Patent Protection in Laos
I. LEGAL BASIS
1. Law No. 01/NA of December 20, 2011, on Intellectual Property (as amended) (2011)
2. Penal Law (2005)
3. Customs Law (2005)
4. Decree No. 01/PM of Prime Minister on Patent, Petty Patent and Industrial Designs (2002)
5. Regulation No. 22/STEA-PMO on the Implementation of Decree on Patent, Petty Patent and Industrial Designs (2003)
II. PATENT RELATED MATTERS IN LAOS
1. Definition of Patents and Petty Patents
Patent means the official certificate issued by the state organization to protect inventions that they are new, involve an inventive step and are capable of industrial application;
Invention means the technical solution to create new product or process of production to resolve a specific problem;
Petty patent means the official certificate issued by the state organization to protect utility innovation;
Utility innovation means a new innovative work derived through technical improvements, which involve simpler steps than with inventions;
Patents are the set of exclusive rights granted to inventors or their assignees to exploit an invention for a limited period of time.
Patenting an invention publicly discloses information concerning it but also gives the patent holder the right to protect it. The IP Law defines patents as the “official certificate from the state organization issued to protect inventions that are new, involve an inventive step, and are capable of industrial application” (Article 3.4 of the IP Law).
An invention is considered new if it has not existed and has not been disclosed to the public by publication or by use (or by any other means) in Laos or any other country prior to the filing date of the patent application, or prior to the priority date (if priority is claimed). An invention has an inventive step when the invention is not obvious to a person having ordinary knowledge in the invention’s field of technology. An invention is considered industrially applicable if it has use in an industry.
The IP Law excludes certain types of inventions from patent protection, including:
- Discoveries, scientific theories, and mathematical methods.
- Schemes, rules, or methods for doing business, performing mental acts or playing games.
- Methods for the treatment of the human or animal body.
- Inventions contrary to public order or national cultural morality.
Petty patents are the official certificates issued to protect utility innovations. The IP Law defines utility innovations as “new innovative work[s] derived through technical improvements, which involve simpler [inventive] steps than with inventions” (Article 3.7 of the IP Law). In order to receive a petty patent, the utility innovation must be new in the sense that it has not been previously known or used in Laos within one year prior to the date of the application or the priority date (if priority is claimed).
The requirement as to the inventive step means that the utility innovation must involve a new technical improvement, but the level of the inventive step may be simpler than for patents. Finally, the innovative work must be industrially applicable, having the same definition as for patents set out above.
A patent is a bundle of IP protection rights held by an inventor or their assignees with respect to an invention in which information concerning the invention is protected from being exploited by third parties.
Under the Law a patent “means the official certificate issued by the state organization to protect inventions.” An application to obtain a patent with respect to an invention in Lao PDR must demonstrate that the respective invention satisfies the following requirements:
- The invention must be new. the invention has not existed, not been disclosed to the public by publication or use or in any other means in the Lao PDR or any other place prior to the date on which the respective application for registration is made;
- The invention involves an inventive step. The invention must not be obvious to a person having ordinary knowledge in the field or industry in which the invention seeks to be used or applied; and,
- The invention is industrially applicable. The invention must be able to be “applied usefully in industry, handicraft agriculture, fishery, services, etc”.
Petty patent protection may be offered to innovations which do not reach the threshold required for patent protection. Petty patent protection may be applied for for a utility innovation which meets the following requirements:
- It is new in the sense that it has not previously been know or used within one year prior to the date of application within Lao PDR;
- It involves a new technical improvement that involves an inventive step which may be a lesser step than that required for a patent; and,
- It is industrially applicable, meaning that it can be “applied usefully in industry, handicraft, agriculture, fishery, services, etc”.
Certain inventions may be ineligible for patent or petty patent protection for the following reasons:
- They are discoveries of existing things including living organisms or parts of living organisms that exist in nature; and
- They are scientific theories or principles, mathematical algorithms, or sets of rules for doing business or playing games, noting that such things may form part of eligible inventions.
Likewise, diagnostic, therapeutic and surgical methods of treatment of humans and animals, and essentially biological processes for the production of plants or animals are also ineligible for patent protection. Noting, again, that such elements may constitute part of an eligible invention.
