Draft Patent law in Myanmar

Foreign investment in Myanmar has increased rapidly over the last year and, despite some continuing difficulties, is likely to continue to do so. The establishment of a sound IP system will, however, be crucial to ongoing development. The government is currently in the process of introducing an international level of IP protection  - the publication of a draft Patent Law in July 2015 is part of the process.  The draft law aims to protect technical innovation and promote both foreign investment and local industrial development. 

This article summarises both the current system and the provisions of the proposed new law.  It also highlights some matters to which rights owners should be turning their attention before entering the Myanmar market

The current system
 
Currently, there is no patent law in Myanmar.  Following the Military Government’s repeal of the Patents and Designs Act 1945 in 1992, an invention may be registered under section 18(f) of the Registration Act and a Declaration of Ownership filed with the Myanmar Registry Office of Deeds and Assurances. There is no formality examination, opposition or publication in a patent gazette; applications are simply checked to see that they comply with the requirements of the Registration Act.   If the invention is misappropriated by a third party, an action may, in certain circumstances, be available under the Penal Code.  Perhaps not surprisingly, no such action has been taken to date.  There are also provisions for the registration of technology transfer agreements under the Science and Technology Development Law.  These agreements will not be enforceable unless they are so registered, per the table below.

Existing Laws for IP Enforcement
 

Type of IP	Substantive Law	Related Laws
Patent	None	Registration Act (1908) 1. Registrable under section 18(f) of the law
Patent	None	Specific Relief Act (1877) 1. Temporary/Perpetual Injunction (Section 52 of the law) 2. Declaratory Decree for ownership right (Section 42 of the law)
Patent	None	Penal Code 1. Criminal misappropriation of property and a term of imprisonment may extend to two years or with fine or with both. (Section 403 of the law)
Patent	None	Science and Technology Development Law (1994) 1. Technology Transfer shall be registered and if not, there shall be no right of instituting a suit based on a contract of Technology Transfer. (Section 15 of the law)

The draft Patent Law 
 
Myanmar is a member of both the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO) and a signatory to the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.  It is required to have TRIPS compliant IP legislation in place by 2021.  The draft Patent Law is a step in that process.   The law is likely to be enacted no later than June next year, but when it will come into force is less certain: section 1(b) of the draft provides that the law will come into force on a date to be prescribed in a President’s Notification. 

The 21 Chapters of the draft include the following provisions.
Pursuant to Chapter (5), Section 7, to be patentable an invention must:
(a) be novel;
(b) involve an Inventive step; and
(c) be industrially useful.
‘Novelty’ is explained as follows:
“The invention shall be considered to be new if it does not form part of the state of the art.  The state of the art means the technology which was available or published to Public by means of printing, oral description, by use or in any other form at any place before the date of filing of the application or the date of priority claims if such claim has been applied.”
Section 8 excludes the following from patentability:

1. Discovery, Science Theory, Mathematical method;
2. Schemes, rules and methods for performing mental acts, playing games or doing business;
3. Computer Program (we suggested to protect computer program if it is acceptable as a Patent.);
4. Plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;
5. Living species, plants natural organs of living things or  living things, small living things or abstract from those things;
6. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods;
7. Inventions related with things including natural things, new usage and new form which was available in public or chemical products which have been specified in rules and regulations;
8. Restricted by Myanmar government for environmental protection;

Section 31 provides that if an application in respect of the same invention has been filed in any member country of the Paris Convention or WTO within 12 months of filing in Myanmar, priority may be claimed on the basis of the earlier application. The applicant must supply a certified copy of the earlier application within three months or, pursuant to section 23(a), a further two month period. 
 
Recommendations

1. Although there has to date been little point registering an invention under the Registration Act, it may now be advisable to consider doing so.  Although the draft does not currently provide for priority on the basis of such a registration, this has been the subject of discussion and it is still possible that such a provision will be included.  In any event, if an application has not been filed in a Paris Convention or WTO member country, consideration should be given to such a filing as the draft provides that these can form the basis of a priority claim.
2. Both trade mark and copyright laws are currently more developed than patent laws in Myanmar.  Wherever possible, therefore, invention owners should be looking to take advantage of these laws wherever possible.  As Myanmar is not a member of the Berne Convention, however, copyright protection is available only to the works of citizens of Myanmar or works that have been first published in Myanmar. However that may soon change and software may thus be protected uner copyright in the near future.
3. IP owners should, where appropriate, also be looking to register their rights with Customs.  The system will change to an online system with the introduction of the  ‘Myanmar Automated Customs Clearance System’ (MACCS) in November 2016. The online system will cooperate with the Ministry of Commerce and the FDA (Food and Drug Association) of Myanmar to tackle the importation and exportation of fake and counterfeit goods and probably also parallel imports.