
85
77
69
Source: calculation using the data from NOIP. Number of applications includes both patent and utility model
applications.
The human resource problem that is most challenging to NOIP is the number of patent
examiners and their lack of experience. Reportedly, a lack of experienced examiners is the
most important factor leading to delays in the patent procedure. Despite the fact that all the
examiners have a degree in science, most of the patent examiners still have relatively few
years of experience; 67.9% have less than five years. It is important that staff competency be
improved. Examiners often leave the division to become patent attorneys, are promoted to
higher positions, or rotate to other divisions. As the government inhibits NOIP from raising
examiners salaries, numerous trainings, especially technical exercises on formality and
substantive examinations, are required to improve new examiners knowledge and skills.
Government-restricted salaries also inhibit NOIP from recruiting highly-trained English
speakers; consequently, the English language is another key problem, especially for the
examiners. Insufficient search tools and an inadequate Internet system further cause delays in
the patent procedure. More search tools and databases are needed.
Beyond these office dilemmas, poorly written and incomplete applications also serve to slow
the application review process. Even if the applications are prepared or translated by patent
attorneys, these agents may have insufficient knowledge of English, Vietnamese, or both.
NOIPs adoption of the standard language of formed paragraphs for application processing is
a positive step toward increased office efficiency. In order to expedite the patent application
process, public communication on IP application procedures should be improved to create
public awareness on IP as well as the patent filing procedure. More training for patent agents,
which are currently available through NOIP for around USD 50 and consulting and support
services for applicants, should be provided. NOIP might utilize its Information Center as the
contact point for clients seeking consultations and support on IP filing procedures before
submitting patent applications.
136
Chart 30 Patent procedures

FILING
Valid
Application
Formal
Examination
Amended
Applications have
the deficiency
Request for
Substantive
Examination
Substantive
Examination
Satisfy the
Protection
Criteria
Un-Appeal against
Notice of
Refusal of
Un-Valid
Acceptation
Application
of Application
Publication of
Application
Fails to
Satisfy the
Protection
Criteria
Request for
Payment of Fees
Accept of Valid
Application
Non-Amendment
Request for
Amendment
Appeal
Against
NOIP
Appeal
Against
(level2)
Appeal
No Request for
Substantive
Examination
Application
deems as
withdrawn
Most
Court
Application deems
as withdrawn
Amended
Application
Needs
Amendment
Notice of
Refusal of
Granting the
Patent
Non-Amendment
Request for
Amendment
Appeal
Against
NOIP
Appeal
Against
(level2)
Appeal
Application deems
as withdrawn
Most
Court
Decide for Granting the

Patent for Invention
Non Payment of Fees
Grant of Patent
for Invention,
Register
Application deems
as withdrawn
Publication of Patent
for Invention
Source : Integrated from Triviet Lawyers & Attorneys143
The number of trademark applications in Vietnam has been rising, with domestic applications
contributing more than 75.9% in 2010, compared to 59.2% in 2000. The same is true for the
143
Triviet Lawyers & Attorneys, http://www.trivietlaw.com.vn/webplus/viewer.print.asp?aid=46&l=EN

(accessed February 17, 2011).
137
number of registrations, where domestic trademark registrations accounted for 74.5% of the
total in 2010, much higher than the percentage in 2000, at only 49.5%. (Table 70)
The three main countries submitting trademark applications in 2010 were Vietnam (21,204
applications), USA (1,579 applications) and Korea (1,143 applications).144
Table 70 Number of applications by type (foreign and domestic) from 2000 onward
Year
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
Total
Application
Domestic
3,483
3,095
6,560
8,599
10,641
12,884
16,071
19,653
20,831
22,378
21,204
145,399
Foreign
2,399
3,250
2,258
3,536
4,275
5,134
6,987
7,457
6,882
6,299
6,719
55,196
Registration
Total
5,882
6,345
8,818
12,135
14,916
18,018
23,058
27,110
27,713
28,677
27,923
200,595
Domestic
1,423
2,085
3,386
4,907
5,444
6,427
2,505
10,660
15,826
16,231
12,313
81,207
Foreign
1,453
1,554
1,814
2,243
2,156
3,333
6,335
5,200
7,464
6,499
4,207
42,258
Total
2,876
3,639
5,200
7,150
7,600
9,760
8,840
15,860
23,290
22,730
16,520
123,465
Source: NOIP Annual Report 2010
Trademark Procedure
Trademarks, service marks, collective marks and three-dimensional marks may be registered
and protected for ten years. The trademark procedure in Vietnam takes approximately 15-18
months.
Trademark applications can be filed at the NOIP office and at either of its branch offices in
Ho Chi Minh City and Da Nang. Since Vietnam is party to the Madrid Agreement and the
Madrid Protocol, trademark applications can be filed as an international application with the
International Bureau of the World Intellectual Property Organization (WIPO).
Currently, a reviewed trademark application must be signed by three different people,
including the head of the office. If the director is away, a backlog of applications will
necessarily ensue. The current policy should be amended to allow for more flexibility in the
approval process in order to decrease applicants waiting times.
Vietnam has adopted the first-to-file system, giving priority to the earliest filed complete
application. Well known marks are protected in Vietnam against signs that are likely to cause
confusion in the relevant public sector, regardless of whether or not the mark is registered.
144
National Office of Intellectual Property of Vietnam, Intellectual Property Activities Annual Report 2010,
p.53.
138
Under the civil procedures or by a recognition decision of the NOIP, such well-known marks
are recorded in NOIPs well-known mark list.
In 2010, the average number of trademark applications per staff was 443, with 27,923
applications and 63 examiners, a 16.7% improvement in the number of examiners over the
previous year. (Table 71)
2008
2009
2010
27,713
28,677
27,923
Trademark Examiners
52
54
63
533
531
443
No. of Application
Source: K.I.Asia calculation using the data from NOIP
Delays in the trademark application procedure have been due to a shortage of examiners,
incomplete or poorly prepared applications, and inadequate search tools. Although the
number of applications per trademark examiner was improved after the addition of nine new
examiners in 2010, most of the examiners still have relatively few years of experience and
need further training. (Table 66) Due to the lack of trademark examiners, existing examiners
must take longer than the prescribed time to conduct each examination. Therefore, it is
recommended that trademark applicants conduct their own trademark searches before filing.
Additionally, examiners have suffered from inconsistency in classifying goods and services
and in assessing the registrability and availability of an applied trademark. Even though most
countries use the International Classification 9th Edition (the Nice Classification), each
country follows different criteria when implementing the classification. As a result, a list of
goods and services that is accepted in one country may be refused in other countries. This has
caused some mark registrations to be invalidated.145 In order to alleviate these problems,
applicants should conduct pre-filing trademark searches through NOIPs online and offline
databases. Applicants and their agencies need to keep track of their application process and
follow up with responsible examiners on the status of their application.
145
Expert Opinion
139
Chart 31 Vietna s Trade arks Registration Pro ed re

1 month
Filing
Amendment
Formality
Examination
Request for
Amendment
Application
having defects
No amendment is
made or satisfied
2 months
1 month
3 months
Application
is made in
undue form
Refusal of
Application
1st
Appeal
2nd
Appeal
NOIP
Acceptance of
Application
MOST
Court
Acceptance of Application
Publication of
Application
Amendment
1 month
Application needs to
be amended
Grant of a
TM
Registration
No response is
made or satisfied
Request for Written

Opinion
2 months
1st
Appeal
Refusal of
Application
Notice of
Allowance
Payment
of Fee
1 month
Criteria for
protection are
not met
Criteria for
protection are met
12 months
Substantive
Examination
2 months
NOIP
2 months
MOST
Court
Acceptance of Granting
Fee is
unpaid
2nd
Appeal
Application is abandoned
Publication
of Registered
TM
Applicant
NOIP
Other Authority
NOIP: National Office of Intellectual Property

MOST: Ministry of Science and Technology
Source : Integrated from D&N International146

Note: Comparable to the chart from the official NOIP
146
D&N International, http://dnlaw.com.vn/index.php?f=ipresource&do=categories&id=6 (accessed February

17, 2011).
140

The NOIP office now has 300 computers, some of which are PCs with Core 2 Duo
processors; the rest are laptops with Dual Core processors, all running off of 20 servers.
Available internet connections include a leased line of 15 Mbps and 2 ADSL connections
with speeds of 1000 Mbps and 45 Mbps, respectively.
NOIP patent documents are primarily stored in CD-ROM and DVD formats to facilitate
searches by patent examiners. NOIP has around 34 million documents in CDs, DVDs, and
over 6,000 patent optical disks from Japan, the United States, EU, etc. in storage. Examiners
can also perform a search through the Internet. However, because of the instability of the
network connection, examiners mainly use information from optical disks.
Additionally, under NOIPs Intellectual Property Information Center, there exists the IP
Digital Library (IPDL), which collects information on published IP applications and granted
patents, industrial designs and trademarks. The information shows the bibliographies
(including abstracts) of pending and granted Vietnamese patent applications, and can be
searched electronically. Users can also find information on Vietnamese IP via links to IPDLs
in other countries such as Japan, Australia, Korea, the United States, Europe and WIPO. This
digital library system, completed in 2009, was created with assistance from Japan under the
Japan-Vietnam Cooperation Project for Utilization of Intellectual Property Information in
Vietnam.147
Nevertheless, domestic patent and trademark databases are limited. Some domestic prior art
is not available in electronic format, as the database is neither regularly nor fully updated.
Other search tools include an Internal Database, Esp@cenet (developed by the European
Patent Office), IPDL, USPTO, PATENTSCOPE and ROMARIN. Though the office desires
the support of commercial database systems, it is concerned, much like its neighboring
offices, over the high costs of such systems.