2. Basic information on Patents and Petty Patents in Laos:
Laos applies the first-to-file principle, meaning that priority is determined by whoever files the patent or petty patent application first, or if priority is claimed, the earliest priority date. An application may contain a declaration claiming priority based on one or more earlier national, regional, or international applications filed by the applicant, either in Laos or in another country, which is a party to the Paris Convention (or another international treaty to which Laos is a signatory). Therefore, applications from convention countries will be granted the same priority date in Laos. In the case of such international applications, the relevant Lao authority only conducts a formal examination of the patent application.
While the authority does not conduct a substantive examination, it recognises and accepts search and examination reports from other IP offices around the world.
The time from the filing date to the granting date is approximately 4 to 5 years (as for patents) and two to three years (as for petty patents). Owners of petty patents, like the ones of ordinary patents, will have exclusive rights to exploit their inventions and grant licenses to others.
The applicant may not apply for both a patent and a petty patent for the same invention. However, in either case, the applicant is allowed to change the type of right applied for, from petty patent to patent and vice versa. Be mindful that this must be done before registering the invention and the issuance of the petty patent or before publication of the patent application.
A patent lasts for 20 years after the filing date of the application. A petty patent lasts 10 years from the filing date of the application. In order to maintain a patent or a petty patent registration, an annual fee, pursuant to the IP Law, must be paid in advance by the rights-holder.
Payment of the annuity fee can be made yearly at the anniversary date of the application or paid on an accumulated basis four times, timed as follows:
- First annuity payment (1st year to 4th year)
- Second annuity payment (5th year to 9th year)
- Third annuity payment (10th year to 14th year)
- Fourth annuity payment (15th to 20th year)
3. Application process in Laos
Domestic or foreign individuals, legal entities and organizations may apply for a patent, petty patent, or registration of their industrial property with the Ministry of Technology and Science or with an international intellectual property registration organization to which the Lao PDR is a party.
Any individual, legal entity or organization residing in a foreign country, who wishes to apply for the registration of an industrial property, shall appoint an authorized representative in the Lao PDR.
The applicant without business premises or residence in the Lao PDR shall appoint an authorized representative in the Lao PDR to carry out transactions related to intellectual property in the Lao PDR.
Patents and petty patents are registered with MOST.
Applications for Patent or Petty Patent
An application for a patent or petty patent shall include the following documents:
- a request for a patent or petty patent;
- if the applicant is represented, a power of attorney and the name and address of the applicant’s representative in the Lao PDR;
- description that discloses the invention or utility innovation in such clear and complete terms as to enable a person of ordinary skill in the relevant field of technology to understand and exploit the invention or utility innovation; the description shall disclose the best mode for making or using the invention or utility innovation;
- claims that clearly specify the subject matter to be protected and are supported by the description;
- drawings (if needed to understand the invention);
- receipt for payment of fees.
- The application may include a claim for priority as provided in Article 29 of this Law (if applicable).
An application for a patent or petty patent shall relate to one invention or utility innovation only or a group of related inventions or utility innovations so linked as to form a single inventive concept as per the international classifications.
The Ministry of Science and Technology shall accept the application and assign a filing date to an application that contains, at a minimum:
- the name, address and nationality of the applicant;
- the name of inventor of the invention or utility innovation;
- description of the invention or utility innovation;
- filing fee as per regulations.
If any individual, legal entity or organization wishes to obtain a patent or petty patent, shall satisfy all specified requirements within the times set by the Ministry of Science and Technology.
An application for a patent, petty patent, or industrial design (industrial designs are discussed in the following section) may also contain a claim for priority. If priority is claimed, the applicant must submit a copy of the application on which the priority claim is based, certified as correct by the authority that received the application and showing the filing date. Such documents do not require any authentication, and can be filed, without fee, at any time within three months of the filing of the application in Laos. Any person, legal entity, or organisation can apply for a patent or petty patent. A person, legal entity, or organisation residing in a foreign country, however, must be represented by an authorised representative in Laos (i.e., an IP agent). The application can be filed in either English or Lao. However, application documents submitted in English must be translated into Lao within 90 days from the application filing date. The translation must be certified to be a correct translation.
