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Guidelines to Re-register a Singapore Patent in Laos

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On 27 November 2019, a Memorandum of Cooperation (MOC) was signed between the Intellectual Property Office of Singapore (IPOS) and the Department of Intellectual Property (DIP), the Ministry of Science and Technology of Laos. The MOC has allowed Singapore patents to be re-registered in Laos in an expeditious way.

To assist all patent rights holders concerned, we provide below guidelines in relation to re-registration of their Singapore patents in Laos:

1. Form procedure for registration of a Lao patent based on a granted Singapore patent

All Singapore patents-in-force with a filing date on or after 17 January 2002 qualify for registration. The steps for registering a Lao patent based on a granted Singapore patent include:

(i) Applicant to complete request form 

 The applicant shall complete the “Request for Registration of Singapore Patent” form (as prescribed by Laos legislation). 

(ii) Applicant to submit request form to DIP 

(a) The applicant shall submit the completed request form together with: 

a certified copy of the Singapore patent;

a certified copy of the final specification of the Singapore patent;

a copy of the abstract of the Singapore patent;

a certified translation of the final specification and the abstract of the Singapore patent (which can be submitted within 6 months of the submission date of the request form); and

Power of Attorney in Laos (if an agent is appointed). 

(b) Applicant shall pay any accompanying fees as prescribed by DIP. 

(iii) DIP to check documents

DIP shall check whether the request form and required documents are in order (no missing fields, missing pages, etc.), and issue deficiencies as necessary. 

Once the documents are in order, DIP shall notify IPOS of the registration request. 

(iv) DIP to issue certificate of grant 

(a) If all the documents are in order, DIP will issue a certificate of grant based on the Singapore patent, and publish the reference of the grant of the patent, as required under Article 44 of Laos’ Law on Intellectual Property. 

(b) A Laos patent granted based on the registration of a Singapore patent shall be treated as if it were granted under Article 44 of Laos’ Law on Intellectual Property

(v) Renewals

Renewal fees shall be payable in accordance with Laos’ renewal fee structure. Renewal fees shall be paid starting from the next renewal period, i.e. backdated renewal fees are not chargeable. 

2. Procedure to request submission of search and examination reports issued by IPOS to DIP for the grant of patents to Laos related patent applications

DIP will be able to recognise and issue a notice of eligibility of grant based on the examination results issued by IPOS for “related patent applications”. For the purposes of this cooperation, “related patent applications” refer to those linked by priority under the Paris Convention, or those linked by the same PCT application. A list of examples of related applications is provided in Section (ii) below. 

(i) Procedure to despatch substantive examination (S&E) reports to DIP 

(a) SIPOS to set up IP2SG account for DIP

To ensure the confidentiality of documents, all documents will be dispatched to DIP (and vice versa) through a specially created IP2SG account. 

(b) Applicant to request dispatch of S&E report to DIP

• The applicant shall submit a request for IPOS to dispatch a copy of the final search and examination results and the final specification for a related Singapore patent application to DIP. 

• The applicant shall also submit a claim correspondence table setting out how each claim in the Laos application is related to at least one claim in the Singapore application, and request for a copy of the claim correspondence table to be dispatched to DIP. 

 (c) IPOS Registry to process request

• IPOS Registry will check that the required details are in the request. 

• IPOS will dispatch, to DIP through IP2SG, a cover letter accompanied by the applicant’s request letter, the final search and examination results, the final specification and the claim correspondence table. 

(d) DIP to process request and issue notice of eligibility for grant 

• DIP will check that the claim correspondence table and other documents are in order. If the table is not in order, DIP will issue a deficiency to the applicant directly. If the other documents are not in order, DIP will send a request through IP2SG for IPOS to correct the deficiencies. 

• If the request is in order, DIP will issue a notice of eligibility for grant a patent to the related Laos patent application in a manner prescribed by its legislation. 

(ii) Examples of related patent applications 

(a) Scenario (1): The DIP application claims priority under Article 29 of the Law on Intellectual Property from the IPOS application being relied on. 

b) Scenario (2): The DIP application is a divisional application of the DIP application referred to in (1) above, and said divisional application validly claims priority under Article 29 of the Law on Intellectual Property from the IPOS application being relied on. 

c) Scenario (3): The DIP application validly claims priority under Article 29 of the Law on Intellectual Property from the earlier IPOS application (“IPOS application 1”), and the IPOS application being relied on for the request (“IPOS application 2”) also validly claims domestic priority from IPOS application 1. d) Scenario (4): The DIP application is a divisional application of the DIP application referred to in (3) above, and said divisional application validly claims priority under Article 29 of the Law on Intellectual Property from the earlier IPOS application (“IPOS application 1”), and the IPOS application being relied on (“IPOS application 2) also validly claims domestic priority from IPOS application 1.e) Scenario (5): The IPOS application is a national phase entry of a PCT application, and the DIP application validly claims priority under Article 29 of the Law on Intellectual Property from the PCT application. 

f) Scenario (6): There is a first application filed in an office other than IPOS or DIP. The IPOS application validly claims priority under section 17 of the Singapore Patents Act (Cap. 221) from the first application. The DIP application also validly claims priority under Article 29 of the Law on Intellectual Property from the same first application.g) Scenario (7): There are two PCT applications, the second application validly claiming priority from the first application. The IPOS application is a national phase entry of the second PCT application, and validly claims priority under section 17 and section 87 of the Singapore Patents Act (Cap. 221) from the first PCT application. The DIP application also validly claims priority under Article 29 of the Law on Intellectual Property from the first PCT application. h) Scenario (8): The IPOS application is a national phase entry of a PCT application, and the IPOS application validly claims priority under section 17 and section 87 of the Singapore Patents Act (Cap. 221) from an application filed in another office. The DIP application also validly claims priority under Article 29 of the Law on Intellectual Property from the same application filed in another office. 

3. Procedure for receiving S&E requests from DIP

The model below is based on IPOS providing S&E services for the DIP as an outsourcing office. All communication and dispatch of documents will be done through IP2SG. The procedure for receiving S&E requests is outlined as follows: 

(i) IPOS to set up IP2SG account for DIP 

To ensure the confidentiality of documents, all documents will be dispatched to DIP (and vice versa) through a specially created IP2SG account. 

(ii) Applicant to submit S&E request to DIP

Applicant shall complete the search, S&E, or examination request form and submit the completed request form to DIP, and pay the accompanying fee for the request to IPOS. The applicant would also be required to submit the details of the fee payment for the request to DIP. 

(iii) DIP to submit request to IPOS 

(a) DIP shall ensure that the submitted documents are in order (e.g. request form is completed, there are no missing pages, and verification of English translation is submitted) and comply with Paragraph 2 of Article 21 of Lao IP Law. DIP shall then submit the completed request form to IPOS together with the English specification of the Laos application to be examined, comprising the abstract, the description with claims, and the drawings (if any). DIP shall also submit any amendments made to the specifications, and for divisional applications, the specifications of the parent application. The request will be sent through the ad hoc correspondence function in IP2SG.

(b) If the request is for examination only, the applicant shall also submit the search report issued by IPOS for the same application. 

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