Many government authorities are involved in IP enforcement, including the Ministry of Trade
(Market Management Authority), the Ministry of Science and Technology (MOST)
(Specialized Inspectorate), the Ministry of Culture, Information, Sport and Tourism
(Specialized Inspectorate), the Ministry of Public Security (Economic Police), the Ministry of
Finance (Customs Offices) and the Peoples Courts. The Specialized Inspectorate of MOST
is the main authority handling all infringement cases.148 The role of NOIP in enforcing the
law is to coordinate with relevant authorities in conducting the state management of,
147
National Office of Intellectual Property of Vietnam, Japan Assists Vietnam in the Field of Property,
http://www.noip.gov.vn/web/noip/home/en?proxyUrl=/noip/cms_en.nsf/(agntDisplayContent)?OpenAgent&UN
ID=89915C81C41D0F3F4725767B00058568 (accessed February17, 2011).
148
Rouse, Alert 379 - Vietnam - New Decree on Administrative Enforcement Clarifies and Strengthens
Vietnam's IP Regime, http://www.iprights.com/content.output/1003/1003/Resources/Alerts/Alert%20379%20%20Vietnam%20%20new%20decree%20on%20administrative%20enforcement%20clarifies%20and%20strengthens%20Vietna
m's%20IP%20regime.mspx (accessed February 13, 2011).
141
protecting, supervising, inspecting and handling infringements of IPR. The Enforcement and
Appeal Division of NOIP is in charge of handling appeals and opposition to the NOIPs
decisions.
The NOIP also plays an important role as a state management agency in dealing with IP
disputes. If there is an appeal on the NOIPs decision relating to IPR establishment within the
time limit, the NOIP must settle the appeal in accordance with the provisions of the law on
complaints. In case of a dispute between an IPR holder and third parties, if the holder files to
accuse a third party of infringing their IP rights, the NOIP will, in cooperation with relevant
authorities, supervise, inspect and handle the infringement. The NOIP will then serve as a
professional IP office, advising and deciding whether or not the third party has violated the
right of the IPR holder. NOIP also advises the courts in IP disputes. In practice, NOIP works
with these departments by preparing and disseminating the national policies and regulations
on IPR enforcement.149
Vietnam has issued a number of decrees and circulars reviewing the proper protocol for
enforcement of IPR. Essentially, there are three ways in which IPR may be enforced;
through administrative action, civil action (or litigation) or criminal prosecution. However,
there is no specific court for IP. A study found that administrative procedures were the most
effective and popular method in suppressing an IPR infringement, while civil action is used
in only a few cases.150 This is due to the fact that Vietnamese courts still lack enough officials
well trained in IP law.
In 2009, some articles on IPR infringement in the Criminal Code were amended to fulfill
international commitments and to improve the feasibility of legal provisions on IPR
enforcement by criminal measures.
The main practitioners of these IP laws are at different levels of the courts and administrative
agencies. Divided by areas, the Court and its governing bodies span the following:
District Courts with judges specialized in civil, economic, criminal and labor matters
Provincial Courts (specialized courts: civil, economy, criminal, administrative, labor)
Appeal Courts (Hanoi, Ho Chi Minh City, Da Nang City)
Supreme Peoples Court
Agencies responsible for administrative procedures against infringement are:

The Customs
The Market Control Organization
The Economic Police
The Specialized Inspectorate (of Science and Technology and of Culture,
Information, Sport and Tourism)
The People Committees at provincial and district levels
Administrative penalties for violators of IPR may include a fine, revocation of a business
license, and forced removal of offending elements from products (depending on the essence
149
The ASEAN Project on the Protection of Intellectual Property Rights (ECAP III), http://www.ecapproject.org/archive/archive/how_to_enforce_your_ipr/vietnam.html (accessed February 17, 2011).
150
Ibid.
142
and extent of the violation). The offender may be subject to confiscation of material,
evidences, and implements used for the infringement. The offender will pay the amount of
actual damages, not to exceed VND 500 million. If the value of the goods cannot be
calculated, the offender will pay no more than VND 90 million.
In the civil court, IPR are treated as civil rights akin to the ownership of tangible property.
Thus, holders of IPR may demand the court to force a person who violates ownership rights
to cease such violations, pay compensation for any damages, and fulfill other civil
responsibilities.
Recommendations
1. There is a need for better examination methodology guidelines for patent and
trademark examiners. Regular reviews of the examination process are also
recommended.
2. Human resources development, especially trainings for patent and trademark
examiners regarding the IP process, IP Law, technical knowledge and innovations
management, is necessary to improve the IP staffs competency, to accelerate the IP
process, and to increase the reliability of IP standards.
3. Even though the number of computers and servers in NOIPs offices are sufficient to
maintain the operation, feedback from IP officials indicates that the bandwidth and
speed are not satisfactory; consequently, the Internet connection should be improved.
4. Apart from the Internet connection, NOIPs storage system should not rely solely on
compact digital disks since several factors might damage those disks. The Office
should develop a complete electronic database.
5. Initiatives to strengthen cooperation with relevant local authorities, as well as regional
and international IP organizations, should be stepped up.
6. NOIP should consider amending its policy on trademark application sign-off, which
currently requires three signatures, to allow for more flexibility in the approval
process and, thus, decrease applicant wait times.
143
X. PEOPLES REPUBLIC OF CHINA
Overview
With a population of 1.3 billion and a fast-growing economy, China has become a major user
and producer of IP. Chinas GDP was about USD 9.87 trillion in 2010 and USD 8.95 trillion
in 2009, making it the third largest economy in the world after the European Union and
United States of America (USD 14.89 trillion and USD 14.72 trillion, respectively). Per
capita GDP was about USD 7,400, adjusted for purchasing power parity. The main
components of Chinas economy are industry (46.8%) and services (43.6%), while the
agricultural sector accounted for only 9.6%. In 2010, China saw a growth 10.3%, increasing
from 9.1% in 2009. Of particular importance for IP is the fact that China has some 650,000
scientists working in research, and is producing about 300,000 graduates per year in science,
technology, engineering and mathematics.151 In the past 20 years, Chinese spending on
research has grown at nearly 20% per year and the theme of the governments national
science and technology plan for 2006-2020 is indigenous innovation.152 Chinas share of
the worlds published scientific articles has risen from 0.2% in 1998 to 7.4% in 2006, when it
overtook Japan.153 Although quality concerns remain, it is clear that China is becoming an
increasingly important producer of IP.
As a major manufacturing center, companies in China, both foreign and domestic, also
depend on foreign innovations. Foreign companies, in particular, produce patented products
and use international trademarks. In 2010, the stock of foreign direct investment in China was
USD 574.3 billion, increasing 20% from 2009. Exports were approximately USD 1.51 trillion
and imports were at USD 1.31 trillion, leading to a positive current account balance in 2010.
Chinas key export destinations were the United States (20% of exports), Hong Kong (12%),
and Japan (8.3%). The largest sources of imports were Japan, at 12.3% of all imports,
followed by Hong Kong at 10%, and South Korea at 9%. Some 85% of Chinas exports were
manufactured goods and the majority of its imports consisted of electrical products and other
machinery, oil and mineral fuels, optical and medical equipment, metal ores, plastics and
organic chemicals.154
Legal Framework
Since China began transforming its economic policy in 1979, the Chinese government has
realized the importance of protecting IP rights and thus has actively participated in
international cooperation programs to promote domestic innovation. China is now party to IP
treaties including the Paris and Berne Conventions, the PCT, the Madrid Protocol, UPOV, the
Budapest Treaty, the Locarno Agreement and the TRIPS Agreement as a WTO member.
151
Debbie Andalo, http://www.guardian.co.uk, March 15, 2006

Declan Butler, Nature News http://www.nature.com/news/2008/080723/full/454382a.html
153
Ibid.
154
Central Intelligence Agency, https://www.cia.gov/library/publications/the-world-factbook/geos/ch.html
152
144
The Patent Law of the Peoples Republic of China was promulgated in 1984. It was amended
in 1992, and again in 2001 when it became compliant with the TRIPS Agreement and
brought into line with international standards. The latest amendment of the patent law came
into effect in 2009. This amendment clarified the law and enforcement of judicial and
administrative decisions. These amendments made the following adjustments:
The patent law no longer requires first filing in China. Patent applicants can now file
applications abroad. However, the applicant must undergo a security review by the
State Intellectual Property Office (SIPO) before filing overseas. This security review
is intended to protect Chinas national security interests.
Another significant change is permission for double filing. The new law allows
applicants to submit both a patent application and a utility model application for the
same invention on the same day. If one of these is granted, the other will be
abandoned, as the law permits only one patent per invention. Double filing can be an
advantage to owners as they can secure protection for utility models before an
invention patent is granted.155 Double filing, however, is not an option with PCT
applications.156
The new law introduces a new disclosure requirement for inventions made from
genetic resources.157 Article 5 of the law states that no patent right shall be granted
for any invention-creation which is completed on the basis of genetic resources of
which the acquisition or use breaches the stipulations of related laws and regulations.
This means the applicant must disclose the direct or original source of the genetic
resources in the application, and must also verify the legal acquisition of such genetic
resources.158
Chinas trademark law was first adopted in 1982. The law was revised in 1993 and 2001 to
cover collective marks, certification marks and three-dimensional symbols to comply with
TRIPS. The Regulation for the Implementation of the Trademark Law of the Peoples
Republic of China went into effect on September 15, 2002. Rules for Trademark Review and
Adjudication were promulgated in 1995 and revised in 2002 under Order No. 3 of the State
Administration for Industry and Commerce (SAIC). In 2003, the SAIC issued additional
measures and provisions, including the following:
1) Measures for the Implementation of International Registration of Marks under the
Madrid Agreement;
2) Measures for the Registration and Administration of Collective Marks and
Certification Marks; and
3) Provisions on the Determination and Protection of Well-known Marks.
155
Jeff Nelson and Ying Tuo, Tips and Strategies for Prosecuting Patents in China, April 2007,
http://www.aipla.org/learningcenter/library/papers/roadshows/IPinChina/Documents/Nelson%20Paper.pdf
(accessed on April 20, 2011).
156
Nick Redfearn, Chinas New Patent Law Will Require Double Filing, New Legal Review, issue 28, May
14, 2010, http://www.cpaglobal.com/newlegalreview/4450 (accessed on March 8, 2011).
157
The Patent Law does not provide a definition of genetic resources. However, according to the Convention on
Biological Diversity (CBD), genetic resources refer to any material of plants, animal and micro-organisms
containing a genetic functional unit, and is of actual or potential value.
158
Wenting Cheng, Third Revision of Patent Law in China (Part II), October 1, 2009, http://www.ipwatch.org/weblog/2009/10/01/third-revision-of-patent-law-in-china-part-ii/ (accessed on March 8, 2011).
145
With these additions, much of Chinas legal framework on IP is considered modern and
reflective of current international practices.

