By Dr. PHIN Sovath, Partner, Bun & Associates
The law on the Patents, Utility Model Certificates and Industrial Designs (Patent Law) of Cambodia was enacted in January 2003. More than a decade later, the patent granting system in Cambodia still faces both technical and human resource challenges. Consequently, there are not so many granted patents with the very first Cambodian patent granted in 2015.
From 2015, the Ministry of Industry and Handicraft (MIH) has entered into numerous memorandums of understanding (MOU) and agreements aiming at facilitating and accelerating the patent granting process in Cambodia. At the present, besides traditional filing before the national patent office, the following routes are now available for patent registration in Cambodia:
1. Registration and Re-registration of Singapore Patent in Cambodia
Following the Memorandum of Understanding on the Cooperation in Industrial Property signed on 20 January 2015 between the MIH and the Intellectual Property Office of Singapore (IPOS), the Registration and Re-registration of Singapore patent are now possible in Cambodia.
Under the framework of re-registration, the right holder of patent duly registered with the IPOS is able to obtain his patent registration as such and its protection in Cambodia within a much shorter timeframe. All Singapore patents may be accepted for re-registration in Cambodia if the following requirements are met:
- Having a filing date after 11 February 2003;
- Duly registered with the IPOS and are in force at the time of filing request for re-registration at the MIH; and
- Be patentable in Cambodia, as provided under articles 4 and 9 of the Patent Law of Cambodia.
2. Cooperation for Facilitating Patent Grant with Japan
The Cooperation for facilitating Patent Grant (CPG) between the MIH and the Japan Patent Office (JPO) was introduced through a Joint Statement of Intent on Cooperation for facilitating Patent Grant of Cambodia-related patent application signed by the MIH of Cambodia and the JPO dated 4th May 2016. The CPG came into force on 1st July 2016. To implement the CPG procedure, the MIH issued a Prakas on Acceleration of Patent Grant under Cooperation for facilitating Patent Grant of Cambodia-related Patent Application with the Japan Patent Office, dated 25 July 2016.
The CPG is an accelerated patent granting procedure by which the MIH uses the examination results produced by the JPO to assess the patentability of the invention claimed in Cambodia. Note that the CPG request and the MIH’s patent application are separated. To benefit from the accelerated granting procedure, the applicant who has duly filed Cambodian patent application with the MIH shall submit a Request form for CPG procedure. The acceptance of the request is subject to the following requirements:
- the Japanese and the Cambodian patent applications shall have the same earliest filing date;
- the corresponding Japanese patent application has been granted by the JPO;
- one or more claims in the patent application filed with the MIH shall be the same as the claim(s) in the corresponding JPO patent application.
Any person of any nationality who possesses a Japanese patent granted by the JPO and who has duly filed the corresponding patent application with the MIH can make a request for accelerated granting procedure provided under CPG.
3. Patent Cooperation Treaty
On 8 September 2016, Cambodia became the 151st Member State of the Patent Cooperation Treaty (PCT). From 8 December 2016, the PCT entered into force in Cambodia and the designation of Cambodia is automatically included in the international application. Under the PCT framework, an applicant is able to seek protection for his or her invention in 152 countries by filing a single international application.
At the present, the Department of Industrial Property (DIP) of the MIH is the Receiving Office for international application for patent registration being filed by a national or resident of Cambodia. The DIP is the national office for international application for patent registration with designation of Cambodia.
4. European Patent Validation
On 23 January 2017, the MIH and the European Patent Organization (EPO) signed an Agreement on Validation of European Patents (the Validation Agreement). Cambodia is now the first Asian country to recognize the validity of the patents granted by the EPO on its territory.
Following the adoption of legal provisions on the implementation of the validation system in Cambodian law, the Agreement would enter into force in Cambodia (tentatively in July 2017). By then, the right holder of European patent will be able to obtain the protection of his patent in Cambodia through a simplified and accelerated procedure, i.e. a request for patent validation.
Note that pharmaceutical patents will be excluded from the application of the Agreement until Cambodia ceases to make use of the WTO transitional period for protection of pharmaceutical patents for the LDCs (i.e. 1st January 2033). Note also that the amount of the validation fee and the proportion thereof to be kept by the EPO will be laid down by agreement between the EPO and the MIH.
Dr. PHIN Sovath, BBA, LL.D., FSIArb
Sovath leads intellectual property and co-leads corporate and dispute resolution practice groups. He has extensive legal background and a strong experience in market entry and investment, business establishment, corporate governance and compliance, corporate restructuring, and mergers and acquisitions. He has particular expertise practicing in intellectual property and provides advice and support for the protection, commercialization, and enforcement of intellectual property rights to a wide range of right holders in various sectors. He has recently acted as a Short-Term Consultant to provide Technical Assistance to the Ministry of Commerce, Department of Intellectual Property, in a Trademark Data Validation Project, which is involved in the screening, verification, reporting and validation of 55,000 registered marks and 45,000 post activities. He has taught various business-law related subjects, including corporate and intellectual property law within and outside Cambodia, and published articles on Cambodian intellectual property law. Sovath acted as a National Legal Adviser for international organizations by assisting the Ministry of Commerce of Cambodia in drafting competition law and the law on food safety and the Ministry of Health of Cambodia in drafting food safety regulations and the law concerning public health and intellectual property.
Sovath is admitted to the Bar Association of the Kingdom of Cambodia. He is one of the first selected commercial arbitrators in Cambodia and has become a member of the National Commercial Arbitration Centre (NCAC) and a Fellow of the Singapore Institute of Arbitration (SIArb). He recently assisted the team that drafted the Internal Rules and Arbitration Rules of the NCAC and is currently the Vice Chairman of the Executive Board of the NCAC. Sovath is a qualified Trademark Agent in Cambodia, registered with the Ministry of Commerce. Sovath holds a Doctor of Laws (Comparative Law) from Nagoya University Graduate School of Law, Japan. He is influent in Khmer and English.