What is ASEAN?
The Association of South East Asian Nations (ASEAN) comprises the following ten member countries: Brunei, Cambodia, Indonesia, Lao PDR, Malaysia, Myanmar, Philippines, Singapore, Thailand, and Vietnam. Formed in 1967, the regional block primarily aims to promote economic growth, social progress, and cultural development in order to strengthen ties and build a prosperous and peaceful community among its members.
Does ASEAN have a regional understanding when it comes to IP?
There certainly have been steps taken, dating back to 1995, to cooperate when it comes to IP among the ASEAN member countries, mostly because of the aims and purposes of the regional block. The regional group does, in fact, have a specific present initiative called the ASEAN Intellectual Property Rights Action Plan 2016-2025, that sees IP as central to building the region’s socio-economic goals. To do so, one of the main tenets of this 10 year initiative is for all member countries in ASEAN to accede to all the major IP treaties such as, the PCT, TRIPS, Paris Convention, Madrid Protocol, and the Hague System. As of February 2021, all of ASEAN’s member countries are members of the PCT, Paris Convention, and Madrid Protocol, except for Myanmar. As for the Hague System, certainly fewer of the ASEAN member countries have acceded, with only Singapore, Vietnam, Brunei, and Cambodia being members so far.
So in a sense, yes, the member states of ASEAN do have a regional understanding when it comes to IP in that they recognise the strengths of being members of international IP treaties and how that can affect their individual and regional economic outlooks. Having a robust IP regime brings economic opportunities of its own. Typically, when companies are assured that their innovations are safe and can be protected by national or international laws, there is a higher chance that they will want to bring their manufacturing and research and development (R&D) teams here, and that is definitely something that the individual ASEAN governments understand and are actively trying to encourage.
How has ASEAN developed its patent and trademark law in the region?
Almost imperceptibly, we are seeing cooperation and harmonisation when it comes to the protection of IP in the ASEAN region. Such harmonisation can be seen as starting as long ago as 1994 with the accession by many states to the TRIPS agreement which prescribed certain minimum standards for IP protection. Accession to the PCT with its common search and preliminary examination processes further provided an initial common approach to patentability.
The most notable regional development is the ASEAN Patent Examination Co-operation (ASPEC), which was launched in 2009. As a regional patent work-sharing programme among all the ASEAN member countries except Myanmar, it shares Search and Examination results between participating member countries’ IP offices with the aims of improving examination consistency and quality and reducing pendency times. This provides applicants, who are seeking patent protection in multiple ASEAN countries with substantial time and cost savings. We often have clients who opt to use ASPEC when their business strategies and developments are focused in this region.
Expansion of similar laws and standards of examination amongst some ASEAN states on an individual basis has also indirectly led to some harmonisation. One example is in Brunei. Brunei previously had a patent registration system but in 2012 replaced this with a home-grown Patents Act, which was modelled on the then-current Singapore law, and both laws now share the same definition of patentability and many similar procedures. There is perhaps no surprise that Brunei chose to model their Patent law on Singapore’s given the close cooperation between the countries and that Singapore is repeatedly ranked as having one of the world’s strongest IP regimes, ranking fourth in the world on the Intellectual Property Rights Index 2020, a publication by the Property Rights Alliance.
Another example is the development of the ability to register Singapore patents in Cambodia and Laos. This procedure can be done after the Singapore patent has been granted and therefore allowing the applicant the option to obtain protection in these territories well after the Paris Convention or PCT national phase deadline has passed. It is yet another convenient route for applicants to take should they find themselves with business interests in this region. Of course registering a Singapore patent means that the examination standard and determination of patentability are the same.
On the trademark side, similarly, the Madrid Protocol is the international trademarks system that allows applicants to register and manage their trademarks with a single application and a single set of fees. Although this treaty isn’t unique to Southeast Asia, we have seen an increased take up of the Madrid Protocol amongst applicants from ASEAN countries, giving the ability to streamline the process for trademark protection in this region and elsewhere in the world. Again, we are finding significant take-up of the Madrid Protocol amongst our clients.
Can there be an ASEAN Patent (and Trademark) Office?
Given the level of cooperation among ASEAN countries when it comes to economic goals and IP, this is a valid question, particularly as cooperation and harmonisation on patent matters increases amongst member states.
There are three questions to answer, is it desirable, is it politically possible, and what would it look like?
Concerning desirability, establishing a uniform standard of patent protection in a single application process covering all ASEAN countries would certainly be something attractive to businesses, both in the ASEAN region and internationally, and would be a no-brainer as a device for promoting investment in the ASEAN region.
The remaining questions are to some extent interlinked.