The State Intellectual Property Office (SIPO) is the Chinese patent office, reporting directly
to the State Council. The main office is in Beijing, but there are regional branches in every
province. SIPO comprises seven functional departments:
1.
2.
3.
4.
5.
6.
7.
General Affairs Department

Legal Affairs Department
Protection and Coordination Department
International Cooperation Department
Patent Affairs Administration Department
Planning and Development Department
Human Resources Department
Also, there are local administrative authorities in 31 provincial governments that work
primarily to resolve local patent disputes in cases of infringement. However, they are not
involved in patent examination.159
SIPO has a dual role. First, SIPO is in charge of the coordination of IP policy vis--vis the
international environment, and represents China in international organizations like WIPO and
the WTO. Second, SIPO serves an operational function in the administration of patent rights,
including patent examination and registration. SIPO is not responsible for granting patents in
Hong Kong or Macao, which have their own patent offices. These offices, however, may still
rely on SIPO for the administration of substantive examinations. When applying for a patent
in Hong Kong or Macao it is necessary to apply in Beijing, or at the EU or UK Patent
Offices, and request an extension to those territories.160
In 2009, SIPO employed 3,074 staff, 81% with masters degrees and 12% with doctoral
degrees. Of these, 2,050 are examiners, and 96% of new examiners hired this year graduated
with masters degrees or above. SIPO also plans to continue expanding its staff of
examiners.161
The China Trademark Office (CTMO), a special body separate from SIPO, is administered
by SAIC; nonetheless, SIPO maintains authority over policy issues related to trademarks. The
Trademark Office is in charge of registration and administration of trademarks nationwide,
according to the Trademark Law of the Peoples Republic of China. Local administrative
authorities for industry and commerce (AICs) supervise the use of trademarks and deal with
infringements.
The Trademark Office consists of 16 divisions: General Affairs, Application Acceptance
Division, Examination Divisions (five), International Registration Division, Opposition
159
The State Intellectual Property Office,

http://www.sipo.gov.cn/sipo_English/about/Administration/200804/t20080416_380178.html (accessed on
March 8, 2011).
160
http://www.ipd.gov.hk/eng/intellectual_property/patents/how_to_apply.htm
161
The State Intellectual Property Office, 2009 Annual Report, 48.
146
Division (two), Archives Management Division, Modification and Renewal Division, Legal
Affairs Division, Case-handling Advisory Division, Supervision Division and Computer
Management Division. The Trademark Office had 210 staff in 2009, including 144
examiners.
Chart 32 Structure of China Trademark Office
State Administration for Industry and Commerce

(SAIC)
Trademark Office
(CTMO)
Trademark Supervision and

Administration Division
General Affairs Division

Application Acceptance Division
Trademark Information and Archives

Management Division
International Registration Division

Legal Affairs Division
Trademark Examination Quality

Control Division
Computer Management Division
Trademark Modification and

Renewal Division
Geographical Indication
Examination Division
Opposition Division (I-III)

Examination Division (I VIII)
Integrated from China Trademark Office162
Patent Applications
The number of patent applications SIPO receives has risen steadily by about 20% per year
since 2006. SIPO received 976,686 patent applications in 2009, and the number exceeded one
million patent applications in 2010. Domestic applications have greatly outnumbered foreign
applications every year, with the number of domestic applications eight times that of foreign
applications in 2010. In 2010, the largest share of foreign applications came from Japan with
162
The State Intellectual Property Office, http://202.108.90.115/english/orgranization/structure.asp (access on

March 11, 2011)
147
approximately 33.9% of foreign applications, followed by the United States and Germany,
with 25.34 and 10%, respectively.
Table 72 Applications and granted patents (2006 2010)163
Patent Applications and Granted
Application
Granted
Year
Domestic
Foreign
Total
Domestic
Foreign
Total
2006
470,342
102,836
573,178
223,860
44,142
268,002
2007
586,734
107,419
694,153
301,632
50,150
351,782
2008
717,144
111,184
828,328
130,647
10,954
141,601
2009
877,611
99,075
976,686
234,282
15,419
249,701
2010
1,109,428
112,858
1,222,286
740,626
74,199
814,825
Total
3,761,259
533,372
4,294,631
1,631,047
194,864
1,825,911
Source: SIPO
As a designated PCT receiving office, SIPO received more than 8,000 PCT applications in
2009, while about 50,000 applications entered into China's national phase. Of these, 7,225
were in Chinese and 775 were in English. In 2009, SIPO received 99,075 foreign applications
seeking registration in China. This means that PCT applications represent 8.07% of the total
foreign applications in China. SIPO is also designated as an International Searching
Authority (ISA) and an International Preliminary Examining Authority (IPEA). As such,
SIPO performed 6,776 searches and 420 preliminary examinations in 2009.164
Chinas international PCT patent filings increased approximately 56% in 2010, ranking the
country fourth in the world on such filings, trailing only the United States, Japan and
Germany. This rapid growth shows that Chinese companies are increasingly seeking patent
protection aboard.165
163
For more details, please see the State Intellectual Property Office at
http://www.sipo.gov.cn/sipo_English/statistics/
164
165
China Patent Information Center, http://www.cnpat.com.cn/EnNews.aspx?NewsId=1338 (accessed on
March 11, 2011).
148
Chart 33 Ten leading countries filing patent applications in China
Number of patent application based on country in 2010

40000
30000
20000
10000
0
Source: SIPO
China categorizes patents into services and non-services.166 Services are divided into four
types:
1.
2.
3.
4.
Colleges and universities

Scientific research institutions
Enterprises
Organizations
The service types of domestic applications account for about 55% of total domestic
applications. Of these, domestic patent applications from enterprises represented the highest
number, at almost 400,000 applications. The Chinese enterprise applying for the highest
number of patents was ZTE Corporation, the Chinese telecom equipment provider, which
filed more than 5,500 applications in 2009, followed by Huawei Technologies, the telecom
solutions provider. Sony Corporation, submitting the most applications of any foreign
enterprise, filed around 2,000 applications in the same year.
Table 73 Distribution of domestic and foreign patent applications according to service
and non-service in 2009
Domestic
Foreign
Types of
Patents
Service
Non-service
Total
Service
Non-service
Total
Amount
483,051
394,560
877,611
95,231
3,844
99,075
Percentage
55.04
44.96
100
96.12
3.88
100
Source: the State Intellectual Property Office, 2009 Annual Report, p.35.
166
According to the EPO, a service invention is an invention by an employee of a company made in execution
of his tasks as opposed to a non-service invention made by an individual inventor.
149
Chart 34 Distribution of domestic patent applications according to service category in

2009
Scientific Research
Institutions
4%
Colleges and
Universities
13%
Service
Organizations
1%
Enterprises
82%
Source: 2009 SIPO Annual Report, p.37.
Table 74 Top five domestic and foreign enterprises according to patent application in
2009
Domestic Applications
Name
Foreign Applications
Amount
Name
Amount
ZTE corp.
5719
Sony Corporation
2088
Huawei Technologies
2868
Panasonic Corporation
1825
Hongfujin Precision Industrial

(Shenzhen) Co.,Ltd
2306
Koninkli Philips Electronics N.V.
1601
Shanghai Zhangjiang Creative

Industry Development Co.,Ltd
1623
Samsung Electronics Co.,Ltd
1351
China Petroleum and Chemical

Corporation
1463
Toyota Motor Corporation
1201
Source: 2009 SIPO Annual Report, p.39.
Patent Procedure
China provides three types of patent rights:
1.
Invention Patents are granted for 20 years from the filing date with proof of
novelty, inventiveness, and clear industrial application. Patents can be excluded
for the same reasons as indicated in the European Patent Convention. Software
cannot itself be patented unless combined with a computer or technique intended
to solve a technical problem.
2.
Utility Model Patents are granted for a term of 10 years from the filing date.
3.
Design Patents are also granted for a term of 10 years from the filing date, and
perform a function similar to a design patent in the United States.
150
China uses the First-to-File principle instead of the First-to-Use or First-to-Invent