Upon receiving an application for a patent, petty patent, or industrial design, MOST will conduct a formal examination to ensure that the application is complete and meets the requirements. If the application is incomplete, MOST will notify the applicant, who will then have 60 days from the date of the notification to complete the application.
After the formality examination, MOST will conduct a substantive examination of the application to determine whether it meets the requirements for patentability or for obtaining a patent or petty patent. The substantive examination for patents and petty patents is based on a search of existing technical knowledge. In the case where the application had previously been subject to a search or examination by another authority (in another country), the applicant can submit a copy of that report and request that it be accepted in lieu of conducting a search in Laos. If there are no previous examination reports (or the applicant is otherwise unable to provide such report), the applicant must request MOST to examine the application as to its substance. Notably, MOST is required by law to undertake this examination within 32 months for an invention (patent) and 12 months for a utility innovation (petty patent) from the filing date of the application or the priority date (if priority is claimed). All of MOST’s expenses to examine the invention or utility innovation are charged to the applicant. After consideration and examination of the registration for a patent, petty patent, or industrial design application, if it is considered to meet the requirements provided by the IP Law, MOST will issue a patent, petty patent, or industrial design certificate.
An application for a patent is subject to a substantive examination to determine whether it meets the requirements for patentability or for obtaining a petty patent as described in this Law. The substantive examination shall be based on a search of existing technical knowledge. Where the application has previously been subject to a search or examination by another authority the applicant may submit a copy of the report of such office and request that it be accepted in lieu of conducting a search in the Lao PDR.
If the applicant is unable to provide substantive examination reports for the invention or utility innovation which is the subject of the application, the applicant may submit a request to the Ministry of Science and Technology to examine as to substance the application. The Ministry of Science and Technology will undertake the examination within the following time frames: 32 months for an invention and 12 months for a utility innovation from the date of filing the application or the priority date. However, all expenses incurred in the request for the examination of the invention or utility innovation registration application shall be the burden of the requestor.
The time from filing a registration to the granting of a patent or petty patent could be relatively long. Therefore, you should plan in advance to register your patents or petty patents in Laos. After having conducted a formal examination of the application, the authorities will proceed with the substantive examination, based on a search of existing technical knowledge. If the application has previously been subject to a search or examination by another authority (in another country), a copy of such search or examination may be submitted by the applicant and requested to be accepted in lieu of conducting a search in Lao. If no such previous search/examination has been conducted (or is submitted), the Lao authorities will undertake an examination within 32 months for inventions (patent applications) and 12 months for utility innovations (petty patent applications) from the filing date or priority date. The applicant bears the costs for such search or examination.
The applicant is allowed to change the type of rights for which you apply from petty patent to patent and vice versa. Be mindful that this must be done before registering the invention and the issuance of the petty patent or before the publication of the patent application.
The Law also retains special discretion to refuse registration of a patent with respect to an invention where it is considered necessary to prevent its commercial exploitation to protect the culture and traditions of Lao PDR or where it is necessary for the protection of essential security interests of Lao PDR.
Noting the above, the registration process for patents and petty patents in Lao PDR will grant priority, in the case of disputed applications, to whoever files the application first.
4. Requirements for Obtaining a Patent
In order to obtain a patent, an invention shall meet all the following requirements:
- shall be new: meaning such invention has not existed, not been disclosed to the public by publication, or by use or in any other means in the Lao PDR or any place in the world prior to the date of filing the application for registration or where priority is claimed prior to the priority date of the application for a patent;
- shall involve an inventive step: meaning that would not be obvious to a person having ordinary knowledge in that field of technology;
- shall be industrially applicable in industry, handicraft, agriculture, fishery, services, etc.
5. Requirements for Obtaining a Petty Patent
In order to obtain a petty patent, a utility innovation shall meet all the following requirements:
- shall be new in the sense that it has not been previously known or used in the Lao PDR within one year prior to the date of application;
- shall involve a new technical improvement that involves an inventive step which may be a lesser inventive step than required for a patent;
- shall be industrially applicable in industry, handicraft, agriculture, fishery, services, etc.
