Patent Protection Landscape in Cambodia

As part of Cambodia’s accession to World Trade Organization, Cambodia enacted the Law on Patents, Utility Models and Industrial Designs” in 2003 followed by an implementing regulation Prakas (Declaration) on the Procedure for the Grant of Patent and Utility Model Certificates in 2007. Despite the local laws and regulations in place for patent registration, the number of granted patent in Cambodia is still relatively small due to the prolonged approval process timeline and deficiency of infrastructure and human resource to conduct substantive examination of patent application. To date there are only 22 patent grants, only one of which is a local patent.

With the strive to develop a stronger patent system and encourage more patent filings in Cambodia, Cambodian Ministry of Industry and Handicrafts (MIH), in charge of patent filings in Cambodia, enters to international/bilateral agreements with other countries to accelerate and/or validate patent granted in those countries in Cambodia. We will discuss these agreements in more details below.

  1. Memorandum of Understanding (MoU) between the Intellectual Property Office of Singapore (IPOS) and MIH on Re-registration of Singapore Patents and Designs

The MoU was signed on 20 January 2015.  Patents (and industrial designs) filed on or after 11 February 2003 in either office can be re-registered in the other office upon request. The MoU is followed by Prakas (Declaration) on Implementation of the MoU issued on 25 July 2016, setting out requirements and fees for filing re-registration of Singapore patent in Cambodia under the terms of the MoU. After the signing of the MoU, 19 Singaporean patents have been granted in Cambodia. According to the implementing regulation, to re-register a Singaporean patent in Cambodia, the following documents must be submitted:

  • A request form in Khmer and English (form provided by the MIH);
  • Applicant’s information in English and Khmer;
  • A certified copy of the Certificate of Grant of Singapore Patent;
  • A certified copy of final specifications in English and Khmer;
  • A copy of abstract in English and Khmer; and
  • Original notarized Power Attorney and the translation in Khmer.

 

  1. Joint Statement of Intent on Cooperation for Facilitating Patent Grant (CPG) between Japan and Cambodia

This Statement of Intent was signed on 4 May 2016 between Japan Patent Office (JPO) and MIH allowing applicants to request the acceleration of patent applications filed in Cambodia without having to conduct separate examination if there is a corresponding patent application granted in Japan. This agreement is supplemented by Procedural Guidelines for Requesting Accelerated Patent Decisions that details the requirements and related documents for making acceleration requests. To be eligible under CPG, the following documents must be submitted to MIH:

  • A request form in Khmer and English (form provided by the MIH);
  • A copy of the patent gazette in the corresponding JPO patent application and its certification issued by the JPO under article 186 of the Japan Patent Act;
  • A translation of claims and specification described in the patent gazette in English and Khmer; and
  • A claims Correspondence Table.

To date, 11 Cambodian patent applications corresponding to Japan patents have been granted by MIH under the terms of the CPG.

  1. Patent Cooperation Treaty (PCT)

Cambodia acceded to PCT on 8 September 2016, which entered into force with respect to Cambodia on 8 December 2016.  Under the PCT, any international patent applications filed on or after 8 December 2016 can be designated to Cambodia within a timeframe of 30 months from the initial priority date of the international application. To obtain Cambodian patent under the terms of PCT, the applicants must furnish:

  • A request form in Khmer and English (form provided by the MIH);
  • A copy of PCT specification and the translation in Khmer;
  • Original notarized Power Attorney and the translation in Khmer; and
  • Necessary fee.

 

  1. Agreement on the Validation of European Patents

This Agreement was signed on 23 January 2017 to allow the validation of European patents in Cambodia that entered into force on 1 March 2018. The agreement is implemented by a Prakas (Declaration) No 282 MIH/2017 on the Regulation and Procedures for the Validation of European Patents in Cambodia. It is important to note that only applications that have been filed on or after 1 March 2018 are possible for the validation. To validate European patents in Cambodia, the following steps are to be fulfilled:

  • European patent application to be filed directly either to the European Patent Office or through European PCT application;
  • The validation fee of EURO 180 to be paid within six months from the date of the publication of the European search report or within the period for performing the acts required for an international application’s entry into the European phase; and
  • If the applications to EPO or through PCT as mentioned above are granted, within three months of the granting, a request for validating those European patents in Cambodia must be submitted to MIH.

The request to MIH shall be submitted along with:

  • A POA,
  • A copy of the European patent,
  • An English and Khmer translation of the patent’s title, claims and abstract,
  • A publication fee of US$30 and
  • A standard certificate issuance fee of US$150.

 

  1. Memorandum of Understanding (MoU) on Intellectual Property Cooperation between the State Intellectual property Office of the People’s Republic of China (SIPO) and MIH

Signed on 21 September 2017, this MoU serves as a gateway to allow China’s valid invention patents to get registered and take effect in Cambodia through direct formality registration. In a retroactive move, any Chinese patent granted by SIPO filed later than 22 January 2003 are eligible to take effect in Cambodia. According to the MIH, the MoU is expected to come into effect in April 2018.

To validate a Chinese patent, the applicants must submit the following documents to be examined and approved by MIH as follows:

  • An application in Khmer and English for registration;
  • A copy of patent specification in English and Khmer;
  • Patent register issued by SIPO; and
  • Other relevant patent documents n Khmer and English.

Upon the grant by MIH, the patent will be treated in the same way as those granted in China including filing date and expiry date as in China. However, this MoU does not cover utility models and industrial designs.

Following the MoU, a total of 20 re-registration patent certificates were handed over to three distinguished companies namely Nutech Limited, ZTE Corporation and HUAWEI Technology Co., Ltd, in which ten patents were filed by Nutech Limited, eight by ZTE Corporation and two by HUAWEI Technology Co., Ltd. on 29 March 2018 at the MIH.

It is also worthy to note that SIPO now is the fourth International Search Authority (ISA) for Cambodia in addition to other three existing ISA offices including European Patent Office, Japan Patent Office and Intellectual property Office of Singapore. 

Of note, the pharmaceutical exception still applies in Cambodia.  In particular, the above patent validation/recognition mechanisms do not apply to pharmaceutical patent until the end of 2033 under the WTO agreement.

This article was first published in The Patent Lawyer in the May/June 2018 edition.