Principles. This means the right to patent protection belongs to the applicant who files a
patent registration first, regardless of whether he is the real owner. Therefore, if the real
owners of inventions are slow to file for patent protection, they risk having their patent rights
taken by others.
Generally, the basic steps of the patent procedure are similar to practices in other countries. If
applicants are foreigners, their applications can be filed only by official patent agencies
designated by the Patent Administration Department under the State Council. These agencies
have to pass a qualifying examination and must have at least two years of experience. In
2009, 627 patent agencies passed an annual review by SIPO. In order to reexamine these
patent agencies each year, SIPO launched an online examination called the Patent Bar
Examination that was first used in 2010.167
After a preliminary examination, SIPO publishes the application in the Invention Patent
Gazette, and the applicant has up to three years from the date of application to request a
substantive examination. Applicants must provide relevant prior art, including searches by
foreign patent authorities. However, substantive examinations are not necessary for utility
models and designs. Only preliminary examinations are required. Based on EPO information
in 2009, the whole patent examination usually took 25.8 months for invention patents, 5.8
months for utility models and 5.5 months for designs.168
When an examiner decides to grant a patent, the patent will be published, and become valid
as of the date of filing. If a disagreement arises between the examiner and the applicant, the
applicant may appeal for a reexamination by a semi-independent Patent Re-examination
Board (PRB). If still dissatisfied, the applicant may request legal proceedings in the Peoples
Courts, but such proceedings must be initiated within three months of the PRBs decision. A
third party may also request that the PRB revoke or invalidate a patent. A decision made by
the PRB decision may be appealed in the Civil Divisions of the Peoples Courts.
167
168

European Patent Office, http://www.epo.org/searching/asian/china/faq.html (accessed on March 9, 2011).
151
Chart 35 Chinese Patent Granting Procedure (as of 2001)

Application
Formality Check
Classification
Laid-open publication (18
months after filing date)
No request for examination
Request for examination
(within 3 years of filing)
Withdrawal of application
Examination
Notification of pending
refusal
Decision to grant patent
Publication of granted
patent
Invalidation
Decision of refusal
Appeal to Re-examination
Board
Appeal to Beijing High Court
Decision to revoke
Decision to maintain
Appeal to Beijing High

Court
Source: http://www.epo.org/searching/asian/china/grant.html
Typically, the whole patent procedure takes three to five years. Applicants can expect an
average grant lag (the period of time between initial filing and final grant) of 4.7 years. While
this average is comparable to the EPO, it is greater than that at the USPTO169, and many
applicants see it as a key problem. Applicants also complaints about their inability to amend
claim scopes or add new claims during prosecution. 170
169
Liegsalz, Johannes / Wagner, Stefan (2011): Patent Examination at the State Intellectual Property Office in
China, European School of Management and Technology, Berlin.
170
Practitioner opinion
152
Furthermore, a recent study by the European School of Management and Technology has
suggested the possibility that SIPOs patent-granting process is prone to discrimination
against not only foreign applicants, but also non-priority applications. After conducting a
rigorous statistical analysis of the 443,533 patent applications filed at the China office
between 1990 and 2002, Liegsalz and Wagner found that Chinese applicants enjoy faster
patent-grants relative to their non-Chinese (and especially non-Asian) counterparts, and that
these differences are even more pronounced when domestic applicants patents are aligned
with the countrys key economic growth sectors.171 While the authors could not claim with
certainty that nationalist discrimination was to blame for their findings (one alternative
possibility was that domestic applicants filing advantages were the natural result of language
proficiency)172, the possibility they propose warrants careful consideration and further
research as the Chinese market becomes increasingly important to foreign firms, these firms
may alter their IP strategies to file first not in their home countries, but at the SIPO;
accordingly, it is crucial that the Chinese office uphold its TRIPS obligations by ensuring fair
and equal treatment to all applicants.
In 2009, China received 808,546 trademark applications and approved 818,633 trademark
registrations. Total trademark applications grew at an average annual growth rate of 16%
from 2000 to 2009. The number of domestic applications grew at 8.9%, while the number of
foreign applications increased even more rapidly at 16%. Domestic trademarks made up
89.2% of all applications and 87.1% of all registrations. Total trademark registrations during
these years grew at 20.7% on average.
Table 75 Total Trademark Applications and Registration by Residents and Nonresidents (2000-2009)
Application
Year
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
Resident
181,717
229,775
321,034
405,620
527,591
593,382
669,276
604,952
590,525
741,764
Foreign
30,885
30,149
43,914
41,034
54,214
65,766
72,666
76,406
78,563
66,782
Registration
Total
212,602
259,924
364,948
446,654
581,805
659,148
741,942
681,358
669,088
808,546
Resident
129,441
167,563
169,904
206,070
225,394
218,731
228,814
215,161
342,498
737,228
Foreign
21,520
24,986
29,005
27,060
32,528
34,402
38,193
33,036
46,617
81,405
Total
150,961
192,549
198,909
233,130
257,922
253,133
267,007
248,197
389,115
818,633
Source: World Intellectual Property Indicators 2010
171
Liegsalz, Johannes / Wagner, Stefan (2011): Patent Examination at the State Intellectual Property Office in
China, European School of Management and Technology, Berlin.
172
Ibid.
153
Trademarks, service marks, collective marks, geographical indications, and certification
marks may be registered. Well-known trademarks are also protected for ten years from the
date of approval of the registration. The process of renewing a trademark registration must
begin no less than six months before the expiration date.
One to two months after the acceptance of the application for trademark registration, CTMO
will issue an official filing receipt. After the formality check, the application will go through
the substantive examination, after which it will be published in the China Trademark Gazette
within about 36 months of the date of filing. The opposition period extends three months
from the date of the publication. During this period, any person may file an opposition to
registration of any trademark that has, after examination, been conditionally approved. If
there is no opposition, the CTMO will issue the registration certificate two or three months
after the end of the publication period. When any party is dissatisfied with the Trademark
Offices decision of refusal, opposition or cancellation of the registration application, he may
apply to the Trademark Review and Adjudication Board for a review. Where any concerned
party considers a registered trademark to be improperly registered, that party may apply to
the Board for cancellation of the trademark. The Boards decision may be appealed through
legal administrative proceedings at Beijing No. 1 Intermediate People's Court. If there is no
opposition, a new application could be granted registration within 40 months of the date of
filing.173
Similar to its patent procedure, Chinas First-to-File trademark registration system does not
require any evidence of prior use or ownership. This means that any party can seek
registration and take ownership of popular foreign trademarks.
In an attempt to expedite the trademark registration process, SAIC made speedier processing
one of its eight top priorities in 2008. Three-year and five-year targets were set. The threeyear targets were as follows:
In 2008, to complete the examination of 700,000 trademark applications and reduce

pendency from 36 months to 30 months;
In 2009, to complete the examination of 1,300,000 applications and reduce the
pendency from 30 months to 19 months;
In 2010, to complete the examination of 1,400,000 applications and reduce the
pendency from 19 month to less than a year.174
Accordingly, CTMO recruited 298 trademark examination assistants and 92 trademark

review and adjudication assistants. IT equipment and systems were upgraded. In addition,
incentive mechanisms and performance management were revised, along with improved
trademark examination quality management mechanisms.
173
China Trademark Office, http://202.108.90.115/english/registration/registration.asp (accessed on March 25,

2011).
174
Trademark Office/ Trademark Review and Adjudication Board State Administration for Industry and
Commerce, Peoples Republic of China, Annual Development Report on Chinas Trademark Strategy 2008,
http://202.108.90.115/english/2008Report.pdf (accessed March 25, 2011)
154

SIPO has developed its documentation and automation system to become the worlds most
extensive patent information resource. An enormous volume of patent documentation can be
accessed in the Patent Documentation Library, the Intellectual Property Library, the Science
and Technology Library and the Classified Patent Dossier Library that includes 94 patent
institutions.175
Over the past seven years, SIPO has engaged in an automation program, focusing on patent
administration. An electronic filing system was developed and became operational as of
March 2004. All stored data was transferred to magnetic disks in that year. The total volume
of storage is around 38 terabytes. In 2009, a total of 64,809 electronic applications were
received, accounting for 7% of all applications. The number of electronic applications has
continued to increase significantly every year.176 Filing applications online is more
convenient and economical than traditional paper submission. Two search interfaces have
been provided:
C-Pat Search is a Chinese patent search system in English. It can be accessed via the
China Intellectual Property Net (CNIPR). Most Chinese language patents are
translated by automated translation. The system provides more than 2.5 million
Chinese patents from 1985 to the present.
China Patent Database is a patent search web, provided by China Patent Information
Center (CPIC).
175
The State Intellectual Property Office,

http://www.sipo.gov.cn/sipo_English/about/documentation/200804/t20080416_380174.html (accessed on
March 11, 2011).
176
Lu Jianjun, An Effective Way to the Harmonization of Patent System, March 2010, 33.
155
Chart 36 China Trademark Registration Procedures

Domestic Applicant
Trademark Agency
Trademark Office Accepts the Application

Trademark Agency
Formality Check
No
Yes
Request the Applicant

to make Supplements or
Amendments within a
Specified Time Limits
Whether in
Conformity with
Relevant Provision
Whether in
Conformity
with Relevant
Provision
Yes
Terminate
No
Whether in
Conformity with
Relevant
Provision
Whether
Apply for
Review and
Adjudication
Refuse the Whole or Part of the Application
Yes
Primarily Approve and

Publish the Trademark
Refuse the Application

Justified
Whether there is
any opposition
Whether
the
Opposition
is Justified
Opposed Party is
Dissatisfied with the
Decision
Not justified
Approve the Registration
Opponent is
Dissatisfied with the
Decision
Dispute Over Registered

