i

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

ii

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

iii

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

iv

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

AdministratorTypewritten TextThis report was produced by a research team at the Kenan Institute Asia with RichardBernhard and Paul Wedel as supervisors and lead writers and Paul Wedel as editor.

AdministratorTypewritten Text

AdministratorTypewritten Text

AdministratorTypewritten Text

v

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 19 Number of Examiners by Years of Experience ........................................................ 59

Table 20 Number of Examiners by Educational Profile .......................................................... 59 Table 21 Range of Salary Earned by Patent and Trademark Examiner .................................. 59 Table 22 Lao Patent Applications and Registrations ............................................................... 60

Table 23 Number of Application per Patent Examiner ........................................................... 61 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 39 Number of Examiners by Educational Profile .......................................................... 90 Table 40 Number of Examiners by Years of Experience ........................................................ 90 Table 41 Applications and Granted Inventions, 2000 - 2010 .................................................. 91 Table 42 Applications and granted utility models from 2005 to 2010 .................................... 92

Table 43 Number of Application per Patent Examiner ........................................................... 95 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

vi

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

vii

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

1

PART I

INTRODUCTION

&

COMPARATIVE REVIEW

2

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.

3

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

4

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 non-

binding 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

5

application may be deemed by certain countries to be synonymous with the terms non-obvious 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 Full-Text 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

6

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

7

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

8

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 Availability of

Utility Model

Examination Protection

Cambodia Yes Formal +Substantive 7 years from filing

China Yes Preliminary 10 years from filing

Hong Kong Yes Formal 8 years from filing

India No

Indonesia Yes Formal+ Substantive 10 years from filing

Japan Yes Preliminary 10 years from filing

South Korea Yes Formal + Substantive 10 years from filing

Laos Yes Formal + Substantive 7 years from filing

Malaysia Yes Formal + Substantive 5 years from filing; two 5 year

extensions for a total of up to

15 years

Philippines Yes Formal 7 years from filing

Singapore No

Taiwan Yes Formal 10 years from filing

Thailand Yes Formal 10 years from filing

UAE Yes Formal 10 years from filing

Vietnam Yes Formal; technical

examination may be

requested within 36

months of filing

10 years from filing

Utility models serve to protect inventions (generally products, rather than processes or uses4)

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.

4 http://www.sepaf.se/web/page.aspx?refid=141.

5 Would Singapore Benefit from a Utility Model Regime? Singapore Intellectual Property Academy, April 2005.

9

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.

10

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.

11

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 Vietnam Cambodia

Philippines China

Singapore 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,

12

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

Source: Kenan Institute Asia

Cambodia; 104 apps

Indonesia; 5,652 apps

Laos; 20 apps

Malaysia; 6,463 apps

Philippines; 4,005 apps

Thailand**; 5,857 apps

Vietnam; 3,666 apps

-50

0

50

100

150

200

250

300

-20 0 20 40 60 80 100

Pate

nt A

pplic

atio

ns p

er

Exam

iner

in 20

10

Number of Patent Examiners

13

Chart 2 Patent Applications per Examiner

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.

Source: Kenan Institute Asia

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.

Chart 3 Patent Examiner Educations

Noted: Data not available for Cambodia, China, Myanmar, and Singapore

Source: Kenan Institute Asia

0

100

200

300

Camb

odia

Indon

esia

Laos

Malay

sia

Philip

pines

Thail

and*

Vietn

am

2

71

2

79 52

23 53

52 80

10 82 77

255

69 Exam

iner

s, Ap

plica

tions

per

exam

iner

per

year

Patent Examiners Patent Apps per Examiner

74.6 91.1 62.0 88.1 73.6 100.0

4.0 2.8

2.5

6.0

11.9 20.8 21.1

6.3 28.0

5.7 1.4

0%

20%

40%

60%

80%

100%

Indonesia Laos Malaysia Philippines Thailand Vietnam

Perc

enta

ge o

f Num

ber o

f Exa

min

ers

B.S. B.A. M.S. M.A Ph.D in Science Ph.D. in Non-Sci

14

Chart 4 Patent Examiner Years of Experience

Noted: Data not available for Myanmar, China, and Singapore

Source: Kenan Institute Asia

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).

