Friday, June 28, 2013

Patent pendency in emerging South East Asia

Patent pendency can be a concern when delays become lengthy. Applicants in many fields hope never to have to enforce or litigate their patents so may not worry too much in smaller markets about pendency. But as more competition appears, the ASEAN emerging markets become more important so an ever pending application becomes more worrying. This region is now in the position of needing faster grants. Are the systems sometimes too slow? Or are applicants themselves to blame?

Thailand famous for having delays of well over 10 years especially for pharma and complex chemical patents. New patent examination guidelines are coming in to speed matters up. The issue has been raised in trade talks with the EU as it has been suggested that there is a political reason for delays namely it enables generics to supply the market.

The Philippines is faster at 3 to 5 years. It used to be slower but some recent applications have been granted in 3 years. Medical sciences/biotechnology patents tend to take longer to issue than others.

In Indonesia patent applications filed through PCT take less than 5 years from the filing date. Most office actions can be overcome by bringing the Indonesian application into conformity with an overseas granted patent. Convention patents usually take longer i.e. over 5 years, since the examiners need to conduct an independent examination. As elsewhere, examination of pharma/chemical/biotech inventions can take the longest.

In Vietnam pendency is fast at 2-3 years. Convention applications may take longer as publication is delayed until the 19th month from priority date, whereas PCT national phase applications are published automatically within 2 months. Similarly, pharmaceutical and biotech patents take longer.

In Cambodia and Laos grant takes 4-6 years but as there is no substantive examination in both these countries, the applicant must provide the IPOs with successful examination reports for equivalent applications filed in other countries. So the patent office has less control over timing.

One critical issue to consider is the statutory time for filing a request for examination. In Thailand for example you are entitled to file a request within 5 years after publication date, while in Malaysia it is 2 years only. Some patentees wait longer before they file for examination, so they contribute to the high pendency rate. Therefore it is not always the patent offices’ fault.

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