Trademarks
Review of
Opposition
Trademark Review and

Adjudication Board
Dissatisfied with
the Decision
Beijing No.1 Intermediate Peoples Court

Beijing Higher Peoples Court
Source:Adapted from China Trademark Office
156
On the trademark side, CTMO also utilizes information technology to increase its efficiency.
Its IT developments include 17 high-performance servers, more than 1,000 computer
terminals, and a trademark database. The public can search for trademark registration
information online at the CTMO trademark database for free. Online trademark registration is
also available at http://www.chinatrademarkoffice.com/index.php/tdreg/. Additionally, its
Trademark Gazette Search website contains the latest 12 issues of Trademark Gazette,
including information on conditionally approved trademarks, registered trademarks,
renewals, modifications, assignments, annulments, oppositions, trademark reviews and
adjudications, and records of trademark license contracts. The CTMO trademark database
also allows examinations to be conducted electronically.
Enforcement
Several means of IP enforcement exist in China. Enforcement of patents at the administrative
level is governed by the Measures on Patent Enforcement document issued by SIPO. This
statement provides tools for putting an immediate stop to infringement, but cannot award
damages. It is a simple, low-cost mechanism, capable of providing quick decisions. There are
several organizations responsible for administrative enforcement of IP laws in China. SIPO is
responsible for administrative enforcement of patents, whereas the General Administration of
Customs (GAC) is responsible for administrative enforcement of IPR at Chinese borders. 177
Similarly, trademark owners can protect their rights through administrative means.
Infringement complaints can be filed at local trademark office divisions of the SAIC. At or
above the county level, these bodies have the authority to order a halt to the trademark
violation, confiscate and destroy the counterfeiting goods, and impose a fine.
The Chinese judicial system comprises courts at four different tiers: the Supreme, Higher,
and Intermediate and Basic Peoples Courts. With the exception of the Basic Peoples Court,
these courts all have special divisions for IPR disputes.178 In 2009, the Chinese courts
received almost 40,000 IPR cases. Some 90% of these came from domestic companies.179 In
the courts, the Stop Infringement Act allows awards for damages among other legal
recourse. This process is not as expensive as in the United States, and there is no discovery
element. The average damage claim in 2010 was about USD 240,000.180 Criminal penalties
are also in place when infringement constitutes a crime, and the prison sentences for such
offenses were recently lengthened from 2-5 years to 3-7 years. Appeals and damages can be
handled in the Intermediate and Higher Courts.
According to the Trademark Law, charges of trademark violation can also be brought before
the Peoples Courts. When the amount of damages caused by infringements cannot be
determined, the Peoples Courts may impose fines of up to RMB 500,000.
177
Aaron D. Hurvitz, Enforcement of Intellectual Property Rights in China:Managing the Fork in the Road,
February 24, 2010, http://www.kangxin.com/publications/articles/enforcement-of-intellectual-property-rightsin-chinaqmanaging-the-fork-in-the-roadq (accessed on April 20, 2011).
178
Wang, Lina (2004): Intellectual Property Protection in China, in: International Information &
Library Review, Vol. 36, No. 3, pp. 253-261.
179
Richard Wigley, China: Challenging Perception: Statistics from the Supreme Peoples Court on IPR
Lawsuits in the PRC, February 24, 2011,
http://www.mondaq.com/article.asp?articleid=123600&email_access=on (accessed on 2 March 2011).
180
Ibid.
157
Consultation and arbitration are alternative measures to resolve IPR disputes. In the late
2000s, an average of 400 IP cases per year was settled by alternative resolution. Either
mediation or negotiation between owners and infringers is the most economical option,
saving a great deal of money in litigation costs and other fees.181
The enforcement of IPR rulings is the countrys main problem. Sentences are often not
enforced properly. As a result, counterfeiters may continue producing and selling products
even though a sentence has been passed down.182
Conclusion
China has long maintained a sound IP administration framework; nonetheless, as of
the release of K.I.Asias first report, serious enforcement concerns remained over the degree
to which the country protected foreign copyrights and trademarks, and reprimanded IPR
infringers.183 These issues were brought to a head when the US government, in April of 2007,
filed a dispute against China with the WTO, claiming that various elements of Chinas
enforcement laws and policies undermined its obligations under the WTOs TRIPS. Three
primary concerns were highlighted:
Chinese Copyright Law refused IPR protection to foreign copyrighted products

that did not meet the countrys content review standards.
Chinese law allowed for counterfeit and pirated goods seized at its borders to be
re-released upon the market via public auction so long as all infringing marks were
removed.
Chinese law stipulated criminal prosecution against IPR infringers only when
infringing activities reached certain thresholds, effectively protecting dealers in
counterfeit and pirated goods up to a certain minimum level (volume or value of
infringed goods) of commercial-scale activity.184
In a March 2009 report, a WTO Dispute Settlement Body agreed with the US
government position regarding the first two points, claiming that Chinas current rules and
regulations breached its TRIPS obligations (according to articles 9.1 and 41.1, and articles 46
and 59, respectively); while the panel agreed that Chinas commercial limits should
realistically reflect market realities, it could not definitively conclude, based upon current
evidence, that the countrys criminal prosecution thresholds were too high.185
Soon after the release of the panels findings, China announced plans to amend its
laws accordingly, and agreed to work with the US authorities toward implementing relevant
181
Aaron D. Hurvitz, Enforcement of Intellectual Property Rights in China: Managing the Fork in the Road,
February 24, 2010, http://www.kangxin.com/publications/articles/enforcement-of-intellectual-property-rightsin-chinaqmanaging-the-fork-in-the-roadq (accessed on April 20, 2011).
182
Trademark Right Enforcement in China: Comparing with US Trademark Right Enforcement, June 6, 2008,
http://yigou502.fyfz.cn/art/352425.htm (accessed on April 20, 2011).
183
2010 Special 301 Report, April 30, 2010, Office of the United States Trade Representative
184
USPTO, United States Wins WTO Dispute Over Deficiencies in China's Intellectual Property Rights Laws,
http://www.ustr.gov/about-us/press-office/press-releases/2009/january/united-states-wins-wto-dispute-overdeficiencies-c (accessed August 22, 2011).
185
Ibid.
158
changes, to be completed by March 20, 2010.186 Furthermore, it is worth mentioning that

even though the WTO would later claim insufficient evidence to decidedly judge Chinas
commercial thresholds too high, the country voluntarily halved its criminal copyright
threshold (from 1,000 to 500 infringing copies) shortly before the US government filed
suit.187
With the release of further WTO dispute resolution decisions between 2009 and 2010,
further changes were made to reduce Chinas market-access restrictions on foreign producers
of publications, movies, music and other entertainment products. The WTO ruled that
Chinas barriers to these goods, requiring all relevant imports be channeled through stateapproved or state-run companies, denied foreign producers control over the marketing and
distribution of their goods, and significantly inhibited time-to-market. This situation resulted
not only in the restricted flow of authentic products upon the market, but also a breeding
ground for infringers to produce and distribute their own pirated versions. The dispute
resolution panel found that under the WTOs Accession Protocol and General Agreement on
Trade in Services, Chinas practices violated its WTO obligations, and, after an unsuccessful
round of appeals, the country agreed to work toward amending its policies.188
Even though China has taken promising preliminary steps toward enhancing
enforcement, the country remains on USPTOs Priority Watch List due to various issues that
threaten the legitimacy of its IP regime. Indeed, the US Government claims that the overall
level of IPR theft in China remains unacceptablelargely ineffective and non-deterrent.
These issues are not limited to those aforementioned, and further include lax IPR
infringement patrolling and insufficient sanctions. So while minor improvements should be
recognized, e.g. judicial rulings protecting IPR and penalizing infringers in retail markets in
Beijing and Shanghai, IPR infringement remains pervasive, severely stifling legitimate sales
not only within China, but also throughout the region.189
Inconsistent patrolling activities and infrequent, lenient penalties for infringers have
fostered an environment in which many local players doubt the national priority given to IPR,
and have been known to disregard relevant court rulings. Unsurprisingly, IPR holders from
various sectors have bemoaned the extent of business losses in China, and consequently, the
US has encouraged the country to take a concerted stand against IPR infringement. This stand
should comprise enhanced patrolling and punitive measures (e.g. unannounced audits and
inspections and criminal sanctions), as well as diminished barriers to market entry by foreign
firms (this might be achieved via policies to limit the aforementioned foreign content
standards and other unfair advantages for indigenous innovation), and should result in a
heightened national awareness of, and respect for, the importance of IPR, and a better
business environment for all. Toward this end, the US has confirmed its commitment to
work with China on IPR enforcement and protection strategies, innovation policies and the
range of other important IPR-related matters190
186
USPTO, United States Wins WTO Dispute Over Deficiencies in China's Intellectual Property Rights Laws,
http://www.ustr.gov/about-us/press-office/press-releases/2009/january/united-states-wins-wto-dispute-overdeficiencies-c (accessed August 22, 2011).
188
189
Ibid.
190
Ibid.
187
159
APPEN IX
160
COMPARATIVE ASSESSMENT STUDY OF PATENT AND TRADEMARK

