The figures obtained from the Malaysian Intellectual Property Corporation (MyIPO) shows the performance over 2017 in some sectors of the economy. MIMOS Berhad retains its top position for two years running, while Universiti Teknologi Malaysia climbs to second ranking. The rest of the list reveals some surprises and a few new entries:
Recently Intellectual Property (IP) practice in Vietnam and Myanmar has undergone attention-grabbing developments that are crucial and important. To be specific, the developments were mainly on the change in Regulations of IP in both the countries – basically the patent offices have made amendments to relevant Regulations to reflect the change in Patent (PT) and Industrial Design (ID) practice in the respective countries.
The National Office of Intellectual Property (NOIP) of Vietnam has amended the national phase entry date to Vietnam by completely eliminating the late entry provision provided before. Previously, the patent office had allowed late entry into Vietnam whereby it was possible to enter Vietnam within a 6-month grace period after the 31-month national phase deadline.
However, effective from 15 January 2018, the 6-month grace period has been revoked and will no longer be applicable in Vietnam. Simply put, any applications to be filed after the 31-month national phase deadline will no longer benefit/enjoy the 6-month grace period. Therefore, national phase applications must be filed by the 31-month in order to be able to claim priority from the PCT application.
Next, effective from 15 January 2018, 6-months grace period for requesting for substantive examination for patent and/or utility solution applications are no applicable. The patent office has concluded that a request for substantive examination has to be filed by the due date of 42 months from the priority date for patent or 36 months from the priority date for utility solution which date are not extendable.
Last but not least, the patent office has confirmed that it is mandatory to file Vietnamese language translation at a time of filing the patent and/or the utility solution applications. Generally, any delay or any extension for filing the Vietnamese language translation will no longer be entertained and/or accepted by the patent office.
If you need any clarification on the above matter or on any other IP matter, please contact us at email@example.com.
KASS is pleased to announce that it has opened its third overseas branch office in Yangon, Myanmar. As more and more Malaysian businesses are exporting products and services to Myanmar, we as a leading Intellectual Property firm in Malaysia have often been approached to register their Trademark (brand), Designs and Patents in Myanmar.
To satisfy the growing need for personalized Intellectual Property services in Myanmar, KASS recently opened a branch office in Yangon, the commercial capital of Myanmar.
Myanmar is the largest country in mainland South-East Asia with a total land area of 676,578 square kilometres. It stretches 2200 kilometres from north to south and 925 kilometres from east-west at its widest point. Known and notable global brand names from the USA, Europe and other countries have manufacturing plants in Myanmar and there are more and more companies venturing into this fast-developing country.
KASS Myanmar is headed by a dynamic Burmese lawyer who is experienced in Intellectual Property registration and enforcement of Intellectual Property rights in that country.
All instructions and enquiries on Intellectual Property matters in Myanmar should be directed to our head office in Kuala Lumpur and we will respond to your instructions.
Few things to know about IP protection in Myanmar:
- There, currently, is no IP law in Myanmar.
- Trademarks can be ‘applied for’ in Myanmar but this entails the filing of a Power of Attorney and Declaration of Ownership at their ‘Registry’.
- After the Trademark ‘application’ is made, a Cautionary Notice is filed to inform the public of the existence of the trademark.
- Patents and Designs are ‘filed’ in the same manner as Trademarks. However, recently, the Registration Office announced that they no longer accept Patent or Design applications (by filing, we mean the filing of Declaration of Ownership) –this started with effect from 22 September 2017. They are waiting for the new Patent Law and new Industrial Design Law to be enforced soon.
- Renewals are ‘filed’ in the same manner as how the initial application is made.
- All of the above will change when the new IP law is enforced, which should be sometime in this year (2018).
- Moving forward, with our direct presence in the Golden Land, we will keep you abreast with further updates on their new IP laws. The draft laws will hopefully be open to public opinion and further revisions to ensure that Myanmar’s intellectual property rights law and related regulations will be more efficient and structured for both, local and foreign IP owners.
The Indonesian Government is planning to increase their non-tax revenue (Penerimaan Negara Bukan Pajak). The non-tax revenue comprises of certain official tariffs, which includes the official fees or government charges for Intellectual Property prosecution.
Below are some of the notable changes:
1. Copyright and Industrial Design
- Filing fees are not increasing (what a relief!), but the Government is planning to increase certain post-filing recordals such as recordal of change of name and/or address and the assignment of rights.
2. Patent, Integrated Circuit Layout, and Trade Secret
- Similar to the above, patent filing fees are not affected. However, the government is planning to increase the post filing fees. We would like to highlight two things that previously did not incur cost but soon will incur costs i.e. the filing of the request of Patent Prosecution Highway (PPH) and request of extension of time for responding the examination result.
