Patent Examination, Opposition, and Registration in Myanmar – What You Need to Know
Patents hold a pivotal significance in safeguarding innovation, making a profound impact on shielding intellectual property. Acquiring insight into the patent procedure is of utmost importance for inventors and enterprises aiming to preserve their inventive creations. Myanmar’s patent journey encompasses various phases, starting from preliminary assessment to formal registration, encompassing facets like objection, reinstatement of rights, and global implications.
1. Responsibilities of the Examiner
An Examiner shall perform the following actions in relation to patent applications: (i) Classify the invention in accordance with international classifications; (ii) Examine whether the invention adheres to the provisions outlined in sections 19 and 20, and (iii) Forward applications that adhere to stipulations, along with the Examiner’s comments, to the Registrar.
With the Registrar’s consent, the Examiner shall notify the applicant if their application does not meet the stipulated requirements. The applicant must amend the application within 60 days from receiving the notice. Failure to do so will result in application withdrawal.
After receiving amendments, the Examiner shall reexamine and submit them, along with comments, to the Registrar.
2. Restoration of Patent Rights
A patent applicant or patent owner may reapply for patent rights under these conditions: (i) Submission of a request within 60 days of withdrawal due to non-compliance within the stipulated period; (ii) Attachment of explanations, information, or requirements related to the non-compliance; (iii) Presentation of sufficient reasons for the failure to comply within the stipulated period; and (iv) Payment of the required fee;
The Registrar shall suspend regranting rights if: (i) An appeal application is submitted and/or (ii) A legal dispute is initiated between the involved parties.
3. Examination and Public Announcement
The Registrar must examine the Examiner’s comments and make a public announcement, in accordance with regulations, regarding applications that adhere to stipulations. This announcement shall occur at the end of 18 months from the application date or, if requested, on an earlier date. This facilitates public awareness and the opportunity for objections.
4. Opposition to Patent Application
Individuals desiring to oppose a patent application may submit an objection form, accompanied by the required fee, to the Registrar within 90 days of the announcement as per section 32. Objections can be raised based on reasons outlined in sections 13 and 14 of Myanmar Patent Law.
Notice to Applicant: Upon receiving an objection form, the Registrar shall notify the applicant, providing them an opportunity to counter the opposition within the stipulated timeframe.
Registrar’s Decision on Opposition: After reviewing the opposition and the Examiner’s findings, the Registrar may instruct continuation, amendment, or revocation of the patent application. The Registrar shall communicate this decision to both the opposer and the applicant and make a prescribed announcement.
5. Detailed Examination by Examiner
Regarding the detailed examination of a patent, the Examiner shall assess conformity with criteria in sections 13, 14, 22, 23, and 27 of Myanmar Patent Law. The Examiner shall then submit the assessment, along with comments, to the Registrar.
6. Registrar’s Decision on Patent Application
The Registrar may either grant or reject the patent application after reviewing the Examiner’s comments.
The Registrar shall record the grant or rejection in registration records, inform the applicant, and make a prescribed public announcement to notify the public.
If granted, the Registrar shall issue a patent certificate to the applicant.
7. Examination of Foreign Patent Application
The Registrar may request certain documents for examination of a foreign patent application submitted in Myanmar and elsewhere, including findings from foreign intellectual property offices and copies of relevant decisions.
8. External Examination
With the Agency’s approval, the Registrar can seek examination assistance from government bodies, international organizations, or foreign patent offices during the patent application process.
9. Patentee’s Rights
The patentee can request a certified copy of the patent certificate upon loss or damage.
Amendments to correct errors, nationality, or addresses can be requested by the patentee, accompanied by the necessary fee.
10. Registrar’s Actions
Upon examining the application under subsection (a) of section 40, the Registrar shall issue a certified copy of the patent certificate.
The Registrar may permit amendments upon examining the application under subsection (b) of section 40.
11. Confidentiality for National Security
If the Registrar deems aspects of a patent application harmful to national security or public safety, with the Agency’s approval, the application can be kept confidential until clearance from the relevant ministry.
The relevant ministry may, with suitable compensation, examine, keep information confidential, or transfer economic rights.
Patent application containing sensitive information may not be filed in foreign countries without Registrar’s approval.
Compensation disputes may be settled through an intellectual property rights court.
Upon clearance from the relevant ministry, confidentiality may be withdrawn.
By Nguyen Vu QUAN
Partner & IP Attorney
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