Perhaps the most well-known example of a regional patent office is the European Patent Office (EPO), so would this be a useful model for an ASEAN Patent Office, both politically and physically?
The EPO has over 6000 employees of which about two thirds are patent examiners and most of whom work at two fixed locations, in Munich and The Hague. The patent profession in Europe, European Patent Attorneys, need not be based in these locations but can practice in any member state.
Given the locations of the EPO are fixed, would this be suitable for ASEAN? There would be the political problem of where to site the office, since undoubtedly all ASEAN nations would like the office in their country as a matter of prestige, if nothing else. This might be ameliorated to some extent if the employees of the office, wherever this was based, were evenly distributed amongst nationals of the ASEAN member states, but experience of the EPO does not support this as an outcome. In the EPO’s Social Report for 2019, this showed that the largest proportion of staff, around 27%, were German, about double what they should have been based on percentage of EPC population; this was particularly the case in the EPO’s largest establishment in Munich, where over a third of the staff were German. Equally, although European Patent Attorneys may be of any EPC nationality and practice in any EPC state, over a third of these are German, the vast majority of whom are based, likewise, in Munich.
So, the EPO model of a fixed location patent office in one or two ASEAN member states does not seem to provide a good model for an organisation as egalitarian as ASEAN.
Key roles (such as the Secretary General) and Heads of Government meetings in ASEAN rotate through the member states, so would a rotating “caravan” model work for an ASEAN patent office? Again not, as experienced examiners and other staff would be unlikely en-masse to move location every few years and such would be extremely wasteful, disruptive, and thus largely unworkable.
So are there any other models which might work? Until recently one might say “no”, but the COVID-19 pandemic has changed the world’s outlook to many things and provides a possible clue as to how an ASEAN Patent Office might be configured, and that would be to make it distributed.
COVID-19 forced many businesses and government departments including patent offices to cease working in centralised offices and work from home, putting in place structures and practices to allow full office operation remotely. Necessity being the mother of invention has meant significant problem solving and innovation in working in distributed environments has taken place so that what might have seemed impossible a year ago is now reality for many.
This model could work for an ASEAN patent office, given the digitalisation and subtle joining up of the IP environment that is already taking place, with all structures, from administration to examination and appeals distributed amongst the member states of ASEAN, working from national patent offices or indeed from home, on a grand scale.
Experience of our firm during this time is that the areas of the business which suffer the most in a distributed environment are collaboration and training, but an ASEAN patent office based within national patent offices would provide a critical mass in each location and to provide collaboration and training between locations would require the movement of only a relatively small number of people for which a caravan model might be appropriate at least for training purposes.
Thus, a regional patent office that benefits all member countries directly and indirectly by being everywhere and anywhere could be a suitable candidate for ASEAN.
Why seek IP protection in the ASEAN region?
A reason why we are seeing these developments in IP protection in the ASEAN region is the appeal of doing business in this part of the world. This goes back again to the aims and goals for economic growth and development, and the positive effects of a strong IP regime and rule of law. The latter is often a reason cited by companies who decide to set up R&D facilities in Singapore or even to move their headquarters here. Some of the most recent include the news of the video conference company, Zoom, opening a new R&D centre in Singapore by the third quarter of 2021, Tencent, the Chinese multinational technology conglomerate opening a new office in Singapore, which will be its regional hub for Southeast Asia, and the American tech giant, Dell Technologies, opening their new R&D centre in Singapore in late February 2021. Equally, countries in ASEAN such as Thailand and Malaysia have become preferred locations for MNC manufacturing plants. We have equally seen this with our clients. More often than not, regardless of their size, whether they are local companies to multinational companies, small and medium enterprises, or start-ups, they will file a patent, trademark, or registered design application in another ASEAN country.
ASEAN is also home to a combined population of 650 million people and is predicted to continue growing to reach 717 million people by 2030. This combined with its goal of raising standards of living through urbanisation makes for a rather large market for companies looking to invest or expand. Seeking IP protection would be logical at this point of a company’s expansion plans, given the value of the ASEAN market. Even the trend in IP filings in ASEAN reflect this in the number of patent, trademark, and registered design applications filed. The ASEAN IP Portal publishes statistics in this area and all three forms of IP have displayed a steady increase in the number of applications filed since 2013.
Member countries in the regional block also possess a large number of investment opportunities. This is most prominently seen through the levels of foreign direct investment (FDI) streaming into ASEAN. In 2019, FDI inflows into ASEAN increased for a third consecutive year, reaching US$155 billion. This number is only projected to increase over the years with the continual improvements in the business environment and the strengthening of the IP regimes.
This article first appeared in Lawyer Monthly