3. Trademark and Geographical Indication
- Filing fees, again, are not affected. However, certain post filing matters will see a significant increment.
Our detailed information with the specific increments will be sent to all of our colleagues, clients and associates as soon as the Indonesian Government authorizes the draft list of official fees and the official government regulation is thereafter amended. The Government plans to enforce the changes by the end of 2017.
We have great news for all local brand owners. The much awaited entry into Madrid Protocol by Thailand has taken place. On 7th August 2017, the Director General of World Intellectual Property Organization (WIPO) has officially announced the use of Madrid Protocol to register their trademarks in all 115 countries, starting 7th November 2017 onwards.
Not only that the Madrid System reduces the time taken to file a trademark, but it also simplifies the entire process with a single international application and one set of fees when registering products or services in Thailand, or worldwide. However, that the decision as to whether or not an applied mark is registrable in Thailand will still be based on the Thai Trademark Act, as amended since 28th July 2016.
KASS International is here to help with both local and foreign clients who are looking into expanding their businesses, services or products in Thailand via the Madrid Protocol System.
Thailand becomes the 99th member of the Madrid system and the latest country in ASEAN to join. The six other ASEAN countries that already joined the Madrid Protocol are Brunei, Cambodia, Laos, the Philippines, Singapore, and Vietnam. Learn more about the Madrid Protocol here
By Ilangkumanan Kashaban
The Intellectual Property Corporation of Malaysia (MyIPO) has now joined forces with European Patent Office (EPO) in establishing the Patent Prosecution Highway (PPH) Pilot Program effective from 1st July 2017, for an initial three-year trial period.
The three-year trial period serves as duration for both the Malaysian and the European Patent Offices to assess if the initiated PPH program is actually a success and/or a failure between both parties, which subsequently may determine whether the PPH program should be sustained after the trial period.
Generally, the PPH program provides an expedited examination procedure for corresponding patent applications filed in the countries involved, so as to allow applicants such as both Malaysian and European companies to obtain corresponding patents sooner.
Simply, the PPH program allows a corresponding patent application – where the claims have been determined as patentable by a First Patent Office – to be used as a basis for expediting the patent application at a Second Patent Office.
The requirements for filing a request for PPH are as follows:
- The Second Patent Office (SPO) patent application is in particular relationship with the First Patent Office (FPO) application, i.e., claims priority under Paris Convention and/or PCT national phase;
- The FPO patent application has at least one claim that was determined by the FPO to be patentable/allowable;
- All the claims in the SPO patent application sufficiently correspond to the allowable/patentable claims in FPO patent applications;
- The examination has not begun in the SPO at the time for request for PPH;
- A request for Substantive Examination must have been filed at SPO either at or prior to the time of the PPH request.
The following are the documents that need to be filed during the filing of the request for PPH:
- Copies of all FPO Office Actions and its translation in either English or Bahasa Malaysia;
- Copies of all claims determined to be patentable/allowable by the FPO and its translation in either English or Bahasa Malaysia;
- Copies of references cited by the Examiner at the FP. If the references are patent document, it is not required to submit the references, unless explicitly requested by the Examiner; and
- Claims Correspondence Table which identifies how all claims in the SPO sufficiently corresponds to the patentable/allowable claims in the FPO patent application.
The PPH expedites patent prosecution and enhances the search and examination results between the Patent Offices to improve the quality of examination worldwide.
For more information, visit www.kass.com.my or drop an e-mail to firstname.lastname@example.org if you need further information on the PPH procedures.
The figures obtained from the Malaysian Intellectual Property Corporation (MyIPO) shows the performance over 2016 in some sectors of the economy. MIMOS Berhad takes its placing on the top ranking, while Universiti Malaya drops to second ranking after being in the top position for two years running. The rest of the list reveals some surprises and a few new entries:
When one conducts a trademark search or applies for a trademark registration, they are exposed to the Nice Classification system. The Nice Classification system is a system of classifying goods and services into 45 classes – 34 for goods and 11 for services.
It can be difficult to classify (select the right class under the Nice Classification) as several similar terms exist in other classes.
Thus, the classification tool, TM Class, is a godsend to trademark owners and IP lawyers, as it allows users to search and translate appropriate terms for the purpose of finding the correct Nice Classification for that specific goods or services.
The Indonesian government has increased its’ official fees for a range of IP prosecution actions and has amended its’ Trademark Law.
New Official Fees:
Good news is that not all of the fees have been increased. Bad news is that there is a 100% increase in some parts. This change has become effective since 10 November 2016.
We have great news for all brand owners. The much awaited entry into Madrid Protocol by Thailand has taken place. Thailand recently amended its Trademark Act and this change has become effective since 28 July 2016.