Consequent to a Memorandum of Cooperation signed in November 2019 between the Intellectual Property Office of Singapore (IPOS) and the Department of Intellectual Property (DIP) of Lao People’s Democratic Republic (Laos), the DIP can now grant quality patents in Laos based on search and examination conducted by IPOS, and Singapore granted patents can also now be re-registered in Laos without going through search and examination in Laos.
“This will enhance coordination between Laos and Singapore, and provide greater support to innovators growing and protecting their IP in both countries and the region,” said Dr Khanlasy Keobounphanh, director general of DIP. The chief executive of IPOS at that time, Mr Daren Tang, said that the partnership will bring Singapore and Laos a step closer to greater IP harmonisation between their ASEAN partners.
Although guidelines to re-register a Singapore patent in Laos were announced by IPOS in May 2020, due to the Covid-19 pandemic, certain requirements such as the time limit for submitting a re-registration request have taken time to be clarified.
We are now pleased to confirm that there is no time limit within which the request for re-registration of a Singapore patent may be lodged. The only requirements are that the Singapore patent is in force, meets Laotian requirements for patentability (i.e., is new, involves an inventive step, and is industrially applicable) and has a filing date on or after 17 January 2002. There is also no official fee payable for lodging a request for re-registration, although a patent publication fee will be required.
To submit the request, in addition to certified documents relating to the grant of the Singapore patent, a notarized power of attorney in Laos must be provided, as well as certified Laotian translations of the abstract and the final specification of the Singapore patent.
After re-registration, renewal fees will be payable starting from the next renewal period according to Laos’ existing renewal fee structure, based on the filing date of the Laos patent.
Unlike the situation in Cambodia where the law explicitly provides that exclusive rights conferred by a re-registered Singapore patent in Cambodia shall not be exercised on activities committed in good will by a person who uses the invention, intends to improve the efficiency of the invention or operates business based on the invention before the Singapore patent has been re-registered in Cambodia, and that the person shall have the right to continue to do so even after the Singapore patent has been re-registered in Cambodia, prior user rights have not been clearly prescribed in the agreement made between DIP and IPOS. Thus, prior use in Laos of an invention having patent protection in Singapore will be considered patent infringement upon re-registration of the Singapore patent in Laos.
However, as the agreement between DIP and IPOS may still be clarified in future to exempt prior users in Laos, if patent protection in Laos is desired for any invention currently enjoying patent protection in Singapore, it is advisable to re-register the Singapore patent in Laos as early as possible for the avoidance of doubt. In the meantime, businesses intending to operate in Laos may wish to consider conducting a freedom-to-operate search of Singapore patents to avoid getting caught in the position of an infringer should a Singapore patent be subsequently re-registered in Laos.
For more information, please contact the writer at long@marks-clerk.com.sg or via our Asia portal at asia@marks-clerk.com.