OFFICES IN SOUTHEAST ASIA WORKSHOP
JUNE 7, 2011
BANGKOK, THAILAND
WORKSHOP REPORT
Kenan Institute Asia (K.I.Asia), in collaboration with Chulalongkorn Universitys Intellectual
Property Institute and Tilleke and Gibbins law firm, is updating and expanding K.I.Asias
Comparative Assessment Study of Patent Offices in Southeast Asia, as a joint project
agreement with the USPTO. The study will focus on the process of trademark and patenting
registration procedures across the region, and will include the following ten countries:
Cambodia, China, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand,
and Vietnam.
The overall goal of the study, which is to be completed during the period of October 2010 to
October 2011, is to strengthen patenting and trademark registration processes in Southeast
Asia and China by compiling country-specific information in the following areas:
Most recent information on patent and trademark office performance, such as size of
the application backlog and the number of patent applications, grants, withdrawals
and rejections
Patent and trademark registration procedures, including the use of information

technology and search tools, IPR enforcement mechanisms, and recommendations for
improvement
Compile a detailed profile on each countrys patent and trademark registration

process, including who actually examines the applications, whether there is protection
against conflicts of interest, how long each step in the process takes and who makes
the key decisions in the process.
Identify gaps in capabilities in the patenting and trademark process
161
The Workshop
The K.I.Asia team collected primary data through desk research, the findings of which led to
a customized questionnaire to be completed by each of the participating patent offices and IP
practitioners. The questionnaire was followed up with email discussions and personal
interviews to clarify the information provided before the final report was drafted. Additional
information on the patent and trademark registration process, provided by senior lawyers
from Tilleke & Gibbons, Ltd., was incorporated into the report.
K.I.Asia hosted a workshop for 30 participants from the IP offices in the region, private
sector, other government officials and academia on June 7, 2011 in Bangkok. The objectives
of the workshop were to review the report on ASEAN IP offices and to share knowledge on
ways to help those offices to improve services while simultaneously streamlining operations.
Following are the participants list, agenda and workshop notes.
162
Comparative Assessment Study of Patent and Trademark Offices in Southeast Asia

Plaza Athne Hotel, Bangkok, June 7, 2011
LIST OF WORKSHOP PARTICIPANTS

Southeast Asian IP Officials
Name
Organization
Country
Chief of Bureau of
Cooperation and Legal
Affaire
Head of Sub-Directorate
of Classification and
Searching
Department of Intellectual
Property Rights, Ministry of
Commerce
Cambodia
Directorate General of
Intellectual Property Rights
Indonesia
Mr. Abdul Aziz Ismail
Senior Director of Trade

Mark
Corporation of Malaysia
Malaysia
Mrs. Fatimah Rohada

Dahalan
Head of Patent
Examination Section
(Engineering)
Corporation of Malaysia
Malaysia
Dr. Pwint Phyo Win
Deputy Director
Ministry of Science and

Technology
Myanmar
Ms. Souligna Sisomnuck
Deputy Director of
Industrial Property
Division
National Authority for

Science and Technology
Lao PDR
Dr. Epifanio Mistica Evasco
Director, Bureau of
Patents
Philippines
Dr. Kajit Sukhum
Assistant Director General

(Foreign Affairs)
International Intellectual
Property
Thailand
Assistant Director General

(Patent)
Head of International
Cooperation (ASEAN &
APEC)
Property
Thailand
Property
Thailand
National Office of
Intellectual Property of
Vietnam
Vietnam
Mr. Suon Vichea
Dr. Erni Widhyastari
Mr. Suradet
Atsawintarangkun
Mr. Pornvit Sila-On
Dr. Pham Phi Anh
Position
Deputy Director
163
Philippines
Other officials and private sector participants

Name
Organization
Mr. Reiji Mishima
JETRO Bangkok
Mr. Fabio Artuso
ASEAN project on the Protection of Intellectual Property Rights
Mr. Stephane Passeri
ASEAN project on the Protection of Intellectual Property Rights
Dr. Kittima Yuthavong
Pharmaceutical Research & Manufacturers Association
Mr. Teerin Charoenpot
U.S. Commercial Service
Mr. Fabrice Mattei
Rouse Thailand
Ms. Nirada Weerasopon
National Science Technology and Innovation Policy Office
Ms. Jantapa Erjongmanee
Baker & McKenzie Ltd.
Dr. Piengpen Butkatanyoo
National Science Technology and Innovation Policy Office
Mr. Suebsai Taomahawong
Office of Khowledge Management &Development (OKMD)
Mr.Richard Bernhard
Mr.Charles McLaurin
164
Speakers
Name
Organization
Dr. Usanee Yodyingyuad
Chulalongkorn University Intellectual Property Institute
Ms. Darani Vachanavuttivong
Tilleke & Gibbins International Ltd.
Ms. Jennifer Ness
U.S. Patent and Trademark Office, U.S. Embassy Bangkok
Mr. Christopher Knight
Everett Knight Ltd
Ms. Wiboonlasana Ruamraksa
Office of Permanent Secretary
Mr. Paul Wedel
Dr. Busakorn Chantasasawat
165
WORKSHOP AGENDA
Co
arative Assess ent St d of Patent and Trade ark Offi es in So theast Asia
Plaza Athenee Hotel, Bangkok, June 7, 2011
Tuesday, June 7, 2011

08:30 09:00
Registration
09:00 09:10
Welcome: by Mr. Paul Wedel, President of the Kenan Institute Asia
09:10 09:20
Opening Remarks: by Ms. Jennifer Ness, Regional Intellectual

Property Attach, U.S. Patent and Trademark Office
09:20 10:10
Comparative Assessment Study Presentation: by Dr. Busakorn

Chantasasawat, Project Manager, Kenan Institute Asia
10:10 10: 30
Questions and Comment
10:30 10:45
Refreshment Break
10:45 12:00
Panel discussion: Best Practices Improving the Operations of ASEAN

Patent and Trademark Offices
Issues:
12:00 13:30
13:30-15:30
Patent and Trademark Procedures by Ms. Jennifer Ness, Regional

Intellectual Property Attach for Southeast Asia, U.S. Patent and
Trademark Office
Overall IP Office Administration by Ms. Wiboonlasana

Ruamraksa, Commercial Advisor, Office of the Permanent
Secretary, Ministry of Commerce
Staff Capacity by Mr. Christopher Knight CEO, Everett Knight

Ltd.
Lunch
Continued panel discussion
Issues:
-
Patent and Trademark Agent Capacity by Dr.Usanee

Yodyingyuad, Advisor, Chulalongkorn Intellectual Property
Institute
Dispute and Settlement Processes by Khun Darani

Vachanavuttivong
Co-Managing Partner, Manager Director of Intellectual Property
Tilleke & Gibbins International Ltd.,
166
15:30-15:45
Refreshment Break
15:45-16:00
Summary and wrap up by Mr. Paul Wedel, President, Kenan

Institute Asia
16:00
Closing
167
WORKSHOP NOTES
(These notes are unofficial.)
Welcome Paul, President and Executive Director, K.I.Asia
Key Points:
Strong IP regimes are crucial to developing Southeast Asian countries as they seek to
increase the value-added component of their economies
Low cost labor and cheap resources are not sustainable sources of competitive
advantage in the long term if SE Asian countries want rising incomes and better
quality of life
Innovation and added value are necessary so Southeast Asia must create more and
higher-value IP
It is difficult to do this if the creators of IP have no assurance that their rights to that
IP will be registered and protected
Thus, the fast, efficient registration and the effective protection of rights regarding
this IP are crucial to fostering sustainable development
Background to the project:
K.I.Asia produced the first Comparative Assessment Study of Patent Offices in Southeast Asia
in 2007. That report was seen as helpful by many working on the development of IP regimes
in the region. The US Patent and Trademark Office (USPTO) therefore funded K.I.Asia to
update the study while extending it to cover trademarks and deepening it to include issues
affecting efficient IP registration.
Paul said the goal of the report is to provide information to help ASEAN IP offices improve
their operations. It also includes information on China due to the countrys growing
importance in IP and expanding role in the regional economy.
The report will also look at issues impacting regional integration of IP processes.
The purpose of the workshop is to provide additional information and analysis for the report
and to exchange ideas and experiences on best practices that can improve the IP regime in the
region.
168
Opening Remarks Jennie, Regional Intellectual Property Attach, U.S. Patent and
Trademark Office
The USPTO-ASEAN relationship has been uniquely strong, positive and changing over the
years, and will need to change further. The United States wants to embrace that change but
needs to see data to facilitate this continued linkage (efforts in ASEAN amount to 45% of US
assistance to regional IP regimes). It is crucial to show that this engagement is yielding
results (e.g. pendency and number of examiners are important metrics for showing progress).
Funding the second round of the report in order to assess the work which has been done in the
region is therefore important for continued USPTO engagement in the region. Have these
metrics been improved? The second report should address this issue as well as provide
information on efforts to improve. Complete success is not expected. The USPTO itself has
experienced many problems and failures, but these can help us move forward. Challenges in
developing IPOs in the region are to be expected and will inform the USPTO on how they
should assist the region in the years ahead.
Study Presentation Dr. Busakorn, Senior Consultant and Project Manager, K.I.Asia
Key problems found:
Examiners often need to coach local inventors on preparing applications this takes a
great deal of time, which takes away from time to work on easier foreign applications
Insufficient number of examiners the best examiners are often promoted to other
positions or leave government service
Examiners lack sufficient familiarity with new technologies
Lack of experience examiners leave to enter the private sector
Search tools offices desire one central, complete database
Slow internet and old computers; insufficient servers
English language necessary for searches and too few examiners are fluent
Applicants intentionally delaying filing for substantive examination
Issues regarding registration time and pendency
It would be useful if all offices could collect information on total registration time and
backlogs
We need to get a consensus from offices on what constitutes backlog Philippines,
for example, specifies applications over four years old without resolution
Common Needs
Training for examiners in new technologies
Training for domestic applicants (patent agents)
Improving English
Questions and Comments on Study
Suggestions from the participants on what partner organizations (USPTO, WIPO, EPO and
JPO) can do to help the ASEAN offices:
USPTO:
Tight budget currently; certain assistance measures congressionally authorized, others
not
Main thing USPTO can do is help in training examiners
169
Because of English language issues, trainings have tended to be in each office using
translation
USPTO is ready to handle requests to do bilateral training
Attempted to help with databases but US uses commercial databases, and has no
authority to provide such databases or Internet to foreign offices
Authorized to support training of offices, not the public IP awareness is OK but not
practical training
Europeans likely have better ability to train in their home offices
Japan:
JPO has had training program for years in training people this will likely continue
Holds training seminars for Japanese companies
EPO:
Has continued to provide technical assistance through the established ECAP program
Has provided IT equipment to Cambodia
Training to IP professionals including training examiners in specific technological
fields
Worked with major offices in China
Suon Vichea recommended that all donors help with benchmarking and strategies to reduce
registration time and backlogs, noting that Cambodia is trying a strategy of priority
registration within one month (as compared to the standard four months)
There was a discussion of successful efforts in Malaysia and Philippines to diminish
backlogs:
Epifanio admitted that the numbers provided in the report need correction, and that the
situation is not as good as it appears. Nonetheless, becoming autonomous allowed for a more
flexible response to changing workloads the office hired new examiners with education in
new technologies (e.g. nanotechnology), and carefully managed the work level for each
examiner as rule of thumb, assigning 150-180 applications per examiner per 6 month period
(approximately 25-30 per month).
Question from The USPTO representative how many offices use formed paragraphs
(standard rejection/notices of allowances)? Implementing this Standard language across
ASEAN offices could increase process efficiency. Participants replied that the offices that
currently use such paragraphs were the Philippines, Malaysia, Indonesia, Vietnam and
Thailand.
Khun Kajit noted that the issue is not just the number of applications quality matters;
quality also requires resources and experienced, well-educated examiners capable of dealing
with constantly changing technologies. Other issues mentioned included:
Turnover (of applications) a cleaning-up process is important for office operations
The English language is a barrier reading patent descriptions is very difficult, even
for PhDs with good English
Training is limited (you cant teach old dogs new tricks), and training seminars take
time away from examiners work
Thailand has the highest number of applications per examiner, but is not currently
hiring
170
Why cant major IP countries (EU, US, Japan) form a central database? the potential
for duplication across platforms is a concern a central database would be less
expensive and much easier to use
Training of applicants is not of primary concern because most applications are foreign
(standard English) applications
Thailand is currently struggling with corporatizing the DIP a recommendation
supporting corporatization for ASEAN IPOs under the AEC might facilitate this
transition
171
Panel on Best Practices