100.0

15.5

39.2

64.3

67.9

7.0

50.0

40.5

44.0

3.8

19.7

50.0

5.1

16.0

35.7

17.0

57.7

15.2

6.0

1.9

34.0

9.4

0% 20% 40% 60% 80% 100%

Cambodia

Indonesia

Laos

Malaysia

Philippines

Thailand

Vietnam

Percentage of Total Number of Examiners

< 5 years 5-10 years 10-15 years 15-20 years > 20 years

15

Table 3 Average Time Expected to Take to Register A Patent

IP offices Practitioners

Cambodia 3 years Over 3 years

China - 3-5 years

Indonesia 5.61 years via normal process;

4.92 years via PCT

7-8 years

Laos 4 years More than 5 years

Malaysia 1.6 years via fast-track basis without

objections; 5.41 years via Paris Convention;

2.15 years via PCT

4-6 years

Myanmar None None

Philippines 4-5 years

Singapore 3-4 years 3-6 years

Thailand 3 years 5-6 years

Vietnam 2-3 years 2-3 years

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

Note: Size of the bubble = Number of applications. Data not available for Myanmar, China, and Singapore

Source: Kenan Institute Asia

Cambodia; 3,969 apps

Indonesia; 47,794 apps

Laos; 2,417 apps

Malaysia; 26,366 apps

Philippines, 16,844 apps

Vietnam; 27,923 apps

Thailand; 37,656 apps

0

500

1,000

1,500

2,000

2,500

-10 0 10 20 30 40 50 60 70 80

Trad

emar

k Ap

plica

tions

per

Ex

amin

er in

2010

Number of Trademark Examiners

16

Chart 6 Trademark Applications per Examiner

Note: Data not available for Myanmar, China, and Singapore.

Source: Kenan Institute Asia

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

Noted: Data not available for Cambodia, China, Myanmar, Philippines and Singapore

Source: Kenan Institute Asia

0

1,000

2,000

3,000

5 43 4 18 29 18 63

794 1,111

604

1,465

580

2,092

443

Exam

iner

s, Ap

plica

tions

per

exam

iner

per

year

Trademark Examiners TM Applications per Examiner

14.0

88.9

55.6

34.9

58.1

100.0 11.1 57.1

0.0

27.9 7.9

0%

20%

40%

60%

80%

100%

Indonesia Laos Malaysia Thailand Vietnam

Perc

enta

ge o

f Num

ber o

f Exa

min

ers

High School B.S. B.A. M.S. M.A

17

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

Noted: Data not available for Myanmar, China, and Singapore

Source: Kenan Institute Asia

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 3 months Around 4 months

China Within 3 years 3-5 years

Indonesia 14 months 1-2 years

Laos 6 months 6 months

Malaysia 17-24 months 2-3 years;

12-18 months without objections

Myanmar 1 months 4-6 weeks

Philippines 9.99 months 18-24 months

Singapore 6-8 months 4-12 months

Thailand 12-18 months 10-18 months

Vietnam 15-18 months 15-20 months

Source: Results of IP office and practitioner questionnaires

80.0

25.6

75.0

7.1

11.1

47.6

20.0

16.3

94.4

60.7

33.3

28.6

27.9

25.0

10.7

27.8

7.9

30.2

5.6

14.3

27.8

3.2

7.1

12.7

0% 20% 40% 60% 80% 100%

Cambodia

Indonesia

Laos

Malaysia

Philippines

Thailand

Vietnam

Percentage of Total Number of Examiners < 5 years 5-10 years 10-15 years 15-20 years > 20 years

18

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

19

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.

20

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 cross-

border 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 ASEAN INTELLECTUAL PROPERTY RIGHT ACTION PLAN 2004-2010

7 ASEAN Economic Community Factbook, Jakarta: ASEAN Secretariat, February 2011

21

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

8 http://www.ipos.gov.sg/NR/rdonlyres/9C70CB38-9FF7-4663-A5A0-

71B65EBAC6DB/7957/Noticeprocedures2.pdf 9 http://www.ecap-project.org/Support_to_the_Setting_up_the_ASEAN_IP_Portal

22

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:

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

10

http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=12

23

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.

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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 opport