Main outlines on new Patent & Design Laws in Myanmar

CategoriesLegal News

As you may know, Patent Law and Design Law of Myanmar will take effect in 2020, marking significant developments in the Intellectual Property field of Myanmar. For more information, we would like to inform you that on 30 January 2019, Industrial Design Law No. 2/2019 – Myanmar’s Design Law were passed into legislation, providing a framework for the protection of rights over the external visual design of objects.

Further, on 11 March 2019, the Assembly of the Union of Myanmar (the Parliament) passed Patent Law No. 7/2019 – Myanmar’s Patent Law, providing a framework for the protection of inventions related to products and processes. This is the first legislation specifically addressing the protection of patents in the history of Myanmar.

However, both laws provide that they will be effective only after a notification is issued by the President of Myanmar at later stage. Until now, there has been no indication on when the President’s notification on the effective date of the Patent Law or the Industrial Design Law will be issue. It is likely that this will happen only after the implementing mechanisms have been properly established. Nevertheless, the move is a positive change for businesses in Myanmar, which have long relied on outdated laws to protect their intellectual property rights.

In addition, the Myanmar Intellectual Property Office (“MIPO”) will be established under the Ministry of Commerce to administer patent and design registrations.

It could be seen that although Patent and Design Laws for Myanmar all passed, however, they are still not yet in effect. The implementation of these Laws depend on many factors, which the Myanmar government are still working on, such as, regulations on guiding implementation of the laws; the structure of MIPO; IT infrastructure; training programs for IP users, MIPO staff and IP Practitioners training, etc.

 

From the Myanmar side, we understand that all the mentioned matters would be completed around early 2020. Thus, we would like to introduce the main features in new Patent law and Design Law as below:

* PATENT LAW

Some of the most notable features of the law include the following:

  • Introduction of both patents and utility models (“petty patents”).
  • Requirements for patentability: novelty, inventive step and industrial applicability for patents; petty patents do not have to fulfill the requirements for inventive step.
  • The first-to-file system for patent registration and protection will be adopted.
  • One application can cover only one invention patent or petty patent. The same invention cannot be registered as both patent and petty patent.
  • Non-patentable inventions include discoveries, scientific theories and mathematical methods; schemes, rules and methods for doing business, performing purely mental acts or playing games; computer programs; essentially biological processes for production of plants and animals other than man-made living micro-organisms and processes; plant or animal varieties; methods for the treatment of human and animal body and such diagnostic techniques; inventions related to known matters including naturally-existing objects or their new usage and features; and inventions which negatively affect the morals, peace, and tranquility of Myanmar.
  • Filing in English and Burmese possible; certified translation in the other language required upon request of the registrar.
  • Priority under the Patent Cooperation Treaty or the Paris Convention can be claimed in Myanmar within one year from the date of the initial application.
  • Publication of applications after 18 months from filing/priority.
  • Substantive examination upon request from applicant within 36 months from filing.
  • Protection term: 20 years from filing date for patents and 10 years from filing date for petty patents. The annual fee must be paid within 6 months before the due date.
  • If official actions are issued by the Directorate of Patents, responses must be filed within 60 days.
  • Protection of pharmaceutical products not possible until 01 January 2033 and protection of chemical products used in agriculture, food products, and microbiological products not possible until July 1, 2021, unless the Myanmar government specifies otherwise (exemptions for least developed countries members).
  • A compulsory license can be applied for a patent.
  • Patent infringement claims can be filed at the specialized Intellectual Property Court (which will be established by the Supreme Court of the Union via powers conferred under the law).

Applications should contain the following information:

  1. The request for grant of patent;
  2. The applicants’ names, nationalities or countries of incorporation, and addresses;
  3. The inventors’ names, nationalities, and addresses;
  4. The representative or agent’s name, national registration card number, and address;
  5. Patent specifications and drawings;
  6. One or more patent claims;
  7. Priority documents, if applicable; and
  8. The request for early publication, if applicable.

The Directorate of Patents and the MIPO may stipulate additional required documents and information from time to time.

* DESIGN LAW

Some of the most notable features of the law include the following:

  • The first-to-file system for industrial design and protection will be adopted to bring Myanmar to be in line with other ASEAN countries.
  • To be registrable, an industrial design must be domestically and internationally novel (i.e. not disclosed or exhibited to the public and free of imitation) before the application is made, or novel before the date of a priority right application from another jurisdiction was made if applicable.
  • An industrial design is deemed to be new if it has not been disclosed to the public domestically or abroad whether before the filing date of the application for registration of industrial design in Myanmar or before the priority date if the priority right is claimed.
  • An industrial design is not new one if it is a combination of known industrial designs features or if it is not significantly different from the known industrial designs.
  • Applications filed within six months from the date of filing in a member country of the Paris Convention, or in another World Trade Organization member state, will enjoy a right of priority, and be accorded the same priority date.
  • Applications for multiple designs can be filed for protection under a single application if these designs fall under the same class in the Locarno Agreement Establishing an International Classification for Industrial Designs.
  • Protection will be enforceable through civil action by the owner(s) of the industrial design, as well as their heirs and assignees where appropriate. The law also establishes several criminal offenses related to fraudulent or dishonest registration, and to unauthorized disclosure of an industrial design
  • An industrial design registration is valid for 5 years from the filing date. It can be renewed twice, 5 years each time. The total maximum validity term is 15 years.

Although the procedure and administrative bodies for the new system are not yet in place, the new law lays out the documents required for registration, which follow international standards and require substantial evidence of any priority rights, and clear and complete descriptions of the design in question along with an index of its uses and application.

Applications should contain the following information:

  1. The request for grant of industrial design;
  2. The applicants’ names, nationalities or countries of incorporation, and addresses;
  3. The designers’ names, nationalities, and addresses;
  4. The representative or agent’s name, national registration card number, and address;
  5. Drawings, photographs of the industrial design and the applied product for which the industrial design is to be used.
  6. Descriptions of the designs;
  7. Priority documents, if applicable.

The Directorate of Designs and the MIPO may stipulate additional required documents and information from time to time.

For more information on this development, please contact us at patent@investip.vn and/or dotuyetnhung@investip.vn for more information.

Ms. Do Tuyet Nhung – Vice Director of Patent & Design Department