Jennie Patent and Trademark Procedures
Thailands comment about a central data base is a good point. Large-scale integration will be
a challenge, but there are small things that can be done.
US example: the USPTO underwent an end-to-end review to cut office fat and streamline
processes in order to waste less and maintain optimal operational efficiency at each point in
the value chain.
Jennie said that sometimes we need fresh eyes to see which processes are outdated and/or
inefficient and to suggest changes to the process these changes may take legislative change
which can be time-consuming; however, some changes are up to the offices discretion
make appropriate changes where you can to improve system, looking to the US, EU and
Japan as models (Philippines has recently implemented huge changes).
Vietnam example when a trademark application is reviewed, three different signatures are
required, and the office head must sign every form) this may be overly burdensome because
applications pile up if office head is away the Vietnam office should consider amending its
application approval process.
Thailand example after a paper application is filed at the front desk of the DIP, it is
transported to a secretarial desk where it must be manually transposed into electronic form,
increasing chances for error while allocating limited time and resources on this superfluous
worker the office should consider streamlining this process.
For the US, pendency times were not tracked regularly; therefore, a dashboard was
implemented to constantly measure the time required for each process in each art department.
This allowed for small improvements, greater transparency and enhanced planning.
The Malaysia representatives were asked how their office successfully reduced its backlog.
Key points were:
Employed more examiners (with only 12 staff before, 40 new patent examiners were
hired after corporatization)
Implemented internal search tool and trademark management system digitalized
records were more easily referenced (instead of waiting several days for hard copies)
Set targets motivated examiners to set targets and timeframes
Backlog project the examiners were financially incentivized to finish backlogged
work
Amendments to policies the wait to request for substantive examination was
decreased from 24 to 18 months
Epifanio responded to the same question:
Project with EPO to assess management procedures recommended employing the
private line approach so that each bureau is responsible for publication from filing
onward
Notification of certificate process streamlined whereby the director must sign off on
the approved certificate only once (after all processing) reducing the time needed
for this part of the process from 6-12 months to two months
An end-to-end review has identified process improvements such as preparing the
publication notice two months in advance, and closer monitoring by division heads
Partnered with EPO to try the Global Patent Index this proved to be an efficient
central database considered employing Thomson Reuters, but this private system
172
was too expensive for the value added will more fully utilize and/or join the GPI
moving forward
Question: Who else has had experience with the GPI? Might this tool answer Thailands
central database request?
Indonesia reported difficulties finding full documents on GPI often able to view
only the bibliography, especially from the Japan, Korea, and China offices
Malaysia has ten lines on trial with GPI and five with EPOQUENet GPI is faster
and more comprehensive EPOQUENet will help and the office wants all examiners
to have both systems; this arrangement, however, is expensive
Question: Does the US have any systems ASEAN can try?
Jennie said the US cant currently offer database access; in the past, a tri-lateral effort by US,
EU and JPO was administered by JPO but the future of this effort is uncertain recently,
Congress has refused access due to fears regarding uneven IP knowledge and information
security hopefully EPAC III will take charge of this moving forward
She commented that the Philippines office (like the USPTO) has successfully worked with
stakeholders to eradicate duplicative processes, and suggested that, in business terms, the
applicant is the customer and the customer is always right; she then posed the question: how
many offices have engaged with stakeholders, and to what result?
Epifanio employed the Asia Institute of Management to help the office identify core and
concerned stakeholders as distinct from mere critics a successful series of workshops
facilitated by AIM allowed for working with stakeholders to restructure processes in order to
improve services
Fabrice patent agents must continually upgrade knowledge and skills in order to provide
quality work; in Europe, oral discussion between applicants and examiners facilitate
explanation of the technology and clarification of misunderstandings; communication and
understanding are limited when applicants only option is a written application
Dr. Kittima if Thailand is to be a creative economy, IP must be demystified and
decentralized
Khun Wiboonlasana, Commercial Advisor, Office of the Permanent Secretary, Ministry
of Commerce Overall IP Office Administration
Key Points:
Goal of DIP is to be efficient and modern, to promote IP creation, and to form
international IP networks
Working with universities to improve in-house patent search processes; IT is both inhouse (small) and outsourced; a national search database for inventors is available on
CD for sale on free online
Working with USPTO, WIPO, SIP, EPO, JPO, IP AUS, KIPO
Majority of petty patents filed by Thai locals
Number of examiners employed is limited by government
Trademark registrations are major source of revenue; all are revenues returned to
government and reallocated according to annual budget
Government has incentivized the public to file patent applications via low filing costs
(less than of US price)
Bureaucracy is major challenge ahead currently, office is unable to incentivize
examiners
173
Office has commissioned Chulalongkorn University to conduct corporatized office

study, and is working to train agents, improve internal database, and to engage with
regional and international organizations including ASEAN and WIPO
Main issues to consider:

Streamline technical assistance (info sharing and training)
Physical interaction/on-site practice learning is required
Tailor-made technical assistance (IT and database systems) is needed
Phi Anh reported similar issues:
Salary increases restricted by government
Commercial databases are too expensive
Language barriers are difficult to overcome
Unable to recruit highly-trained English-speakers due to high private sector salaries
Khun Darani asked whether or not DIP had faced difficulties this year due to the PCT, as
granted applications decreased.
Khun Kachit responded that the PCT program had just entered the national phase and his
office wants to use this period to decrease the backlog; however, there is currently too much
work for examiners, and the DIP seeks training on how to best prepare for the national phase
It was noted that petty patent applications had actually increased, while the government
policy of moving toward a creative economy had put additional demands on DIP manpower
Paul asked if there were ways to compile streamlined, tailor-made assistance packages.
Jennie the US is prohibited from bringing foreign examiners in to work side by side US
patent officers; however, a past project with the Philippines sent foreign representatives to the
US for USPTO training this was very expensive as it included housing in DC, and the
project was never renewed we need to look at similar models moving forward, and look
toward additional sources of funding
Mishima-san from the viewpoint of Japanese companies, they can help offices by expecting
or anticipating whether or not a given application will be granted this approach will offer a
new aspect to the solution
Stephane the office looks to integrate with/assist ASEAN multiple initiatives are in place
and a plan is currently being drafted EPO is more flexible than US; however, it must still
allocate resources between domestic and international assistance
Jennie we realize the need to gear training toward specific ASEAN national needs and also
strengthen mentoring and training (i.e. not just an annual conference) this would help to
align such assistance with local needs. Further, we must justify each program offered, so if
only one meeting is offered, it is hard to interact based on current information and budgets
while addressing specific interests and national needs. USPTO attempts to engage bilaterally
with individual offices, but this is difficult under current mechanisms. ASEAN is a useful
platform to facilitate assistance
Khun Kajit are there any plans to extend technologies to ASEAN we need to consider the
costs of assistance and consider cost sharing
Suon Vichea our office is not autonomous; it sends revenues to the government which
reallocates through its budget there is an inadequate number of examiners and insufficient
equipment (originally acquired via international assistance) the office has considered asking
WIPO to study the establishment of a separate IP office, and Singapore to study an
autonomous office currently considering joining the Madrid Protocol and reviewing the
offices enforcement measures; critical activities for assistance include a program to increase
174
public awareness and the development of an online platform; the office is currently searching
for development partners the K.I.Asia report should look at each countrys needs and be
submitted to ASEAN
Khun Kajit the US has always offered assistance to ASEAN; however, there may be a lack
of understanding regarding our needs. There has been too much focus on enforcement, and
not enough on administration. We have requested training in Bangkok but US and EPO
have not provided this. Since Thailand is trying to protect international IP, why cant the
West provide the training necessary to do this more effectively?
Jennie we have money for IP enforcement but not a lot on the other side (i.e. IP
registration) large bureaucracy is a real issue for all of us the more information on
specific needs in the report, the better
Chris, CEO, Everett Knight Ltd. Staff Capacity
Key Points:
All the regions IPOs seek to foster creativity and innovation
Delays in securing patent grants are a particular challenge in the pharmaceutical
industry can take up to twenty years or more (patent expires before it is granted)
Look toward pinpointing factors that lead to these delays filing, substantive, other
Best practice organize public-private stakeholder dialogues sit down with
cooperative stakeholders to see what we can fix; providing information on the new
technologies that will appear in upcoming patent applications
Paul asked whether or not a neutral, academic third-party is necessary to take the
confrontational edge off these types of gatherings?
Chris such a third party is not necessary because cooperative stakeholders can speak
candidly on mutually beneficial goals without confrontation
Further Recommendations:
Asia has a number of in-house patent attorneys they should visit examiners at the
individual offices to see what is being done at each office
Ensure that applications are being drafted correctly problems might not all be the
examiners fault. What can we do to better facilitate the application drafting process?
Make application guidelines and examination handbooks available in English so that
drafters can write more effective applications
Sit down with industry insiders to discuss problems and how we can address them in
the short, medium and long terms
Consider remedies to treat delays in granting patents; e.g. the US provides a patentee
the option to gain some of his protection time back (to recoup more of his R&D
investments)
Regional cooperation is crucial consistency across ASEAN members IP
frameworks will instill confidence in investors minds as they consider applying for
patents in the region
Stakeholder meetings should be industry-specific to effectively discuss specific
technologies, and focus on front-end matters (i.e. how examiners are treating
applications)
Rather than one firm offering such seminars, industry associations could take charge
to ensure fairness and legitimacy
175
Dr. Usanee, Advisor, Chulalongkorn Intellectual Property Institute Agent Capacity

Key Points:
Crucial to build awareness in academia (i.e. throughout the universitys departments)
Clarify and simplify application requirements provide guidance on the IP manuals
so that professors can prepare adequate applications train them to use patent
searches
Patent agents are important claims are very difficult to file
Collaboration and cooperation between offices and local universities is essential a
multi-disciplinary approach is required to effectively address constantly changing
technologies and universities typically have expertise in multiple disciplines
Khun Kajit responded with the following concerns:
MOUs have been signed with 15 universities but the focus is too narrow
Government has incentivized professors in the past by making patents granted a key
performance indicator for promotion. However, confusion ensued as it takes so long
to acquire the grant. Subsequently the KPI became patents filed. This resulted in a
great deal of filing; however, increased quantity came at the cost of diminished
quality
We need an IP curriculum in order to increase awareness locally
Some patent attorneys in Thailand are not up to international standards
The DIP is not the best organization to educate patent agents due to a conflict of
interests agents should seek to make patents as general as possible whereas the DIP
examiners should seek to make patents as narrow and specific as possible. Therefore,
the universities are better suited to serve as trainers
Collaboration is made more difficult because good university professors are too well
paid to be happy with government pay for their work on patents or patent training
Enforcement is another big issue a few months after a product comes out, you see
the same thing all over the market enforcement is not effective, but this is beyond
the capacity of DIP, which doesnt have the human resources to actively hunt down
infringers
Khun Darani, Co-Managing Partner, Manager Director of Intellectual Property, Tilleke
& Gibbons International, Ltd. Enforcement
Key Points:
Focus should be on mediation (less time-consuming and costly) as opposed to courts
Many successes in Thailand with mediation
Goal is to reduce criminal cases regarding IP
Consider allowing partial oppositions and letters of consent
Ephifanio the Philippines office hired mediators and set up a mediation office (strongly
supported by the Supreme Court)
Cambodia doesnt hire mediators only the IP officer talks with the applicant
Paul do other offices have IP Courts, and are they helpful? Only Thailand at present.
Paul what are the special needs of the newly established offices in Laos and Myanmar. Are
their specific needs we can address?
176
Souligna Other offices should provide their IP policies, frameworks, procedures, handbooks
to Laos to assist the latter in establishing its operations. Other needs are help in drafting
legislation and training officials
In summarizing the discussion and closing the meeting Paul invited additional information
and comment to be sent to: busakornc@kiasia.org
177
WORKSHOP SUMMARY
Summary and wrap-up by Mr. Paul Wedel
Procedures
What are the best search tools that make sense in-country and regionally?
How can we make sure that the patents are of a high quality (in addition to processing
the quantity of patents)?
How can efficiency be raised? What are the small steps that can lead us to progress?
Is the Global Patent Index a solution for the region?
Metrics are crucial we need consistent metrics across regional offices in order to
determine progress that has been made and where/how to move forward with
assistance
Common problem seems to be the expense of commercial databases how is this
overcome?
Should Malaysia and Philippines experiences in expanding staff, streamlining
procedures and digitizing that led to decreased backlog be used as the benchmark that
Cambodia requested?
Formed paragraphs/standard language moving forward might help with integrating
common ASEAN platform
Can member states establish US-modeled dashboard to facilitate progress?
How do we streamline/tailor technical assistance to meet specific country needs? A
challenge to EPO, USPTO and JPO
Administration
How to improve the quality of applications submitted?
Based on the success of the autonomy of the IPOs in Malaysia and the Philippines,
what can we learn and how can we move towards autonomy in other countries? Can
this be made part of an ASEAN agenda?
What is the best way to engage the stakeholders? Private sector stakeholders have
much to contribute in terms of technology updating and improved processes. How do
we treat them as clients but not face in a controversial manner or create conflicts of
interest?
What is the best way to use this report to advance IPO development agendas?
How do we develop a regional platform (e.g. AEC) to facilitate more effective largescale training/assistance from partners?
How can IP offices coordinate and cooperate more effectively with universities
(office brings patent knowledge while university brings technology/science
expertise)?
How do we raise public awareness of IP and its importance in national development?
Staff Capacity
How to attract and retain qualified examiners?
178
Enforcement
Mediation has worked well in several countries as it is peaceful, less time-consuming
and inexpensive is this model applicable across ASEAN?
Are IP Courts a good model?
179

Queen Sirikit Nation Convention Center
2nd Floor, Zone D, Room 201/2
60 New Ratchadapisek Road, Klongtoey, Bangkok 10110
Tel: (662) 229 3131, Fax: (662) 229 3130
Website: www.kiasia.org Email: kiasia@kiasia.org

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Table of Contents

Table of Contents ........................................................................................................................ i

ASEAN Economic Community

Administration for Industry and Commerce, China

ASEAN Intellectual Property Association

ASEAN Member State(s)

Association for Overseas Technical Scholarship, Japan

Asia-Pacific Economic Cooperation - Economic Integration Program

Association of Southeast Asian Nations

ASEAN Patent Examination Cooperation Program

ASEAN Working Group on Intellectual Property Cooperation

Business Development Services

Bureau of Customs, Philippines

Bureau of Patents, Trademarks and Technology Transfer, Philippines

Patent Official Gazette, Indonesia

Central Intellectual Property and International Trade Court, Thailand

Canadian Intellectual Property Office

Cambodia, Laos, Myanmar and Vietnam

Case Management Conference

China Intellectual Property Net

China Patent Information Center

China Trademark Office

Department of Intellectual Property Rights, Cambodia

Directorate General of Intellectual Property Rights, Indonesia

Department of Industrial Property, Cambodia

Department of Intellectual Property, Thailand

Department of Intellectual Property, Standardization and Metrology, Laos

Department of Special Investigation, Thailand

ASEAN Project on the Protection of Intellectual Property Rights

European Patent Convention

European Patent Office

Foreign Direct Investment

General Administration of Customs, China

General Department of Industry, Cambodia

Gross Domestic Product

Global Patent Index

Integrated Intellectual Property Management System, Philippines

Intellectual Property (Rights)

Industrial Property Automation System, WIPO

International Patent Classification System

Intellectual Property Corporation of Malaysia (before 2005)

Intellectual Property Division, DISM, Laos

Intellectual Property Digital Library, Indonesia

Industrial Property Digital Library (for Patents Project, Philippines)

International Preliminary Examining Authority

Intellectual Property National Policy, Indonesia

Intellectual Property Office of the Philippines

Intellectual Property Office of Singapore

Intellectual Property Satellite Offices

International Searching Authority

Integrated Trademark System, Malaysia

Japan International Cooperation Agency

Japan Patent Office

Kenan Institute Asia

Kilobit per second

Korean Intellectual Property Office

Korean International Cooperation Agency

Megabits per second

Ministry of Domestic Trade, Cooperative and Consumerism, Malaysia

Ministry of Industry, Mines and Energy

Ministry of Science and Technology, Myanmar

Ministry of Science and Technology, Vietnam

Myanmar Scientific and Technological Research Department

Intellectual Property Corporation of Malaysia (after 2005)