- Inventions or Utility innovations Ineligible for Patents or Petty Patents
The following shall be ineligible for a patent or petty patent:
- inventions or utility innovations that are not novel because they are discoveries of existing things, including living organisms or parts of living organisms that exist in nature;
- subject matter that is not an invention does not constitute a technical solution because it is merely a scientific principle or theory, a mathematical algorithm, or a set of rules for doing business or playing games, provided however, that such subject matter may constitute an element of an invention or utility innovation;
- diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
- plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals provided however, that such subject matter may constitute an element of an invention or utility innovation.
A patent or petty patent may be refused or its exploitation limited:
- where it is necessary to prevent its commercial exploitation to protect culture and the fine traditions of the nation, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment;
- where necessary for the protection of the essential security interests of the Lao PDR.
6. Temporary Protection of Inventions at Certain Exhibitions
Temporary protection shall be available for inventions, utility innovations, industrial designs, and trademarks in respect of goods exhibited at official or officially recognized international exhibitions, provided a request for such protection is made and an application is filed within six months from the date on which the goods were first exhibited or rendered at such exhibition. In such case, the application shall be deemed to have been filed on the date on which the goods were first exhibited at such exhibition, provided that temporary protection under this Article shall not be applied so as to extend any other claim of priority.
7. Termination of Industrial Property Rights
Patents, petty patents, and industrial property registrations shall terminate as follows:
- the term of protection is expired;
- the industrial property owner fails to renew the registration and pay the applicable fees, in which case, rights shall terminate as of the end of the term for which protection was granted and the fee was paid;
- the patent, petty patent, or registration is invalidated based on a finding that one or more requirements for protection have not been satisfied; where such finding applies to only a portion of the industrial property, the termination shall apply only to such portion as is invalidated. In such case, the invalidation shall be effective as from the grant of the patent, petty patent, or registration;
- failure to the commercial exploitation, the industrial property rights will be terminated after the final decision by the competent court.
8. Rights of the Patent and Petty Patent Owner
A patent owner has the following rights:
1. In case the patent is for a product:
1.1. the right to prevent others, without the owner’s authorization, from making, importing, offering for sale, selling, or using the patented products;
1.2. the right to prevent others, without the owner’s authorization, from keeping such products for the purposes of offering for sale, sale or use;
2. In case the patent is for a process:
2.1. the right to prevent others , without the owner’s authorization, from using that process;
2.2. the right to prevent others, without the owner’s authorization, from actions defined in item 1, for a product obtained directly from the patented process.
3. authorize individual, legal entity or organization other than the patent owner to undertake any of the acts described in items 1 and 2 of this Article in Lao PDR;
4. to protect their rights under the law and regulations against infringements by others such as to institute court action, [and] right to compensation from damages caused by others;
5. to prevent others from exploiting the patented invention from the time that the patent is issued. The owner may bring a suit for acts of infringement occurring during the pendency of the application only after the patent is granted and only for acts occurring after publication during pendency or if the infringer had notice of the patent application.
For petty patent owners, rights shall be applied likewise as to those of patent owner, mutatis mutandis.
9. Special Evidence Issues in Intellectual Property Enforcement Proceedings
In court proceedings for infringement of a patent for a process for obtaining a new product, where the same product is produced by a person other than the patent holder or a person authorized by him, it shall be deemed that such product was obtained by the patented process in the absence of proof to the contrary, provided however, that in the adduction of proof to the contrary, the legitimate interests of defendants in protecting their manufacturing and business secrets shall be taken into account.
Infringement of a patent or petty patent shall be established only on the basis of evidence showing that the subject matter alleged to be infringing incorporates or implements each element of at least one claim of the patent or petty patent alleged to be infringed. Infringement is not negated by the presence of additional elements in the allegedly infringing subject matter or by the existence of claims in the patent or petty patent that are not infringed.
10. Invalidity and Cancellation
Where a patent, petty patent, industrial design registration, trademark registration, integrated circuit layout-design registration, or plant variety protection certificate is held invalid by the People’s Court, the Ministry of Science and Technology shall cancel such intellectual property accordingly. In the case of patents or petty patents, such holding shall specify the patent or petty patent claims to which the holding applies.